Kamdhenu v. Aashiana: “Difficult to Accept” Industry Standards as Designs
The Delhi High Court last week brought the curtain down on one of India’s most significant design infringement disputes of the last five years. In doing so, it settled the issue of whether product variations based off industry standards can claim design protection.
Kamdhenu v. Aashiana Rolling Mills (August 5) definitively says that they cannot.
The Dispute
Kamdhenu’s case for design infringement against Aashiana originated in June 2017.
It rests on Design Registration №250968 (’968), which claims novelty in an acute angled, doubled up pattern of transverse ribs, applied to steel rods. Coming back the other way, Aashiana’s case asserts that ’968 is in substantial imitation of two industry standards that are common to this trade.
The first of these industry standards is a 2005 product specification called the BS4449–2005. It details the specifications for a category of steel rods used in the reinforcement of concrete. It discloses a set of single line transverse ribs, with the ribs at a prescribed range of acute angles to the axis of the steel rod. This is what these proceedings call the British Standard. The second standard is a 2007 ISO publication, ISO 6935–2:2007(E). This, too, applies to steel used to reinforce concrete. It provides that “ribbed bars shall have transverse ribs”, and a different range of acute angles.
In this story, I will cover off the highlights of the Kamdhenu-Aashiana dispute and the August 5 decision.
The 2017–2018 Decisions
When it arrived in 2017, the Kamdhenu-Aashiana dispute was interesting for a couple of reasons.
First, the space occupied by industry standards as a lever for opposing or claiming design registrations had not really been explored under Indian law. Second, the specific question of whether something based off an industry standard could assert design rights — to the best of my knowledge, at least — had never been asked at all.
Kamdhenu filed suit for design infringement in District Court in June 2017. It won an injunction, ex parte against Aashiana, which the Delhi High Court then confirmed that November.
Curiously, the November 2017 High Court opinion reckoned Aashiana had failed to bring forward “any credible evidence” to back up its claim that ’968 was an imitation of the British Standard. The Court dialled in, instead, on the similarity between the ’968 design and Aashiana’s own product. This prima facie view for Kamdhenu, however, was set aside on appeal by a Division Bench in August 2018.
This Division Bench laid emphasis on two factors.
The first was that the arrangement of the ribbing on the rods was mechanically and functionally such that Kamdhenu (or, indeed, any other manufacturer) had very little creative flexibility to work with in terms of the positioning of the ribbing.
The Division Bench did not pay it particular attention but, stated in full, Aashiana’s argument was actually rather clever. Aashiana stated: (a) that the angles on the ribbing pattern are limited to a narrow range by the fact that they would not serve the function of the ribbing pattern outside this range, and (b) that the angles within this range are covered by the British Standard.
The second factor that struck the Division Bench was that the set of transverse ribs at the core of the ’968 design was itself a signature of an industry standard. This made the ribbing feature publici juris, and open to application by any trader.
It was, as I wrote at the time, a standard-issue ruling on standard-issue facts.
Kamdhenu’s petition against the Division Bench ruling, on special leave, was thrown out by the Supreme Court in February 2019.
The 2021–2022 Decisions
Inside the slipstream of its August 2018 success, Aashiana moved for summary judgment against Kamdhenu. Relying on a raft of 2015 amendments to the Code of Civil Procedure, Aashiana laid a complex wager. It reckoned that Kamdhenu’s freshly failed ’968 infringement claim was: (a) the product of undisputed material already before the court of first instance, meaning that no further trial on this account was necessary, (b) Kamdhenu, consequently, had no real prospect of success in the suit, and (c) there was no other compelling reason to record oral evidence in the case.
Remarkably, Aashiana’s wager came through. In the throes of its summary motion fever era, Aashiana’s summary judgment motion was allowed by the Delhi High Court in May 2021.
In my book, The Finished Article: Essays on Indian Designs Law, I covered this May 2021 decision at length. Here is some of what I wrote:
“[Aashiana’s summary judgment victory shows] how capricious prior publication arguments can be.
The Delhi High Court, in this instance, found that [Kamdhenu] had failed to establish their novelty claim. It did so off a strong suggestion that Kamdhenu’s products had been anticipated by prior published industry standards. Kamdhenu made an elaborate effort to first discredit these industry standards as a source of prior publication, and later distinguish their products from these standards.
However, the Court took the view that the standards themselves disclosed the same surface pattern scheme — comprising transverse and longitudinal ribs at an angle to each other — that Kamdhenu had claimed. The standards thus offered “a detailed enumeration of the elements of the design.”
“An instructed reader of the British Standard,” ruled the Court, “would have been able to imagine the design without recourse to his/her own originality.”
Kamdhenu’s case, critically, was that the novelty in [the ’968] design resided in the pattern itself, rather than the angles of their presentation. Taken together, all the facts pointed to the ‘968 design not being particularly discernible from the published standards. [There was also, as the Division Bench notes in the August 5 decision, strong reliance by the May 2021 High Court on Kamdhenu’s admission that the ’968 design was “equivalent” to the British Standard.]
The consequences of this finding were drastic.
The Court took its finding to mean that the ’968 design was not registrable under Sections 4(a) and 4(b) of the Designs Act. This opened the door for it to find that this conclusion did not require any evidence to be led. Under the 2015 amendments to the Code of Civil Procedure, then, the Court exercised summary powers to dismiss Kamdhenu’s suit entirely.
[The 2021 decision] thus emphasizes that cases where the validity of a registered design is in strife will be uniquely susceptible to being dismissed at the threshold.
In this sense, it is a powerful new pushback against evidence-based prior publication findings.”
To the last detail, these thoughts have now been confirmed by the Division Bench on August 5, sitting in appeal of this May 2021 decision.
On merits, the Division Bench frames the question as whether the British Standard can be read as prior publication against ’968. It reduces the difference between the British Standard and ’968 to a set of two separate transverse ribs at acute angles to the axis with a >10° threshold (in the case of the British Standard), as against a double transverse ribbing pattern (in ’968). (The ISO citation, meanwhile, places a >35° threshold.) It confirms that this does not have the slightest effect on the surface pattern.
It notes that the only way to ascertain Kamdhenu’s novelty claim in ’968 is to examine its registration. It finds that ’968 asserts novelty only in the two transverse ribs with different acute angles. It finds, further, that this is very much inside the British and ISO Standards, since the range of acute angles to the axis necessary for the design, by hypothesis, can only possibly yield a limited number of outcomes.
On this basis, it rules, correctly, that any residual novelty could only possibly come from a minor angle change, and that this would not pass the eye-test for a novelty appraisal under Indian designs law.
’968, then, is no more than a surface pattern registration. Tellingly, it not only corresponds with an industry standard previously disclosed in sufficiently specific terms, but its features are also the same as those used to identify steel rods as being of a particular industry grade.
“It is difficult to accept,” says the Division Bench, “that a pattern, which is a standard to identify a particular grade, can be registered as a design.”
Challenges Ahead
The August 5 decision should, to rights, be the denouement to Kamdhenu-Aashiana dispute. It is certainly hard to imagine that another go-around on special leave to the Supreme Court will meet any different a fate to Kamdhenu’s abortive attempt in 2019.
The prognostication for this Division Bench, meanwhile, is not quite so straightforward. There are most certainly harder design infringement assignments coming down the pike. None of them, with respect, are likely to be quite so poorly made or starved of appeal grounds. Kamdhenu’s industry standard variants-as-designs pitch may have been “difficult to accept”, but tougher challenges surely lie in wait.
Looking ahead, then, the Division Bench must stay the course. Its contribution to Kamdhenu-Aashiana is a significant one, and it has a chance to add plenty to this legacy in the weeks and months ahead.
