Havells v. Panasonic: Throwing Everything Against the Design/Trade Mark Wall
Controversy refuses to leave Indian law on design infringement and passing off well enough alone.
This week, in Havells v. Panasonic, the Delhi High Court ran into the subject again. It found for Havells on both causes, off the back of two designs for ceiling fans.
In this story, I discuss and critique some of the Court’s key findings.
Background
The core intellectual property at issue in this case is a set of nature-inspired patterns applied to ceiling fans. These innovations, for the present purpose, resolve themselves into two principal design registrations held by Havells, Registration №280666 (’666, effective 2016) and Registration №328605 (’605, effective 2020) respectively. Panasonic’s newly launched series of ceiling fans, claims Havells, gives it a cause both for design infringement (based on the registrations) and for passing off (based on the physical features of the fans themselves).
Composite claims fusing design infringement and trade mark elements are not new to Indian law, nor to my own work. For the modest purpose of comprehending Havells’ claim here, two small notes will suffice.
First, the dominant view under Indian designs law, endorsed by a 2013 three-judge Delhi court in Mohan Lal v. Sona Paint & Hardwares and a 2018 five-judge Delhi court in Carlsberg v. Som Distilleries, considers design infringement and passing off to be broadly capable of co-habitation as part of the same claim. Second, there have been some small adjustments to this view. These have largely arrived post-Carlsberg. Taken together, they suggest that there is a non-zero limitation on the potential range of trade mark options in a composite claim, but little else.
It is into this body of law that Havells’ claim is thrust.
The Trade Mark Elements Question
Predictably, the Court’s first port of call is to consider whether design infringement and passing off can co-exist in the same cause.
For this purpose, it quotes extensively from signature precedent, including Mohan Lal and Carlsberg. It comes to the conclusion, in line with the consensus in Carlsberg, that there is no bar to pressing design infringement and passing off in the same claim. There is no quarrel with this.
The Havells Court then goes further. It notes another detail out of Carlsberg; one that has since been affirmed by a 2019 Delhi appeals court in Crocs v. Bata. This is the proposition that the same aesthetic elements of an article that impart design registrability can also function as non-trade mark elements of a larger passing off claim.
On these facts, for instance, patterns engraved onto ceiling fans cannot and will not constitute a trade mark (indeed, the legal definition of a “design” pointedly excludes a “trade mark” from its scope) but they can conceivably constitute elements of product detail such as get-up, arrangement of features, and trade dress. As such, the specific subject matter under the protective sweep of a design registration can double up as a product characteristic good enough to also support a passing off claim on the same article. This, too, is a perfectly acceptable reading of standing law.
To the post-Carlsberg case law, there is a further layer still.
This has to do with the accurate diagnosis of what might be able to support a pure trade mark claim — separate from passing off — alongside a design infringement claim on the same article. We might say, in lay terms, that the article needs a certain something. Uncannily, this is also close to the legal expression for it. The operative threshold, borrowed from English law, is that the article must contain “something extra” which can be elevated to trade mark registrability. (Thinking laterally, it is easy to spot the parallel here to the “added matter” qualifier under Indian trade mark law.)
This stack of propositions is agreeably recanted by the Court.
The Court then wades into controversial territory.
It rules, on a reading of written pleadings, that Havells did, in fact, seek to assert trade mark rights in their designs.
For clarity, I quote Ms Justice Jyoti Singh’s observation on this issue in full:
“I prima facie find merit in the contention of [Panasonic] that [Havells] has sought to assert trade mark rights in the registered designs, thereby making the designs vulnerable, and entitling [Panasonic] to take this as a defence.”
This is followed immediately by:
“However, the question that begs an answer is, whether irrespective of the said pleadings, [Havells] can lay a claim of passing off, not restricted or limited to the registered design alone, but in the overall get-up, trade dress etc.”
The decision to frame this latter proposition as an open question is puzzling.
The question so framed has undoubtedly already been answered in the affirmative in Mohan Lal, Carlsberg, and Crocs, among others. The Havells Court is hardly in a position to depart from this precedent. In fact, it acknowledges this exact proposition over and over in a 17-paragraph discussion immediately prior to this.
What this framing does achieve, somewhat disingenuously, is that it is able to mask the more specific questions that need to be asked on these facts.
There are two underlying questions here.
One, what does the Court mean when it says that Havells “has sought to assert trade mark rights in the designs”?
Two, since Havells has asserted trade mark rights of some description in articles that are otherwise the subject of its ’666 and ’605 designs, is the specific form of these rights actually made out on these facts?
‘Core’ & ‘Extended’ Trade Mark Rights
I fear that the Court’s conceptual discussion up to this point is insufficient to explain what follows. For this reason, it is worth making another point before proceeding.
This is to say that the Court commits to an unconscious separation between what I will call core trade mark rights (which are rooted in and respond to the definition of a trade mark) and extended trade mark rights (which are trade mark-style features and may fuel a broader claim for passing off).
However, in doing so, it neglects to consider that the separation between these categories is singularly transactional. Indeed, it would not be a stretch to say it has been contrived solely as a workaround to the fact that the statutory definition of a design excludes trade marks.
Let us consider this for a moment.
If all trade mark-style rights could be fully mapped onto articles of manufacture that attract designs protection, is there an inherent conceptual reason why such claims could not be integrated? They are based on the same articles of manufacture. Further, they may, as Carlsberg observed, involve the commission of other commercial acts that require the trade mark and designs causes to be tried together.
On balance, then, there is almost certainly no conceptual basis for this distinction between core trade mark rights and extended trade mark rights tacked onto a registered design.
Can ‘Core’ & ‘Extended’ Rights Co-Exist?
Unfortunately, the Havells Court stubbornly returns to this distinction numerous times.
To the first underlying question I framed, the reply of the Court is that Havells has sought to “also assert” extended trade mark rights. I must take this to mean that Havells asserts both core trade mark rights as well as extended trade mark rights. The Court endorses — correctly — the consensus that core trade mark rights cannot be asserted in a registered design. However, it finds itself strongly standing behind the view that the failure of the core trade mark rights claim has no consequence at all on the extended trade mark rights.
This needs unpacking.
First off, it is surely significant that the Court offers no theory to support this mix-and-match of core rights with extended rights. Next, I must emphasise again that the core trade mark component of the claim has been invalidated here. It cannot sustain, as a matter of law.
So, what becomes of that portion of the claim? Does its prima facie invalidation not prejudice such Plaintiffs in any way? Does this invalidation have no effect on the portion of the claim based on extended trade mark rights, given that they are based on the same elements supposedly generating the same deceptive effect on consumers? If not, what physical features of the article to which the design is applied are good enough to constitute passing off but perform — for this is necessarily the burden on composite claim Plaintiffs— no trade mark function at all? Does this not effectively encourage design Plaintiffs to blindly and crudely press all-inclusive design/trade mark claims and rely on judicial confusion to hand them the benefit of the doubt?
The thoughts of the Havells Court are not forthcoming on any of these concerns.
What it does instead is return a finding of design infringement against Panasonic for both the ’666 and ’605 designs. This is based on a summary assessment of what it considers the essential features of the rival designs.
It rules against Panasonic for three factual reasons: that the overall appearance and shape of ceiling fans are similar; that the effect created by the interplay of ornamentation in the borders and trim in both products is similarly seamless, and that both products have a similarly symmetric appearance due to the shape of the blades. (The Court also summarily beats back Panasonic’s contention that the ’666 design may have been prior published and therefore invalid.)
Havells’ Passing Off Claim
This brings us to Havells’ passing off claim.
As it relates to the later ’605 design, Havells’ claim is extremely contentious.
The relevant pleading reads:
“…[The] layout, get up, trade dress, colour scheme, motif patterns, shape, design configuration and packaging etc, of [Havells]’ products have gained secondary meaning amongst consumers, and are distinctive and form an intrinsic part of [its] goodwill and reputation.
[Havells] is entitled to protection of the goodwill and reputation generated in its products as a remedy available under common law, which enables [it] to prevent deception, which is likely to occur amongst the consumer as to the source and origin of [Panasonic’s] goods.”
To put it kindly, this is a baffling claim.
If I understand it correctly, Havells’ assertion here is that the patterns, configuration, motif, and so on of this specific design are such that consumers have started associating these product features — of a ceiling fan — uniquely with them, to the exclusion of all other ceiling fan manufacturers.
If there is a passing off claim available here — and I admit of this possibility — where does it lie exactly? Havells’ pleadings fail to identify this. Taken at their very best, they can be said to point to the cumulative effect of categories of features, rather than isolated, precise features that can be onboarded onto a passing off comparison.
Which features are relevant then? Where resides the potential for misrepresentation demanded by passing off?
We know for a fact that they cannot encompass be the overall shape and appearance or the interplay of ornamentation in the borders and trim or the symmetry caused to the features of the shape of the blades. These are elements latterly admitted, even by the Court, as vectors of design infringement.
We also know that they cannot be shape-related elements generally nor packaging elements, nor, indeed, colour combinations. These would all be susceptible to the exclusion of trade marks from the statutory definition of design.
To summarise this difficulty another way: How it possible to commit to a comparison of features when the features themselves are incapable of identification?
The Passing Off Finding
It is quite remarkable, then, the Court finds against Havells’ passing off claim qua the ’666 design but for Havells’ passing off claim qua the ’605 design.
These are the visual comparisons conducted:
The ’605 passing off finding in Havells’ favour is, naturally, of greater interest. It is entered in the following terms:
“It is prima facie evident from a mere visual comparison that every attempt has been made by [Panasonic] to come as close as possible to [Havells’] fans.
The impugned product has a same shape and configuration, ornamentation on the blade, body ring on bottom cover, layout, and placement of the ornamentation.
…[Not] only has the idea of using marble on the blades of the fan has been copied, but even the shape in which it is cut, the size and the metallic border, as well as its placement and layout have been substantially copied by [Panasonic].”
It is one thing to humour this sort of assertion, as Carlsberg does, when it relates to a beer bottle design. With beer bottles, though a trade mark likely remains the principal basis for product selection, it is not entirely untenable to think that the outward appearance of the bottle might influence a purchasing decision. It is quite another thing, however, to play along to this charade when the product at issue is ceiling fans.
Here, surely, there has got to be a burden implicit on Havells to show that the aesthetic elements of the design of their ceiling fan are so exceptional that it is tenable that an ordinary consumer might make a purchasing decision on the push of such elements alone.
Once again, though, nodding along to Havells’ speculative murmurings that ceiling fans are displayed unboxed on the shop floor and can therefore potentially influence purchasing decisions, the Court lets this slide.
Equally, there is a temptation to say that, if this was a pure passing off inquiry, this kind of passing off finding would be perfectly serviceable. It is hard to ignore, though, that the facts demand two comparisons here. At the very least, the decision to enter opposing findings on the two designs at issue places a burden on the Court to justify this divergence.
This, it appears to me, the Court has failed to do.
More ambitiously, on these facts, any such divergence must comply with the judicial constraints on assessing trade mark-style elements. This, in turn, must force an appraisal of the larger deficiency with this decision: that it fails to acknowledge that a passing off inquiry in the throes of a design infringement claim fundamentally changes the range and style of such an inquiry. If anything, it is arguable that none of the product features signposted in favour of Havells by the Court here — with the possible exception of the use of marble materials on the blades — can be pressed into service in this kind of passing off inquiry at all.
Yet they are, and they have. For better or worse, that is the principal contribution of the Havells Court.
An appeal — which must, at a minimum, scrutinise these propositions — will hopefully not be long in coming. Should it fail to dial the law back strictly in line with Carlsberg or justify the pro-Plaintiff advances made here under a coherent theory, there will be much to answer for.
For the moment, though, the Delhi High Court may have emboldened a fair few design Plaintiffs to throw everything they have against the design/trade mark wall and see what sticks.
