Unlike the other IPs, the design law protects the aesthetics of a product. As such, the Designs Act protects the shape, configuration, color combination, and composition of lines, patterns, and surface ornamentation. Unique designs capture customers' attention and play a significant role in their purchasing decision. A registered design may be adversely affected if there is a similar design existing in the market, as it is confusing for the customers to distinguish (especially on e-commerce websites).
So what exactly amounts design infringement? Will the following bottle designs be considered as different or similar? The difference is only in the size of the bottle, but the design is identical. If this bottle design application is filed, the natural novelty claim would be for the shape and configuration of the design and not on the size of the bottle it is applied on. Therefore, considering that the bigger bottle is a registered design, the small bottle will be considered as an infringement.
As such, there is no definite percentage that determines the existence of an infringement. It all depends on a set of factors that the court considers while deciding the suit as per the law.
While deciding an infringement suit, one of the main parameters the court looks into is whether the viewers find the designs substantially the same or not, solely from their eyes. If at all, the infringement cannot still be analyzed, then the overall impression when viewed side by side is essential in determining the infringement. The court considers the constitution of each design and the overall features pertaining to look and feel, as well as whether the dominant constitution of both has any significant differences. To be precise, the court looks into the number of features imitated in the infringing design, its position, proportion, and the importance of the feature in the design, for ascertaining infringement.
For instance, the following image shows two almost identical designs, but the latter one has a different color in its knob and handle, and a logo is attached to it. Does this constitute an infringement?
Here, changing the color or placing a logo is considered immaterial and it essentially constitutes what is called a design infringement, as stated by the European Union Intellectual Property Office (EUIPO) in R 216/2005-3.
Hence, proving design infringement is an arduous task. Most of the time, minor similarities do not constitute design infringement, as the judiciary is not bound to interfere with trifles, but in certain other scenarios, it becomes necessary when the infringer rides on the public image of the original registered design.
Originally published January 29, 2022
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