BACKGROUND
In the framework of intellectual property law, the case of Casio Computer Co. Ltd. v. Riddhi Siddhi Retail Venture(2023 SCC OnLine Del 677) presents an intriguing legal dispute involving design cancellation and infringement. In this case, the plaintiff is a well-known Japanese business that produces musical keyboards and has garnered a good reputation.
PLAINTIFF’S ALLEGATIONS
The plaintiff filed for an injunction against the defendants, alleging that the defendants’ keyboard designs violated their intellectual property rights as they were misleadingly similar to the plaintiff’s. In 2009, Casio registered the “Blueberry” keyboard design, which became closely associated with the brand. Their main contention was that their keyboard design had become inextricably linked to their brand and had taken on secondary significance, making the defendant’s keyboard (Nexus32) along with its design appear so strikingly similar that it must be considered an imitation.
DEFENDANT’S DEFENCE
The defendants, on the other hand, argued that due to the presence of other similar designs available in the market and on websites run by third parties, the plaintiff’s design registration was not essential and thus, the design was neither new nor original. Nevertheless, the court noted that the defendants had the burden of proving the plaintiff’s lack of originality or novelty, and since they had not produced any supporting documentation, the court dismissed their defence.
COURT’S OBSERVATIONS
Upon examination of photographs of the plaintiff’s and the defendant’s keyboards, the court observed that the two designs were deceptively similar, confirming the plaintiff’s allegation of infringement. Accordingly, the defendant’s imitation clearly fell under the purview of Section 22(1) of the Designs Act. The court emphasized that a registration could not be rendered invalid simply because of the existence of identical designs in the market after it was granted. The defendant had not presented any compelling evidence to support its claims that the plaintiff’s keyboard design was not novel or had already been published, the court further noted.
BURDEN OF PROOF
Regarding the defendant’s claim that the plaintiff’s design lacked novelty and uniqueness, the court held that if the defendants sought to use this defense, the burden of proof lay on them to demonstrate the absence of innovation or originality. Consequently, it was the defendants’ responsibility to present evidence to the court proving that the design in question was neither novel nor inventive on the date it was registered. The court’s decision reaffirmed the principle that the onus of proving a lack of novelty or originality in a design, when asserted as a defense, rests with the party making the claim. This places an important burden of proof on defendants who seek to challenge the validity of a design on these grounds, highlighting the need for substantiated evidence to support such assertions.
CONCLUSION
Furthermore, the court’s focus on the plaintiff’s design gaining secondary significance emphasizes the importance of consumer perception and association in the determination of design infringement.
The court upheld the validity of Casio’s design registration, ruling in favor of the plaintiffs based on the aforementioned contentions.
