Authored By: Vishnu Vardhan G
SASTRA DEEMED TO BE UNIVERSITY
Introduction
Whirlpool of India Ltd. v. Videocon Industries Ltd. is a landmark judgment that stands at the intersection of intellectual property law, design protection, and fair competition principles under Indian law. Decided by the Bombay High Court and subsequently affirmed through various appellate proceedings, this case represents a pivotal moment in the jurisprudence of design protection under the Designs Act, 2000. The dispute centers on allegations of design infringement and passing off in the home appliance industry, specifically concerning the design of washing machines. The case is particularly significant for its clarification on the scope of relief available against registered design proprietors and the applicability of the “judging solely by the eye” test in determining infringement.
Facts of the Case
Whirlpool of India Ltd., a subsidiary of Whirlpool Corporation—one of the world’s leading manufacturers and marketers of major home appliances—had registered two designs for its washing machines on July 15, 2009 . These designs, bearing Registration Numbers 223833 and 223835 in Class No. 15-05, covered the distinctive shape and configuration of Whirlpool’s washing machines. The designs featured a distinctive boat-shaped appearance with a square configuration on one side and a rounded contour on the other, creating a visually distinctive and aesthetically appealing product.
The designs registered by Whirlpool were valid for a period of ten years from the date of registration, with provisions for further extension for an additional five years. These registrations formed part of Whirlpool’s intellectual property portfolio, representing significant investment in research, development, and market positioning.
In June 2012, Whirlpool became aware of a washing machine manufactured and marketed by Videocon Industries Limited under the brand name “Videocon Pebble.” Upon examination, Whirlpool alleged that the Videocon product bore striking and substantial similarities to its registered design. The similarities extended beyond mere isolated features; Whirlpool contended that the defendant had replicated the specific combination of design elements, including the boat- shaped appearance, the distinctive shape and configuration, and even the color scheme and two-tone combination employed in Whirlpool’s marketing strategy. Whirlpool asserted that the two products were visually indistinguishable upon initial inspection.
Consequently, Whirlpool of India Ltd. filed Suit No. 1675 of 2012 in the Bombay High Court seeking injunctive relief against Videocon Industries Limited, invoking the provisions of the Designs Act, 2000. Simultaneously, Whirlpool moved for a Notice of Motion seeking an order for interim injunction to prevent Videocon from continuing to manufacture, market, and sell the infringing washing machine.
Legal Issues
The case raised several significant legal questions that required interpretation of the Designs Act, 2000:
First, whether Whirlpool’s registered designs were original and entitled to protection under the Designs Act, 2000, particularly given Videocon’s arguments that the designs lacked novelty and represented merely a combination of known designs.
Second, whether Videocon’s washing machine design constituted an infringement of Whirlpool’s registered design, requiring examination of the test applicable for determining design infringement.
Third, whether a suit for infringement under Section 22 of the Designs Act could be maintained against a person who had obtained subsequent registration for their own design, raising important questions about the scope of the term “any person” in Section 22 of the Act.
Fourth, whether Videocon’s actions amounted to passing off in addition to design infringement, thus making available both statutory remedies and equitable relief .
Arguments of the Parties
Whirlpool’s Arguments
Whirlpool contended that its designs were original, distinctive, and properly registered under the Designs Act, 2000. The company argued that while basic shapes and configurations for washing machines might be generic, the specific combination, presentation, and aesthetic arrangement of these elements in Whirlpool’s design possessed sufficient novelty and originality to warrant protection.
Whirlpool emphasized that Videocon’s washing machine bore striking and unmistakable similarities to its registered design. The company maintained that the similarities were not coincidental but represented deliberate copying designed to capitalize on the goodwill, reputation, and commercial success achieved by Whirlpool through its investments in product development, marketing, and brand building. Whirlpool presented sales figures and market data demonstrating the commercial success of its products and the substantial damage caused by Videocon’s infringing product, which was marketed at a significantly lower price point.
Furthermore, Whirlpool argued that Videocon’s prior conduct evidenced a pattern of deliberate imitation. The company cited historical precedent wherein Videocon had been previously injuncted by the Karnataka High Court for similar acts of design copying and imitation.
Videocon’s Arguments
Videocon mounted a multi-faceted defense challenging both the validity of Whirlpool’s design registration and the existence of infringement.
On novelty and originality: Videocon contended that the design registered by Whirlpool was not original and lacked novelty. The defendant argued that designs bearing substantially similar characteristics had existed in the market for more than fifty years, and therefore Whirlpool could not claim monopolistic rights over such generic or conventional configurations. Videocon specifically invoked Section 4(c) of the Designs Act, 2000, contending that Whirlpool’s design was merely a combination of known designs and thus ineligible for registration [8] .
On design distinctiveness: Videocon argued that while Whirlpool had registered two designs (Nos. 223833 and 223835), the distinction between them was minimal and did not represent substantially different designs. This argument implied that if such minor variations could warrant separate registrations, then Videocon’s product—which the company claimed possessed substantial differences—should similarly escape infringement liability.
On infringement: Videocon asserted that its washing machine was sufficiently distinct from Whirlpool’s registered design. The defendant emphasized differences in ornamentation, color scheme, and the placement of operational knobs and controls, arguing that these variations were sufficient to distinguish its product from the plaintiff’s design when judged by the eye.
On scope of relief: Videocon raised a crucial jurisdictional argument, contending that a suit for infringement under Section 22 of the Designs Act could not be maintained against a registered proprietor of a design. The company argued that the exclusive right granted to a registered proprietor under Section 11 of the Act was not subject to the provisions of Section 22, and therefore the Court lacked authority to restrain a registered proprietor from using their own registered design.
On passing off: Videocon denied any misrepresentation or deception of consumers. The company asserted its reputation and standing as a pioneer in semi-automatic washing machine manufacturing in India and argued that its brand enjoyed high recognition, making consumer confusion unlikely.
Judgment and Legal Reasoning
Trial Court Judgment
The Trial Court, after examining both the washing machines physically in court and analyzing comparative tables and charts presented by the parties, found compelling evidence of similarity. The court held that Videocon had “slavishly and brazenly copied” Whirlpool’s design. Applying the “judging solely by the eye” test derived from precedents in design jurisprudence, the Trial Court determined that the essential features and distinctive characteristics present in Whirlpool’s registered design were equally evident in Videocon’s product.
The Trial Court rejected Videocon’s argument that minor differences in ornamentation, color, and knob placement were sufficient to distinguish the products. The court emphasized that when assessed by visual appearance, the overall impression created by both washing machines was substantially similar, and the boat-shaped distinctive design characteristic was clearly replicated in Videocon’s product.
Appellate Judgment (Bombay High Court)
When Videocon appealed against the Trial Court’s order of interim injunction, the Bombay High Court affirmed the lower court’s decision. The Division Bench examined the legal questions with particular focus on the scope of remedies available under the Designs Act, 2000.
On the scope of Section 22: The High Court addressed the critical issue of whether a suit for infringement could be maintained against a registered proprietor. The Court held that the term “any person” in Section 22 must be given its plain and natural meaning, encompassing any person including a subsequent registered proprietor. The Court reasoned that the exclusive right granted under Section 11 was expressly qualified by the phrase “subject to the provisions of this Act,” which included Section 22. Therefore, the exclusive rights of a registered proprietor were themselves subject to the requirements of Section 22 and the defenses enumerated in Section 22(3).
The Court further held that a subsequent registration could not serve as a defense to infringement proceedings initiated by a prior registered proprietor. The scheme of the Act, according to the Court, did not contemplate that a later registrant could escape infringement liability merely by obtaining their own design registration. The Court observed: “Just as the Plaintiff cannot claim a right to relief under Section 22 against a prior registered proprietor on the basis of his (the Plaintiff’s) registration, the defendant cannot successfully defend an action under Section 22 by a prior registered proprietor on the basis of his (the defendant’s) registration.
On the “judging solely by the eye” test: The High Court affirmed the application of the “judging solely by the eye” test as the appropriate standard for determining design infringement. The test, derived from precedents such as Castrol India Limited and Kemp, requires examination of whether the essential features of the registered design are present in the alleged infringing product and whether the products appear substantially similar when judged visually.
On novelty and originality: The Court rejected Videocon’s argument that the design represented merely a combination of known designs. The Court held that the specific combination and presentation of design elements in Whirlpool’s product warranted protection, even if the individual components were not entirely novel. The Court distinguished between a “combination of known products” (which would be prohibited under Section 4(c)) and a “combination of known design features,” holding that the latter did not constitute grounds for refusing registration or finding infringement.
On passing off: The High Court confirmed that Videocon’s actions constituted passing off. The Court found that the similarity between the machines created a real and cogent likelihood of consumer deception. The distinctive boat- shaped design and the overall visual appearance of Videocon’s product were calculated to misrepresent it as Whirlpool’s product or a product bearing Whirlpool’s goodwill, thereby constituting actionable passing off.
Final Injunction
The High Court granted a permanent injunction restraining Videocon Industries Limited from manufacturing, marketing, and selling the infringing washing machine under the brand name “Videocon Pebble.” The Court ordered the immediate recall of the product from the market. The Court also made adverse observations regarding Videocon’s deliberate copying and the fact that despite lower manufacturing costs, the company had sold its product at a substantially lower price than Whirlpool’s, causing incalculable damage to Whirlpool’s market position.
Legal Significance and Implications
Design Protection Jurisprudence
The Whirlpool-Videocon case represents a significant development in Indian design protection jurisprudence. By clarifying that a suit for infringement can be maintained against any person, including a subsequent registered proprietor, the judgment has strengthened the position of prior registered design owners. This ruling ensures that the temporal sequence of registration—rather than mere possession of registration—determines the availability of remedies.
Application of “Judging Solely by the Eye” Test
The judgment provides important guidance on the application of the “judging solely by the eye” test. The Court’s emphasis that this test requires examination of the overall visual impression and distinctive features, rather than a granular assessment of individual modifications, has important implications for design infringement litigation. This interpretation protects against trivial or cosmetic alterations being used as shields against infringement liability.
Remedial Framework
The case clarifies that remedies under Section 19 (cancellation of registration) and Section 22 (infringement relief) operate independently in separate spheres and are not mutually exclusive. A plaintiff possessing a prior registered design can invoke remedies under Section 22 against actual use of an infringing design, even if the defendant subsequently obtains their own registration. However, the defendant can still raise defenses available under Section 22(3), including grounds for cancellation of the plaintiff’s registration under Section 19.
Concurrent Application of Design Protection and Passing Off
The judgment confirms that design infringement and passing off are not mutually exclusive remedies. When a design is copied in a manner that creates likelihood of consumer confusion or misrepresentation of goodwill, both statutory design protection and equitable passing off remedies become available. This concurrent availability of remedies provides comprehensive protection to design proprietors against deliberate copying.
Critical Analysis
Strengths of the Judgment
The judgment represents sound jurisprudential development. The Court’s interpretation of “any person” in Section 22 reflects a purposive approach to statutory interpretation that aligns with the protective intent of the Designs Act. The rejection of the argument that subsequent registration constitutes a defense is logically sound and prevents perverse incentives for infringers to seek registration as a defensive strategy.
Potential Concerns
However, critics might argue that the judgment provides limited guidance on determining “novelty” and “originality” under the Act. The Court’s observation that specific combination of known elements warrants protection, while protective of design proprietors, leaves ambiguity regarding the threshold for originality in design registration.
Conclusion
Whirlpool of India Ltd. v. Videocon Industries Ltd. stands as a landmark judgment that has significantly advanced the jurisprudence of design protection under Indian law[^21]. By clarifying the scope of remedies available to registered design proprietors, affirming the “judging solely by the eye” test, and recognizing the concurrent availability of statutory and equitable remedies, the judgment provides comprehensive protection against design infringement and passing off. The case demonstrates the judiciary’s commitment to protecting intellectual property rights while maintaining a rigorous application of legal standards to ensure that protection extends only to genuinely distinctive and original designs. The judgment’s emphasis on the substance of similarity over formal registration status has important implications for design owners and contributes to a fair competitive environment in the marketplace.
