On 8th October, a bench of Delhi High Court consisting of Justice Jayant Nath, while hearing a suit seeking direction from the court to restrain the defendant from manufacturing, selling, advertising, etc. their footwear products which are said to be an imitation of the plaintiff’s products, held that mere registration of the design of a product would not entitle registrant of the design to claim protection. It would always be open to the defendant to plead and set up a defence of lack of novelty or existence of prior art.
The court also held that although it can be said that footwear manufacturers have very little flexibility in creating new designs, however, it cannot be said that the Designs Act, 2000 does not apply to footwear.
Facts of the case:
The present application was filed by the plaintiff seeking an ex parte injunction to restrain the defendant, its directors, etc. from manufacturing, selling, advertising, etc. the impugned footwear products which are said to be an imitation of the plaintiff’s products/design/trade dress/get up. Other connected reliefs are also sought. It was the case of the plaintiff that the present suit pertains to intellectual property rights of the plaintiff in the design and/or overall trade dress/getup of certain footwear products. The defendant is said to have unlawfully imitated and pirated the said design/trade dress of the plaintiff in the said products.
Contention of the Petitioner:
The following contention has been submitted by the petitioner:
- It was submitted that a distinctive and distinguishable feature of the design of plaintiff's product is vertical ridges/grooving pattern running in the upper half of the periphery of the slipper. The said product is said to have been honestly and originally adopted by the plaintiff in November 2019.
- It was also urged that a mere perusal of the impugned products of the defendant would reveal that the defendant had deliberately and fraudulently imitated the plaintiff’s products.
- It is further urged that the defendant is a habitual infringer and has no regard for the intellectual property rights of the plaintiff and continues with its unlawful acts.
Contention of the defendant:
The following contention has been submitted by the defendant:
- Learned senior counsel for the defendant relied upon Section 22(3), Section 19, Section 2(d), Section 2(g) and Section 4 of the Designs Act, 2000 to plead that there is nothing significantly novel in the designs of the plaintiff. Such a design has been around in the world for quite some time.
- It was further strongly urged that ridges as relied upon by the plaintiff are common to trade and various slippers of such designs are available.
- It was further strongly urged that the designs of the defendant are entirely different as can be seen from the surface pattern, straps, etc. of the plaintiff’s products.
Observation and judgement of court:
The hon'ble bench of the court made the following observation:
- Mere registration of the design would not entitle registrant of the design to claim protection. It would always be open to the defendant to plead and set up a defence of lack of novelty or existence of prior art.
- A visual inspection of the two designs shows that the essential features of the designs of the plaintiff have been copied in the product of the defendant.
Keeping in view the above facts, the court held that it is manifest that the defendant has prima facie copied the two designs of the plaintiff. The claims of the defendant that the designs of the plaintiff lack originality or there being existence of prior art are issues which would require better examination and would be considered after evidence has been led.
Thus, stating that the balance of convenience is in favour of the plaintiff and against the defendant the court restrained the defendant and its directors from using the said registered designs of the plaintiff or any other design that is deceptively similar to the designs of the plaintiff.
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