Proprietor Of Registered Design Doesn't Forfeit Its Right Merely Because It Hasn't Enforced It Against All Infringers: Delhi High Court

The Delhi High Court has said that a proprietor of a registered design does not forfeit its right merely because it has not enforced the same against all infringers.

The design holder retains the right to interdict infringement of the registered design notwithstanding that it has not proceeded against some of the infringers, said the court.

"It is not unusual for small players to copy designs, which have become popular. It is not necessary for the proprietor of a design to pursue its remedies against each dealer/manufacturer selling infringing products. It is possible that the benefits of pursuing a particular infringer may not be commensurate with the cost and effort for doing so," it added.

The division bench of Justice Vibhu Bakhru and Justice Amit Mahajan further said it is understandable that a design holder would evaluate its option including on commercial considerations.

"A design holder is not required to pursue the available remedies against all infringers in order to pursue its remedies against some infringers. It is open for the design holder to select the infringers that it wants to proceed against. The rights of a proprietor of a registered design is not diluted merely because there are multiple infringers," said the court.

The court made the observations in its judgment on the appeal filed by Relaxo Footwears Limited against the judgement of a single bench which had dismissed its application for interim injunction in May 2019, and allowed the application filed by its competitor Aqualite for vacation of an ex parte ad interim injunction dated 14.12.2018.

Both Relaxo and Aqualite are famous footwear brands. Relaxo in 2018 had filed a suit accusing Aqualite of infringing its design relating to slippers. Relaxo claimed that the design is novel and unique in particular in respect of the surface pattern, cuts, ridges and curves.

Single Bench Decision

The Single Bench in its judgement said that market survey conducted by parties pursuant to its order indicated that there were third-party products available in the market, which were similar to the Subject Design.

The court also said Relaxo claimed novelty in respect of the combination of colours and the placement of the label indicating the maximum retail price (MRP), but its application for registration of the Subject Design did not include any such claim of novelty.

It had also taken note of the letter dated 18.01.2019 sent by a Chinese manufacturer stating that the strap of the footwear in the Subject Design was introduced in the market seven or eight years ago and had become very popular since the year 2016.

Thus, the court had held the design to be common to trade.

Division Bench Decision

The division bench headed by Justice Bakhru in its decision on the appeal said it is apparent that design of the products of Aqualite is almost identical to the Subject Design.

The court at the outset noted that the single bench could not could not have suo moto directed the parties to conduct a market survey.

"Further, we are also not persuaded to accept that the results of the market survey were relevant to address the controversy before the learned Single Judge. The market survey would, at best, indicate that the products were available in the market. It would not establish that the Subject Design lacked novelty and originality at the time when it was registered," said the court.

The court said it is unable to accept that a finding that the Subject Design lacked novelty and originality could have been arrived at on the basis of the market survey without any evidence as to when the said products were introduced in the markets by their respective sellers. It necessarily was required to be determined with reference to the date when the Subject Design was registered, said the court.

The court also said the letter stating the strap had been introduced in the market seven to eight years ago would be of little assistance in arriving at the prima facie finding in respect of the Subject Design as Relaxo had not claimed novelty in the design of the strap.

"Relaxo had claimed novelty in the shape, configuration and surface pattern as illustrated in the images of the Subject Design. Relaxo had not claimed any novelty in respect of the strap of the footwear. The Subject Design indicates a surface pattern comprising of four parallels stripes on one half of the top surface. The central stripe runs at the center of the surface with three further stripes on one side. In addition, there is a white stripe running through a groove at center of the vertical surface of the footwear. The question whether the Subject Design is novel or original was required to be ascertained by determining whether it was published or available in public domain prior to the registration," said the court.

It further noted that Aqualite had also claimed that a product bearing a similar design was available on Amazon and therefore, the said design was available in the public domain prior to registration of the Subject Design.

"A prima facie view of the said products does not indicate that the design of the said product is identical to the Subject Design. A plain view of the image of the product, as available, indicates that the configuration is not similar. The top surface of the slippers appears to be rough with a granular pattern; the sole is ventilated by several holes; the strap is completely different; and the top surface has only has two stripesin the center. It also does not appear that the vertical surface has any central groove or stripe," said the court.

The court added that it would also be essential for Aqualite to establish that the said product was available for sale prior to the registration of the Subject Design. "Aqualite relies on a review by one of the customers dated 25.05.2017, hence, it was necessary to examine the evidentiary value of the said material as well," it said.

On Single Bench's finding that subject design is common to trade, the court explained that a mark, which is common to trade, cannot serve as a trademark.

"This is because it would fail to perform the primary function of the trademark as the source identifier of the product. However, this concept would have no application while considering infringement of a design. In terms of Section 2(d) of the Designs Act, by definition, a design does not include a trademark. If a product of a particular design is available prior to its registration, the same would be sufficient to render it incapable of registration on the ground that it is not original or novel.

The court explained that in terms of Section 4 of the Designs Act, for a design to be registered, it must be original and novel; not disclosed in any manner prior to registration; and it should be significantly distinguishable from a known design or a combination of known designs.

"Thus, a mere trade variant, which is a combination of known designs, would not be entitled to protection under the provisions of the Designs Act," it said.

However, the division bench said market survey conducted by the parties would neither answer the question whether the Subject Design was original or novel at the time of registration, nor assist in determining whether the Subject Design was significantly distinguishable from the known designs at the time of registration of the Subject Design.

Aqualite had argued that the Subject Design is merely a trade variant and relied upon the decision of the Coordinate Bench of this Court in Crocs Inc Usa v. Bata India Ltd & Ors wherein it was said footwear manufacturers have little play in creating new designs.

However, the court said, "Undoubtedly, there are constraints with regard to footwear design. Footwear designers have to function under the given constraints, however, the decision in Crocs Inc Usa v. Bata India Ltd & Ors. (supra) cannot be read to mean that there can be no registrable design in respect of the footwear merely because they are fit to the shape of the foot. If the creative pursuits of footwear designers lead them to express themselves in novel designs that are merely discernable, there is no reason to assume that such designs would not be registrable."

The court said it is not persuaded to accept that Aqualite has produced sufficient material for it to conclude that the Subject Design is merely a trade variant and indistinguishable from known designs or a combination thereof.

"The conclusion of the learned Single Judge is not based on the findings that the Subject Design is indistinguishable from designs that were known at the time of the registration. It is based on the, prima facie, opinion that there are products with similar designs currently available in the market. Thus the 'prima facie' conclusion of the learned Single Judge is not well founded," it added.

Allowing the appeal, the court said Acqualite, their directors, principal officers and servants are restrained from manufacturing, selling, offering for sale, advertising, importing, exporting or in any manner dealing with products infringing the Subject Design (Design bearing no. 294938) till the disposal of the suit.

Title: RELAXO FOOTWEARS LTD vs AQUALITE INDIA LTD & ANR.

Citation: 2022 LiveLaw (Del) 1017

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