No Prima Facie Presumption Regarding Validity Of 'Design' On Account Of Its Registration: Delhi High Court Declines Interim Relief To Hero Motocorp

The Delhi High Court on Wednesday refused to temporarily restrain a bike manufacturer from selling front fender for its motorcycles in a suit filed by Hero Motocorp alleging that it was a copy of its registered V shaped front fender design fixed to “HERO HF DELUXE” bikes.

Justice Amit Bansal said that Hero Motocorp failed to make out a case for grant of interim injunction in its favour and that irreparable harm will be caused to manufacturer, Shree Amba Industries, if an interim injunction is granted in favour of Hero.

“It is an undisputed position that the front fenders of the defendant are being sold in the market under the brand name “SAI”, whereas the products of the plaintiff company are sold under the brand name “HERO”. Therefore, consumers can make an informed decision and choose between the replacement part sold by the Original Equipment Manufacturer (OEM) and other manufacturers such as the defendant,” the court observed.

In March, the court had allowed an application moved by the manufacturer for amendment of the written statement in order to incorporate an objection that the suit design, i.e. Hero’s V shape front fender, is not registrable under the Designs Act.

Justice Bansal said unlike Section 31 of the Trade Marks Act, 1999, there is no prima facie presumption with regard to validity of a design on account of its registration. It was also of a prima facie view that Hero's front fender design is incapable of registration under Section 2(a) of the Designs Act. It observed that the manufacturer had placed sufficient material on record to demonstrate that the design of Hero Motocorp’s front fender is neither new nor original.

“Neither can it be said that the plaintiff company’s design is significantly distinguishable from known designs or combination of known designs in terms of Section 4(c) of the Designs Act. Further, as already noted above, the plaintiff company itself has been selling fenders for other models of its motorcycles, which carry the design comprising of a ‘V’ shape and elongated sides,” Justice Bansal said.

Court said front fender of a motorcycle is an external part which is visible to the viewer which has no independent life as an article of commerce in itself.

“In my considered view, the words “any part of an article capable of being made and sold separately” used in Section 2(a) of the Indian statute have to be read to include parts of articles that can be sold as articles that have an independent life as articles of commerce and not merely as substitutes/accessories,” the court said. It however clarified that this was only its prima facie view and it has not determined the question of registrability of spare parts in general.

Justice Bansal also disagreed with a judgment of Bombay High Court’s division bench in Marico Limited v. Raj Oil Mills Ltd. which held that there is a dissimilarity between the Indian and English statutes with respect to the interpretation of definition of “article.”

“I am in respectful agreement with the view of the Single Judge of the Bombay High Court (in Marico Limited v. Raj Oil Mills Ltd. which was set aside by the division bench) as well as the judgment of the House of Lords in Ford Motor Company (supra) to the extent that they laid down the test of the component having an independent life as an article of commerce and not merely being an adjunct of some larger article of which it forms part,” the court said.

Nonetheless, it directed the manufacturer to file complete statement of accounts of manufacture and sale of its front fender from the date of institution of the suit, which was filed in 2018, till date within eight weeks.

The Court also directed the manufacturer to file statement of accounts of manufacture and sale of their front fender on a half-yearly basis until further orders.

Title: HERO MOTOCORP LIMITED v. SHREE AMBA INDUSTRIES

Citation: 2023 LiveLaw (Del) 691

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