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TMI Blog2022 (11) TMI 36X X X X Extracts X X X X X X X X Extracts X X X X ..... design holder would evaluate its options including on commercial considerations - The rights of a proprietor of a registered design is not diluted merely because there are multiple 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. This Court is unable to accept that a finding that the Subject Design lacked novelty and originality which necessarily was required to be determined with reference to the date when the Subject Design was registered could be arrived 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. In terms of Section 4 of the Designs Act, a design, which is not new or novel or has been disclosed prior to registration or is otherwise not significantly indistinguishable from a known design or a combination of designs thereof, cannot be registered. 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion bearing no. 294938 (hereafter Subject Design ). Relaxo claims that the aforementioned design is novel and unique in particular in respect of the surface pattern, cuts, ridges, curves, graphics. 3. Relaxo claims that the Subject Design was originally created with its in-house design team along with a design agency based in the United Kingdom known, as The Footsoldiers . In the year 2018, Relaxo discovered that Aqualite was manufacturing and selling the products, which it claims infringed the Subject Design. In the month of December 2018, Relaxo filed a suit being [no. CS(COMM) No. 1288/2018] before this Court. Relaxo claimed urgent interim relief in the suit (interlocutory application no. 17103/2018) and by an order dated 14.12.2018, the learned Single Judge passed an ad interim order, inter alia restraining Aqualite from infringing the Subject Design. Aqualite preferred an appeal being [no. FAS(OS)(COMM) 21/2019] impugning the order dated 14.12.2018. The said appeal was disposed of with liberty given to Aqualite, to file an application under Order XXXIX Rule 4 of the CPC. 4. Aqualite filed an application under Order XXXIX Rule 4 of the CPC [being IA no. 1419/2019] whic ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n to infringement of a design registered under the Designs Act. 11. Third, he submitted that the learned Single Judge had erred in relying on the letter by a Chinese manufacturer claiming that the strap on the product was in existence for several years. The said letter is a self-serving letter without any evidentiary value. More importantly, Relaxo had not claimed any novelty or originality in respect of the strap of the footwear in question. 12. The learned counsel appearing for Relaxo, also contended that Aqualite had not provided any explanation as to how, why and when it adopted the infringing design for its products. In contrast, he submitted that Relaxo had provided extensive documentation to indicate how the Subject Design was conceptualized by its design team along with a design company named The Footsoldier . He also submitted that Aqualite is a habitual infringer and Relaxo had also filed two other suits in respect of the other designs infringed by Aqualite. Whilst, in one of the suits, Aqualite had undertaken not to use certain designs; in the other suit, Relaxo was successful in securing a temporary injunction, which is presently operative. He referred to the dec ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the images of the respective products manufactured and marketed by both the parties are relevant and set out below: 19. It is apparent from the above images that the design of Aqualite s products is almost identical to the Subject Design. The only question to be considered is whether registration of the Subject Design is proscribed under Section 4(a) and 4(c) of the Designs Act. According to Aqualite, the Subject Design is not new or original and is also not distinguishable from known designs or a combination of known designs. 20. The learned Single Judge had, prima facie, found that the Subject Design lacked novelty and originality. This finding was premised on the results of the market survey, which indicated that other products that resembled the Subject Design were available in the market. The learned Single Judge, additionally placed reliance on the letter sent by the Sales Manager of a Chinese manufacturer confirming that the strap was in vogue since several years. 21. We find merit in the contention that the learned Single Judge, could not have suo moto directed the parties to conduct a market survey. Further, we are also not persuaded to accept that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ates 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. 25. The letter/affidavit stating that 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. Further, any letter or affidavit affirming the same, without any further material, would not be of much evidentiary value at this stage. 26. Aqualite had also claimed that a product bearing a similar design was available on the website (amazon.com) and therefore, the said design was available in the public domain prior to registration of the Subject Design. Aqualite had produced a printout of the screenshot from website (amazon.com) ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... bscene matter, shall not be registered. 30. In terms of Section 4 of the Designs Act, a design, which is not new or novel or has been disclosed prior to registration or is otherwise not significantly indistinguishable from a known design or a combination of designs thereof, cannot be registered. 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. 31. Indisputably, if a design is not significantly distinguishable from a known design or combination of designs, it cannot be registered by virtue of Section 4(c) of the Designs Act. However, the 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. 32. It is contended on ..... X X X X Extracts X X X X X X X X Extracts X X X X
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