crocs v liberty and ors., - spicyip.com · cs (comm) no. 772/2016 and connected cases page 1 of 54...
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CS (COMM) No. 772/2016 and connected cases Page 1 of 54
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) No. 772/2016
+ CS(COMM) No. 570/2017
+ CS(COMM) No.571/2017
+ CS(COMM) No.780/2017
+ CS(OS) No.2850/2014
+ CS(OS) No.64/2016
+ CS (COMM) No.52/2018
+ CS (COMM) No.53/2018
% 8th
February, 2018
+ CS (COMM) No. 772/2016
M/s CROCS INC.USA ..... Plaintiff
Through: Mr. Akhil Sibal, Sr. Adv., Mr.
Ajay Amitabh Suman, Mr.
Pankaj Kumar, Mr. Kapil Giri,
Mr. Vinay Shukla, Mr. Nikhil
Chawla, Ms. Tanvi Mishra
Advocates.
versus
M/s LIBERTY SHOES LTD ..... Defendant
Through: Mr. Jayant Mehta, Mr. Kapil
Wadhwa, Ms. Devyani Nath,
Mr. Shubhankar, Mr. Rahul
Kukreja, Advocates for D-1.
+ CS(COMM) No. 570/2017
M/s CROCS INC. USA ..... Plaintiff
Through: Mr. Akhil Sibal, Sr. Adv., Mr.
Ajay Amitabh Suman, Mr.
Pankaj Kumar, Mr. Kapil Giri,
Mr. Vinay Shukla, Mr. Nikhil
Chawla, Ms. Tanvi Mishra
Advocates.
CS (COMM) No. 772/2016 and connected cases Page 2 of 54
versus
M/s RELAXO FOOTWEAR LTD. ..... Defendant
Through: None.
+ CS(COMM) No. 571/2017
M/s CROCS INC. USA ..... Plaintiff
Through: Mr. Akhil Sibal, Sr. Adv., Mr.
Ajay Amitabh Suman, Mr.
Pankaj Kumar, Mr. Kapil Giri,
Mr. Vinay Shukla, Mr. Nikhil
Chawla, Ms. Tanvi Mishra
Advocates.
versus
RELAXO FOOTWEAR LTD. & ANR. ..... Defendant
Through: None.
+ CS(COMM) No. 780/2017 and I.A. No. 9971/2015 (for stay)
M/s CROCS INC.USA ..... Plaintiff
Through: Mr. Akhil Sibal, Sr. Adv., Mr.
Ajay Amitabh Suman, Mr.
Pankaj Kumar, Mr. Kapil Giri,
Mr. Vinay Shukla, Mr. Nikhil
Chawla, Ms. Tanvi Mishra
Advocates.
versus
BIOWORLD MERCHANDISING INDIA LTD.
..... Defendant
Through: Mr. Anil Dutt and Ms. V.S.
Mani, Advocates.
+ CS(OS) No. 2850/2014
M/s CROCS INC. USA ..... Plaintiff
CS (COMM) No. 772/2016 and connected cases Page 3 of 54
Through: Mr. Akhil Sibal, Sr. Adv., Mr.
Ajay Amitabh Suman, Mr.
Pankaj Kumar, Mr. Kapil Giri,
Mr. Vinay Shukla, Mr. Nikhil
Chawla, Ms. Tanvi Mishra
Advocates.
versus
M/s BATA INDIA LTD & ORS. ..... Defendants
Through: Mr. Neeraj Grover and Ms.
Ragini Anand, Advocates.
+ CS(OS) No. 64/2016
M/s CROCS INC USA ..... Plaintiff
Through: Mr. Akhil Sibal, Sr. Adv., Mr.
Ajay Amitabh Suman, Mr.
Pankaj Kumar, Mr. Kapil Giri,
Mr. Vinay Shukla, Mr. Nikhil
Chawla, Ms. Tanvi Mishra
Advocates.
versus
M/s ACTION SHOES PVT. LTD. & ORS. ..... Defendants
Through: Mr. Kapil Wadhwa and Ms.
Devyani Nath, Advocates.
+ CS (COMM) No. 52/2018
M/s CROCS INC.USA ..... Plaintiff
Through: Mr. Akhil Sibal, Sr. Adv., Mr.
Ajay Amitabh Suman, Mr.
Pankaj Kumar, Mr. Kapil Giri,
Mr. Vinay Shukla, Mr. Nikhil
CS (COMM) No. 772/2016 and connected cases Page 4 of 54
Chawla, Ms. Tanvi Mishra
Advocates.
versus
AQUALITE INDIA LIMITED & ANR. ..... Defendants
Through: Mr. Sandeep Sethi, Sr.
Advocate with Mr. C.A.
Brijesh, Mr. Rohan Seth, Mr.
Dhruv Grover and Mr.
Peeyoosh Kalra Advocates.
+ CS (COMM) No. 53/2018
M/s CROCS INC.USA ..... Plaintiff
Through: Mr. Akhil Sibal, Sr. Adv., Mr.
Ajay Amitabh Suman, Mr.
Pankaj Kumar, Mr. Kapil Giri,
Mr. Vinay Shukla, Mr. Nikhil
Chawla, Ms. Tanvi Mishra
Advocates.
versus
KIDZ PALACE & ORS. ..... Defendants
Through: Mr. Anil Dutt and Ms. V.S.
Mani, Advocates for D-2 and 3.
CORAM:
HON’BLE MR. JUSTICE VALMIKI J.MEHTA
To be referred to the Reporter or not? YES
VALMIKI J. MEHTA, J (ORAL)
CS (COMM) No. 772/2016 and I.A. No. (to be numbered) (under
Order XXXIX Rules 1 & 2 CPC)
CS (COMM) No.571/2017 and I.A. No. 6811/2015(under Order
XXXIX Rules 1 & 2 CPC)
CS (COMM) No. 772/2016 and connected cases Page 5 of 54
CS (COMM) No. 780/2017 and I.A. No. 9971/2015 (under Order
XXXIX Rules 1 & 2 CPC)
CS (COMM) No. 2850/2014 and I.A. No. 19747/2014 (under Order
XXXIX Rules 1 & 2 CPC) & I.A. No. 24965/2014 (under Order
XXXIX Rule 4 CPC)
CS (COMM) 52/2018 and I.A. No. 1791/2018(under Order
XXXIX Rules 1 & 2 CPC) & I.A. (to be numbered) under Order
XXXIX Rule 4 CPC)
CS (COMM) 53/2018 and I.A. No. 1794/2018 (under Order
XXXIX Rules 1 & 2 CPC)
1. By this order the injunction applications filed by the
plaintiff in the suit are being heard and disposed of. Simultaneously,
the applications under Order XXXIX Rule 4 CPC for vacating the
interim order granted in favour of the plaintiff in CS (COMM) No.
52/2018 and CS (COMM) No. 2850/2014 are also being disposed of.
The interim application in CS (COMM) No. 772/2016 titled as Crocs
Inc. USA Vs. Liberty Shoes Limited is being taken as lead application
and lead case and the discussion, reasoning and conclusions of such
interim applications mutatis mutandis will apply with respect to the
injunction applications filed in the other suits given in the heading of
this order. It is also noted that since some of the suits were filed in the
District Court, and which have thereafter been transferred to this
Court, in these suits there are no IA numbers to the interim
applications. Plaintiffs have filed this suit for permanent injunction
seeking to restrain the defendant from infringing the registered design
CS (COMM) No. 772/2016 and connected cases Page 6 of 54
of the plaintiff bearing registration no. 197685 which is said to be
valid up to 28.5.2019. The registered design of the plaintiff is with
respect to footwear. The registered design of the plaintiff with respect
to the subject footwear can be seen from the attachments to the
registration certificates of the plaintiff with respect to design no.
197685 and these pictorial representations/sketches of the plaintiff‘s
footwear registered as design are as under:-
CS (COMM) No. 772/2016 and connected cases Page 8 of 54
2. In CS (COMM) No. 780/2017, the plaint is
essentially/mostly same as the plaint filed qua registered design no.
197685. The plaintiff for seeking reliefs has relied upon its registered
design no. 197686. To complete the narration, the sketches/pictorial
representations of the footwear which is the subject matter of the
registered design no. 197686 of the plaintiff is as under:-
CS (COMM) No. 772/2016 and connected cases Page 11 of 54
3. So that we also understand the issue of violation of the
registered design of the plaintiff, reproduced below are the
photographs of the footwear of the plaintiff in colour:-
CS (COMM) No. 772/2016 and connected cases Page 12 of 54
4. The causes of action as pleaded by the plaintiff in the suit
plaints is that since the plaintiff is an owner of the registered design
nos. 197685 and 197686 with respect to footwear as depicted above,
and that since the defendants are imitating the design of the footwear
of the plaintiff, therefore the defendants are guilty of piracy of
registered designs of the plaintiff and hence the plaintiff is entitled to
approach this Court for reliefs in view of Section 22 of the Designs
Act, 2000 (hereinafter referred to as ‗the Act‘).
5.(i) By the suit CS (COMM) No. 772/2016 the following
reliefs are prayed:-
―(a) For a decree of permanent injunction restraining the defendant by
themselves as also through their individual directors, proprietors/partners,
agents, representatives, distributors, assigns, heirs, successors, stockists
and all other acting for and on their behalf from manufacturing, marketing,
supplying, using, selling, soliciting, exporting, displaying, advertising by
any other mode or manner the impugned design or any other design which
is deceptively similar to or is a fraudulent and/or any obvious imitation of
the Plaintiff‘s design covered by design registration no. 197685 in relation
to footwear and related/allied products and from doing any other acts or
deeds amounting to or likely to:
(i) Piracy and/or infringement of Plaintiff‘s registered design under
no. 197685;
(ii) Violating the Plaintiff‘s designs covered by registration no.
197685.
(b) For an order for delivery up of all the impugned finished and
unfinished material bearing the impugned and violative design in relation
to the impugned or any other deceptively similar design including its
blocks, moulds ad goods etc. to the plaintiff for the purposes of destruction
and erasure.
(c) For an order for rendition of accounts of profits earned by the
defendant by their impugned illegal trade activities and a decree for the
amount so found in favour of the plaintiff on such rendition of accounts.
CS (COMM) No. 772/2016 and connected cases Page 13 of 54
(d) Costs of the proceedings.
(e) And for such other and further reliefs as this Hon‘ble Court may
deem fit and proper in the facts and circumstances of the present case.‖
(ii) Reliefs prayed for in the other suits are also identical/more or
less the same.
6. In terms of the prayers made in the plaint, the interim
applications have been filed by the plaintiff in the suits to seek
pendente lite restraint against the defendants from manufacturing,
marketing, supplying, selling etc the footwear of the defendants which
footwear as per the plaintiff have been manufactured and sold by
infringing the registered designs of the plaintiff.
7. In order to appreciate the issue completely it will be
relevant to reproduce the footwear which is being manufactured and
sold by the defendant in CS (COMM) No. 772/2016, noting that the
footwear being manufactured by the other defendants in the suits
would be more or less same or similar, of course with colour
variations or other changes with respect to placements of the
perforations/open spaces/holes in the footwear or certain other aspects
for creating visual appeal. The footwear manufactured by the
defendants in CS (COMM) No. 772/2016 are depicted as under:-
CS (COMM) No. 772/2016 and connected cases Page 15 of 54
8. Defendants in the suits have contested the claim of the
plaintiff seeking grant of interim/pendente lite injunction. Defendants
have denied that they are infringing the registered designs of the
plaintiff. Defendants argue that there cannot be piracy of a registered
design if the registration granted to the plaintiff with respect to
footwear itself is an invalid registration. It is argued that the
defendants, in a suit filed by the plaintiff of a registered design
alleging piracy of the registered design under Section 22 of the Act,
CS (COMM) No. 772/2016 and connected cases Page 16 of 54
are entitled because of Sub-Section (4) of the said Section 22 of the
Act to argue that since the registration of the design granted to the
plaintiff is not valid hence no case can be made out of piracy of the
registered design of the plaintiff. In sum and substance, reliance is
placed by the defendants upon Sub-Section (4) of Section 22 of the
Act which provides that even if the registration of the design continues
to exist as a registered design under the Designs Act in favour of the
plaintiff, yet the defendants in a suit alleging infringement of a
registered design can show that the design which the plaintiff has got
registration of was not one capable of being given registration, and
hence the plaintiff is not entitled to seek any relief by filing of the suit.
It is argued on behalf of the defendants that in terms of Clauses (b) to
(d) of Sub-Section (1) of Section 19 of the Act in case the plaintiff‘s
registered design when registered was not a new or original design or
there was already existing prior publication of a registered design i.e
the design with respect to which plaintiff claims exclusive entitlement
was in public domain, then in such circumstances it makes no
difference that the plaintiff has been successful in getting the designs
registered because such registered designs on account of prior
publication or lack of newness/originality will not give any legal right
CS (COMM) No. 772/2016 and connected cases Page 17 of 54
to the plaintiff to allege piracy of the registered design. The relevant
Sections of the Designs Act for the purpose of discussion in this order
would be Section 2(d), Section 4, Section 19 and Section 22, and
which Sections are reproduced in the latter part of this judgment.
9. The arguments urged by the parties can be broken up
under two heads. The first head is that whether the designs which have
been got registered by the plaintiff with respect to the footwear are or
are not new or original designs. The second head is that whether the
registered designs of the footwear of the plaintiff were in public
domain prior to registration. In case of lack of newness/originality or
existence of the registered design in public domain prior to
registration, then there is disentitlement in the plaintiff to seek reliefs,
including interim reliefs, in the subject suits.
10. For the purpose of discussion in the present judgment, the
Sections of the Designs Act which would be relevant, would be
Sections 2(d), 4, 19 and 22 of the Act. These Sections read as under:-
―Section 2(d) “design” means only the features of shape, configuration,
pattern, ornament or composition of lines or colours applied to any article
whether in two dimensional or three dimensional or in both forms, by any
industrial process or means, whether manual, mechanical or chemical,
separate or combined, which in the finished article appeal to and are
judged solely by the eye; but does not include any mode or principle of
construction or anything which is in substance a mere mechanical device,
and does not include any trade mark as defined in clause (v) of sub-section
CS (COMM) No. 772/2016 and connected cases Page 18 of 54
(1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of
1958) or property mark as defined in section 479 of the Indian Penal Code
(45 of 1860) or any artistic work as defined in clause (c) of section 2 of the
Copyright Act, 1957 (14 of 1957);
Section 4. Prohibition of registration of certain designs.- A design
which –
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India or in any other
country by publication in tangible form or by use or in any other
way prior to the filing date, or where applicable, the priority date
of the application for registration; or
(c) is not significantly distinguishable from known designs or
combination of known designs; or
(d) comprises or contains scandalous or obscene matter shall not be
registered.
shall not be registered.
Section 19. Cancellation of registration.-(1) Any person interested
may present a petition for the cancellation of the registration of a design at
any time after the registration of the design, to the Controller on any of the
following grounds, namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to
the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registerable under this Act; or
(e) it is not a design as defined under clause (d) of section 2.
(2) An appeal shall lie from any order of the Controller under this section
to the High Court, and the Controller may at any time refer any such
petition to the High Court, and the High Court shall decide any petition so
referred.
Section 22. Piracy of registered design.- (1) During the existence of
copyright in any design it shall not be lawful for any person-
(a) for the purpose of sale to apply or cause to be applied to any article
in any class of articles in which the design is registered, the design
or any fraudulent or obvious imitation thereof, except with the
license or written consent of the registered proprietor, or to do
anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the
registered proprietor, any article belonging to the class in which
the design has been registered, and having applied to it the design
or any fraudulent or obvious imitation thereof, or
(c) knowing that the design or any fraudulent or obvious imitation
thereof has been applied to any article in any class of articles in
which the design is registered without the consent of the registered
proprietor, to publish or expose or cause to be published or
exposed for sale that article.
CS (COMM) No. 772/2016 and connected cases Page 19 of 54
(2) If any person acts in contravention of this section, he shall be liable for
every contravention-
(a) to pay to the registered proprietor of the design a sum not
exceeding twenty-five thousand rupees recoverable as a contract
debt, or
(b) if the proprietor elects to bring a suit for the recovery of damages
for any such contravention, and for an injunction against the
repetition thereof, to pay such damages as may be awarded and to
be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design
under clause (a) shall not exceed fifty thousand rupees:
Provided further that no suit or any other proceeding for relief under
this subsection shall be instituted in any court below the court of
District Judge.
(3) In any suit or any other proceeding for relief under subsection (2), ever
ground on which the registration of a design may be cancelled under
section 19 shall be available as a ground of defence.
(4) Notwithstanding anything contained in the second proviso to sub-
Section (2), where any ground or which the registration of a design may be
cancelled under section 19 has been availed of as a ground of defence and
sub-section (3) in any suit or other proceeding for relief under sub-section
(2), the suit or such other proceedings shall be transferred by the Court in
which the suit or such other proceeding is pending, to the High Court for
decision.
(5) When the court makes a decree in a suit under sub-section (2), it shall
send a copy of the decree to the Controller, who shall cause an entry
thereof to be made in the register of designs.‖
11. Now let us firstly turn to the aspect of prior
publication/public domain. A design which existed in public domain
prior to grant of registration under the Act is a ground for cancellation
of the design and this is very much clear from Section 19(b) and (d)
read with Section 4(b) of the Act. The factual issue is that has there
taken place prior publication of the design i.e whether the registered
designs existed in public domain prior to the registration being granted
in favour of the plaintiff.
CS (COMM) No. 772/2016 and connected cases Page 20 of 54
12. On behalf of the defendants reliance has been placed
upon internet downloaded pages from the website of the company
Holey Soles. This publication which is downloaded from the
concerned website of Holey Soles is said to be existing on the website
of Holey Soles as on 10.12.2002. Obviously the 'Holey' in the 'Holey
Soles' is because of holes/spaces/gaps existing in the footwear of this
company. The footwear of Holey Soles as published in the internet
archive for Holey Soles as on 10.12.2002 is depicted as under:-
CS (COMM) No. 772/2016 and connected cases Page 21 of 54
13. Similar depictions as shown above also exist on the same
website of Holey Soles as on 17.2.2003. Internet downloads of Holey
Soles on 17.2.2003 are filed as documents by the defendants. The
footwear shown on 17.2.2003 is same as on 10.12.2002 except that
the colours of the said footwear, which are sandals without a strap,
are shown to be of different colours than the reddish pink colour as
on 10.12.2002. These depictions dated 17.2.2003 are as under:-
CS (COMM) No. 772/2016 and connected cases Page 22 of 54
14. The registration which is granted to the plaintiff in India
is effective from 28.5.2004. In U.S it is informed to this Court on
behalf of the plaintiff that the design was also registered on 28.5.2004
but that in terms of the provisions of the Designs Act as applicable in
U.S. the plaintiff will have benefit of registration for one year prior to
28.5.2004 i.e from 28.5.2003. Therefore, once the design of the
footwear of the plaintiff is found in the public domain as shown in
website of Holey Shoes prior to 28.5.2003 then clearly in view of
CS (COMM) No. 772/2016 and connected cases Page 23 of 54
Section 4(b) read with Section 19 (d) of the Act the registration
granted to the plaintiff is clearly faulty and is liable to be cancelled
under Section 19 of the Act. In such scenario therefore plaintiff cannot
seek benefit of its registered design for seeking reliefs in the present
case.
15.(i) Learned senior counsel for the plaintiff sought to argue
that no doubt with respect to Holey Soles website as on 10.12.2002
and 17.2.2003 footwear similar to that of the plaintiff (of course
without the back strap) is shown, however it is argued that depiction in
the website is no guarantee that depiction of the footwear in question
in fact took place as on 10.12.2002 and 17.2.2003 as stated in the
printouts downloaded and filed by the defendants. It is argued that
once no finality can be taken to a design of the footwear which is
found in the website of the Holey Soles, then the observations of the
Full Bench of this Court in the case of Reckitt Benkiser India Ltd. Vs.
WYETH Ltd. AIR 2013 Delhi 101 (FB) will come into play that
publication unless it has complete clarity for being known what the
same was, the same would not assist the defendants to argue that those
designs were available in public domain.
CS (COMM) No. 772/2016 and connected cases Page 24 of 54
(ii) In my opinion this argument urged on behalf of the plaintiff is
nothing but a desperate argument because this Court has to take a
prima facie view to come to a conclusion that printouts downloaded
from the website of Holey Soles would have in fact shown the
footwear design on 10.12.2002 and 17.2.2003 and the defendants have
a prima facie case because surely if what the plaintiff contends would
have been correct that these designs may not have been available on
the website of Holey Soles as on 17.2.2003, then what was the
difficulty in the plaintiff filing its copies of printout downloads of
website of Holey Soles as on 10.12.2002 and 17.2.2003, and which the
plaintiff has not. Therefore taking a prima facie view of the matter,
since the plaintiff has not filed its copies of print out downloaded from
the website of Holey Soles as on 10.12.2002 and 17.2.2003, this Court
at this stage for arriving at a prima facie view would accept the factum
that a design similar to the design of the footwear of the plaintiff had
already been published and sold by M/s Holey Soles prior to
28.5.2003, and hence such design having existed in public domain
prior to plaintiff's registration, the plaintiff therefore cannot claim
exclusivity for its registered design merely on the ground that
CS (COMM) No. 772/2016 and connected cases Page 25 of 54
plaintiff‘s footwear/registrations does have a strap at the back of its
footwear.
16. The issue of prior publication has also to be held against
the plaintiff because plaintiff‘s entitlement to exclusivity of its design
of its footwear is from 28.5.2003, and that the defendants have filed
the printout downloads from the website of the plaintiff itself earlier
than 28.5.2003 i.e as on 16.10.2002, 24.11.2002, 25.11.2002,
28.11.2002 and 13.12.2002 showing as per these printout downloads
that the subject designs are clearly in the public domain w.e.f
16.10.2002, 24.11.2002, 25.11.2002, 28.11.2002 and 13.12.2002 i.e
prior to the priority date of registrations of the plaintiff w.e.f
28.5.2003. For the sake of convenience, these printout downloads
from the website of the plaintiff, are reproduced as under:-
CS (COMM) No. 772/2016 and connected cases Page 30 of 54
17. On behalf of the plaintiff it could not be seriously
disputed, and nor it could have been, that the printouts filed by the
defendants from the website of the plaintiff itself show as on
CS (COMM) No. 772/2016 and connected cases Page 31 of 54
16.10.2002, 24.11.2002, 25.11.2002, 28.11.2002 and 13.12.2002 that
the registered designs were in public domain as on those dates which
are prior to the date of priority of registration being 28.5.2003. In case
if the aforesaid printouts were not so then nothing prevented the
plaintiff from filing its own documents of its own website and only
then it would be shown that the documents as filed by the defendants
being the downloaded printouts of the website of the plaintiff of the
different days prior to 28.5.2003 were not those as filed by the
defendants. In view of the aforesaid publications of plaintiff itself
existing in the public domain in the website of the plaintiff much prior
to 28.5.2003 showing the registered designs footwear of the plaintiff,
and that too repeatedly, the registered designs of the plaintiff are to be
held to be already existing in public domain prior to 28.5.2003 and
consequently the registrations of the plaintiff are liable to be cancelled
in terms of Section 19(1)(b) read with Section 4(b) of the Act. In my
opinion therefore clearly the registered designs of the plaintiff were in
the public domain prior to priority date of 28.5.2003 and therefore
registration granted to the plaintiff with respect to registered designs
which are subject matter of the present suits will not afford any legal
CS (COMM) No. 772/2016 and connected cases Page 32 of 54
entitlement to the plaintiff to allege piracy of the designs under
Section 22 of the Act.
18. With respect to issue of prior publication, certain aspects
were argued on behalf of the defendants with respect to proceedings in
the Courts in European Union and counter arguments to the same were
urged on behalf of the plaintiff, however in my opinion this Court
need not refer to the same for the purpose of disposal of the injunction
applications because the injunction applications can be decided and
have been decided in terms of the aspects of existence of prior
publication with respect to registered designs of the plaintiff and lack
of newness/originality and which aspect is discussed hereinafter.
19. The issue next to be examined is that what is the meaning
of a design being new or original so that it becomes capable of being
registered under the Act and for plaintiff to claim relief alleging piracy
of the registered design under Section 22 of the Act and related to this
issue would be the factual issue as to whether in fact the registered
designs of the plaintiff are in fact new or original. The aspect of the
registered designs having newness or originality, is a sine qua non
requirement as per Section 4(a) of the Act, because it is clearly
provided in Section 4 of the Act that in case a design is such that it
CS (COMM) No. 772/2016 and connected cases Page 33 of 54
falls within any of the four Sub-Sections (a) to (d) of Section 4 of the
Act then such design would not be registered. Once the design is
registered but is such that it could not have been registered because of
the bars contained in the Sub-Sections of Section 4 of the Act, then
Section 19(1)(d) of the Act comes into play providing that such a
registered design is liable to be cancelled. Once a registered design is
such which may be cancelled, then even if it is not cancelled, yet
defences on the basis of which registered design can be cancelled are
valid defences to a suit alleging infringement of the registered
design/piracy in view of this being so specifically stated in Sub-
Section (4) of Section 22.
20. I have recently in the judgment delivered in the case of
Pentel Kabushiki Kaisha & Anr. Vs. M/S Arora Stationers & Ors.,
CS (COMM) No. 361/2017 decided on 8.1.2018 had an occasion to
consider the meaning of newness or originality which is the subject
matter of Sub-Section (a) of Section 4 of the Act. By referring to the
ratios of the Division Bench judgment of this Court in the case of M/s.
B. Chawla & Sons Vs. M/s. Bright Auto Industries AIR 1981 Delhi
95 and of the judgment of the Hon‘ble Supreme Court in the case of
Bharat Glass Tube Limited Vs. Gopal Glass Works Limited (2008)
CS (COMM) No. 772/2016 and connected cases Page 34 of 54
10 SCC 657, this Court has come to a conclusion that for a design to
have entitlement of grant and continuation of registration under the
Designs Act it is required that the design is such that it is an
Intellectual Property Right. The Intellectual Property Right comes into
existence if there is spent sufficient labour, effort, time, etc whereby it
can be said that consequently a new creation has come into existence
i.e in essence there is required existence of innovation which is an
Intellectual Property Right. It is because an Intellectual Property Right
comes into existence that there is hence an entitlement to protection
thereof and so that the creator of the design is granted monopoly with
respect to use of the new/original design for a period of ten years plus
five years as provided in Section 11 of the Act. It has been held by
this Court in the case of Pentel Kabushiki Kaisha (supra) that mere
variations to existing products which do not result in requisite amount
of newness or originality cannot be considered as innovations having
newness and originality for being granted monopoly for fifteen years.
It has been held by this Court by reference to the Division Bench
judgment of this Court and the judgment of the Supreme Court as
stated above that trade variations to existing products will not entitle a
person who has come out with a new product containing only trade
CS (COMM) No. 772/2016 and connected cases Page 35 of 54
variations to contend that there is newness and originality as required
by Section 4(a) of the Act and that such products therefore cannot be
called new and original and cannot be given the designation of an
Intellectual Property Right and hence exclusivity for 15 years under
the Designs Act. At this stage let me reproduce the relevant paras of
the said judgment which read as under:-
―2. The cause of action as pleaded in the plaint is one under Section 22
of the Designs Act, 2000 (hereinafter referred to as ‗the Act‘) and which
Section provides that during the existence of the copyright in any design,
no other person shall use the registered design for commercial purposes,
sale of the article etc being a design which is identical or an imitation of
the registered design of the plaintiff. In the suit the following reliefs are
claimed:- ―(a) A decree of permanent injunction restraining the Defendants,
their partners, agents, proprietors, servants and all those actively in
concert with them from manufacturing, selling, offering to sell,
advertising, trading, dealing, either directly or indirectly in pens that is
identical duplication or being obvious and/or fraudulent imitation to the
Plaintiffs‘ copyright in the registered design no 263172;
(b) An order for delivery up to the Plaintiffs by the Defendants of all
the infringing products including blocks, dyes, molds, any other material
bearing the Plaintiffs‘ registered design No.263172 or used for applying
the Plaintiffs‘ registered design No.263172 for purpose of
erasure/destruction;
(c) An order of rendition of accounts of profits directly or indirectly
earned by the Defendants from their infringing activities and wrongful
conduct and a decree for the amounts so found due to be passed in favour
of the Plaintiffs;
(d) A sum of Rs.1,00,00,000/- as decree of damages as valued for
the purposes of this suit towards invasion of rights, loss of sales, revenue,
and overall business identified with the Plaintiffs‘ registered design
No.263172 caused by the activities of the Defendants;
(e) An order as to the costs of the present proceedings; and
(f) Any further order (s) as this Hon‘ble Court may deem fit and
proper in the facts and the circumstances of the present case.‖
3. In the interim injunction application which is being disposed of in
terms of the present order, the following reliefs are prayed:- ―a. An order of exparte interim injunction restraining the
Defendants, their partners, agents, proprietors, servants and all those
actively in concert with them from manufacturing, selling, offering to
sell, advertising, trading, dealing, either directly or indirectly in pens that
CS (COMM) No. 772/2016 and connected cases Page 36 of 54
are identical or obvious and fraudulent imitation to the Plaintiffs‘
copyright in the registered design no.263172 during the pendency of the
suit.
b. Any further order(s) as this Hon‘ble Court may deem fit and
proper in the facts and circumstances of the present case.‖
xxxx xxxxx xxxxx
5. Sub-Section (3) of Section 22 of the Act provides that in spite of
the fact that a design is a registered design, whenever any suit is filed for
the relief alleging piracy of the registered design by the defendant in the
suit, then in such a suit every ground on which registration of a design may
be cancelled under Section 19 of the Act shall be available to the
defendant as a ground of defence.
6.(i) A reading of Sections 19 and 4 of the Act, shows that before a
design is entitled to protection under the Act, the design has to be a new or
original design. If the design is not a new or original design, then the
registered design though registered is liable to be cancelled in the
proceedings under Section 19 of the Act. The pendency or otherwise of the
proceedings under Section 19 of the Act for cancellation of the registered
design will however not prevent a Court from deciding the issue of
entitlement of the plaintiff to grant of an interim injunction in a suit which
is filed under Section 22 of the Act by examining the defences that the
registered design is such which is liable to be cancelled, i.e no interim or
final relief can be granted to the plaintiff, and this is so specifically
provided in Sub-Section (3) of Section 22 of the Act. Therefore, this Court
has to examine that whether the design of the ball point pen of which the
plaintiffs have obtained registration is or is not a new or original design
and which are defences for cancellation of a registered design in
proceedings under Section 19 of the Act. Defendants contend that design
of the ball point pen of the plaintiffs is not a new and original design, and
hence not only the design registered by the plaintiffs is liable to be
cancelled in the proceedings already initiated under Section 19 of the Act,
even the subject application for injunction is liable to be dismissed in view
of Sub-Section (3) of Section 22 of the Act as defences under Section 19
of the Act are defences which are available to the defendants in the suit to
contest the allegations and cause of action in the plaint of piracy of
registered design.
(ii) While on the subject, as to what is new or original, this Court
cannot lose sight of the what is stated in Sub-Section (c) of Section 4 of
the Act. Whereas Sub-Section (a) of Section 4 of the Act provides that a
design which is not new or original cannot be registered, Sub-Section (c)
of Section 4 of the Act provides and clarifies that a design cannot be
registered if it is not significantly distinguishable from known designs or
combination of known designs. Sub-Section (c) of Section 4 of the Act is
therefore in a way explanatory or clarificatory of Sub-Section (a) of
Section 4 of the Act by stating that merely because there is some sort of
newness or originality in an article, but in case that newness or originality
CS (COMM) No. 772/2016 and connected cases Page 37 of 54
is however not such so as to significantly distinguish the new article
prepared from existing designs or combination of designs, then in such a
case a design cannot be registered. It is implicit in the requirement of a
design being new and original that there is creation by putting an effort.
Since a totally new product applying the design comes into existence as a
result of lot of labour and effort, consequently, this right is known as
intellectual property right and the effect of registering of the intellectual
property right called as design under the Act gives monopoly to the owner
of the registered design for a total period of ten plus five years. Therefore
it is sine qua non that there is required sufficient novelty and originality
for a completely new creation to come into existence of a design, and only
thereafter would the design be said to be one which is capable of being
protected as a design under the Act. This aspect of novelty and creation as
regards a design which can only be protected has been dealt with by the
Division Bench of this Court in the case of M/s. B. Chawla & Sons Vs.
M/s. Bright Auto Industries AIR 1981 Delhi 95. The relevant paras of
this judgment which deal with the aspect of newness or originality are
paras 8 to 12 and these paras read as under:- ―8. In Le May v. Welch (1884) 28 Ch. D, 24-, Bowen L. J. expressed
the opinion:
"It is not every mere difference of cut"-he was speaking of collars-
"Every change of outline, every change of length, or breadth, or
configuration in a single and most familiar article of dress like this,
which constitutes novelty of design. To hold that would be no
paralyse industry "and to make the Patents, Designs and Trade Marks
Act a trap to catch honest traders. There must be, not a mere novelty
of outline, but a substantial novelty in the design having regard to the
nature of the article."
And Fry L.J. observed :
"It has been suggested by Mr. Swinfen Eady that unless a design
precisely similar, and in fact identical, has been used or been in
existence prior to the Act, the design will be novel or original. Such a
conclusion would be a very serious and alarming one, when it is
borne in mind that the Act may be applied to every possible thing
which is the subject of human industry, and not only to articles made
by manufacturers, but to those made by families for their own use. It
appears to me that such a mode of interpreting the Act would be
highly unreasonable, and that the meaning of the words" novel or
original' is this, that the designs must either be substantially novel or
substantially original, having regard to the nature and character of
the subject matter to which it is to be applied."
9. Similar view was expressed by Buckley L.J. on the question of
quantum of novelty in Simmons v. Mathieson and Cold (1911) 28 R.P.C.
486 at 494 in these words:
"In order to render valid, the registration of a Design under the
Patents and Designs Act, 1907, there must be novelty and originality,
it must be a new or original design. To my mind, that means that
there must be a mental conception expressed in a physical form
which has not existed before, but has originated in the constructive
CS (COMM) No. 772/2016 and connected cases Page 38 of 54
brain of its proprietor and that must not be in a trivial or infinitesimal
degree, but in some substantial degree."
10. In Phillips v. Harbro Rubber Company (1920) 37 R.P.C. 233,
Lord Moulton observed that while question of the meaning of design and
of the fact of its infringement are matters to be judged by the eye (sic), it
is necessary with regard to the question of infringement, and still more
with regard to the question of novelty or originality, that the eye should
be that of an instructed person, i.e. that he should know that was common
trade knowledge and usage in the class of articles to which the design
applies. The introduction of ordinary trade variants into an old design
cannot make it new or original, He went on to give the example saying, if
it is common practice to have, or not to have, spikes in the soles of
running shoes a man does not make a new and original design out of an
old type of running shoes by putting spikes into the soles. The working
world, as well as the trade world, is entitled at its will to take, in all
cases, its choice of ordinary trade variants for use in particular instance,
and no patent and no registration of a design can prevent an ordinary
workman from using or not using trade knowledge of this kind. It was
emphasized that it is the duly of the court to take special care that no
design is to be counted a "new and original design" unless it
distinguished from that previously existed by something essentially
new or original which is different from ordinary trade variants
which have long been common matters of taste workman who made
a coat (of ordinary cut) for a customer should be left in terror
whether putting braid on the edges of the coat in the ordinary way so
common a few years ago, or increasing the number of buttons or the
like, would expose him for the prescribed years to an action for
having infringed a registered design. On final analysis, it was
emphasized that the use of the words "new or original" in the statute is
intended to prevent this and that the introduction or substitution of
ordinary trade variants in a design is not only insufficient to make the
design "new or original" but that it did not even contribute to give it a
new or original character. If it is not new or original without them the
presence of them cannot render it so.
11. The quintessence of the placitums above is that distinction has to
be drawn between usual trade variants on one hand and novelty or
originality on the other. For drawing such distinction reliance has to be
placed on popular impression for which the eye would be the ultimate
arbiter. However, the eye should be an instructed eye, capable of seeing
through to discern whether it is common trade knowledge or a novelty so
striking and substantial as to merit registration. A balance has to be
struck so that novelty and originality may receive the statutory
recognition and interest of trade and right of those engaged therein to
share common knowledge be also protected.
12. Coming to the facts of the instant case the design in question as a
whole consists in almost rectangular shape with rounded edges with sides
curved or sloping with a further curve on either side in the sloping upper
length side. The respondent produced in evidence Japan's Bicycle Guide,
1972, Vol. 22. At page Nos. 218 to 221, there are standard models of
back mirrors besides branded models numbering 36. Models bearing
Nos. 59-6, 62-1, 61-3, 66-1 and 70-1 would show back view mirrors
CS (COMM) No. 772/2016 and connected cases Page 39 of 54
rectangular in shape with sloping widths or lengths. In some of these
models there is curve in the upper length side. We have mentioned this
fact simply to emphasise that back view mirrors resembling the one in
question have been in the market for a long time. The appellants' case is
that further a curve in the sloping upper length side makes their design
new or original. We have already noted that the extent and nature of
novelty was not endorsed by the appellants in the application for seeking
registration and, Therefore, it has to be taken only as regards the shape
and configuration. In final analysis the matter would boil down to
whether addition of further curve on either side makes the variation a
striking one or a substantial so as to constitute a novelty meriting for
registration. The learned Single Judge after enunciating the legal position
correctly used his eye for discerning if there was in fact a novelty and
answered the question in the negative. We have once again gone through
the same exercise and come to the same opinion. We fail to see the hard
labour which the appellants claimed to have bestowed in creating the
design they got registered. It is devoid of newness and equally devoid of
originality. An addition of curve here or there in a shape which is well-
recognised shape of an article of common use in the market cannot make
it an article new or original in design. If it is made eligible for
registration, it would certainly hinder the progress of trade without there
being any justification, whatsoever.‖ (emphasis added)
7. The emphasized portions of the aforesaid paras of the
Division Bench judgment of this Court leave no manner of doubt that there
is required substantial novelty of design and that any and every change
resulting in a new configuration will not necessarily constitute a novelty of
design. Mere novelty of outline or few changes here and there which are
trade variants would not result in creation of a new article on the design
which would entitle to protection as a design under the Act. The Division
Bench has time and again with reference to the different judgments of the
courts of U.K. emphasized the requirement of novelty or originality which
is substantial novelty and substantial originality with regard to the nature
and character of the article. In para 10 of the judgment in the case of M/s
B. Chawla and Sons (supra) while making reference to the observations
of Lord Moulton it is observed that special care has to be taken that no
design is counted as a new or original design unless it is distinguished
from what previously existed by something essentially new or original
which is different from ordinary trade variants. In para 11, the Division
Bench has concluded that quintessence is that distinction has to be drawn
between usual trade variants on the one hand and substantial novelty and
originality on the other hand otherwise there will be blockage of trade.
Only newness/originality entitles monopoly on account of registration of
the design.
8. The Supreme Court in the case of Bharat Glass Tube
Limited Vs. Gopal Glass Works Limited (2008) 10 SCC 657 has made
similar observations in para 26 and this para 26 reads as under:- ―26. In fact, the sole purpose of this Act is protection of the
intellectual property right of the original design for a period of ten years
or whatever further period extendable. The object behind this enactment
CS (COMM) No. 772/2016 and connected cases Page 40 of 54
is to benefit the person for his research and labour put in by him to
evolve the new and original design. This is the sole aim of enacting this
Act. It has also laid down that if design is not new or original or
published previously then such design should not be registered. It further
lays down that if it has been disclosed to the public anywhere in India or
in any other country by publication in tangible form or by use or in any
other way prior to the filing date, or where applicable, the priority date of
the application for registration then such design will not be registered or
if it is found that it is not significantly distinguishable from known
designs or combination of known designs, then such designs shall not
be registered. It also provides that registration can be cancelled under
Section 19 of the Act if proper application is filed before the competent
authority i.e. the Controller that the design has been previously registered
in India or published in India or in any other country prior to the date of
registration, or that the design is not a new or original design or that the
design is not registerable under this Act or that it is not a design as
defined in Clause (d) of Section 2. The Controller after hearing both the
parties if satisfied that the design is not new or original or that it has
already been registered or if it is not registerable, cancel such registration
and aggrieved against that order, appeal shall lie to the High Court.
These prohibitions have been engrafted so as to protect the original
person who has designed a new one by virtue of his own efforts by
researching for a long time. The new and original design when
registered is for a period of ten years. Such original design which is new
and which has not been available in the country or has not been
previously registered or has not been published in India or in any other
country prior to the date of registration shall be protected for a period of
ten years. therefore, it is in the nature of protection of the intellectual
property right. This was the purpose as is evident from the Statement
Of Objects And Reasons and from various provisions of the Act. In this
background, we have to examine whether the design which was
registered on the application filed by the respondent herein can be
cancelled or not on the basis of the application filed by the appellant. In
this connection, the Law of Copyright and Industrial Designs by P.
Narayanan (Fourth Edition), Para 27.01 needs to be quoted.
―27.01. Object of registration of designs.- The protection given by
the law relating to designs to those who produce new and original
designs, is primarily to advance industries, and keep them at a high
level of competitive progress.
''Those who wish to purchase an article for use are often influenced
in their choice not only by practical efficiency but the appearance.
Common experience shows that not all are influenced in the same
way. Some look for artistic merit. Some are attracted by a design
which is a stranger or bizarre. Many simply choose the article which
catches their eye. Whatever the reason may be one article with a
particular design may sell better than one without it: then it is
profitable to use the design. And much thought, time and expense
may have been incurred in finding a design which will increase
sales". The object of design registration is to see that the originator of
a profitable design is not deprived of his reward by others applying it
to their goods.
CS (COMM) No. 772/2016 and connected cases Page 41 of 54
The purpose of the Designs Act is to protect novel designs devised to
be applied to (or in other words, to govern the shape and
configuration of) particular articles to be manufactured and marketed
commercially. It is not to protect principles of operation or invention
which, if profitable (sic protectable) at all, ought to be made the
subject- matter of a patent. Nor is it to prevent the copying of the
direct product of original artistic effort in producing a drawing.
Indeed the whole purpose of a design is that it shall not stand on its
own as an artistic work but shall be copied by embodiment in a
commercially produced artefact. Thus the primary concern, is what
the finished article is to look like and not with what it does and the
monopoly provided for the proprietor is effected by according not, as
in the case of ordinary copyright, a right to prevent direct
reproduction of the image registered as the design but the right, over
a much more limited period, to prevent the manufacture and sale of
articles of a design not substantially different from the registered
design. The emphasis therefore is upon the visual image conveyed by
the manufactured article.‖ (emphasis added)
9. A reference to the aforesaid para 26 of Bharat Glass Tube
Limited's case (supra) shows that what is stated by the Division Bench of
this Court in the case of M/s B. Chawla and Sons (supra) has been
accepted and in sum and substance it has been held by the Supreme Court
that the object behind enactment of the Act is to give benefit to a person
for the research and labour put by him to evolve the new and original
design which is an intellectual property right. Supreme Court has also
observed that unless the design is not significantly distinguishable from the
known designs or combination of designs, then such a design is not
entitled to registration and hence monopoly of user for 15 years under the
Act. ‖ (underlining added)
21. In view of the law laid down by a Division Bench of this
Court as also by the Supreme Court as stated above, I am not referring
to the judgments which have been cited on behalf of the plaintiff with
respect to what should be the test of newness or originality inasmuch
as the judgments which have been cited on behalf of the plaintiff are
of Single Judges of the Bombay High Court or of the Chancery
Division of U.K.
CS (COMM) No. 772/2016 and connected cases Page 42 of 54
22. In view of the aforesaid position of law showing that it is
necessary for protection of a registered design that the registered
design must be an Intellectual Property Right created after application
of sufficient time, labour, effort, etc, and that there must be sufficient
newness or originality i.e existence of requisite innovation and that
trade variations of known designs cannot result in newness and
originality, let us now therefore examine the facts of the present case
by applying the law as above stated to decide as to whether the
registered designs of the plaintiff can be said to have newness or
originality for having been validly granted registrations under the Act,
and that even if registrations have been granted, once there is lack of
newness/originality, then such registrations so granted are liable to
cancellation in proceedings under Section 19 of the Act and
accordingly such defences are valid defences under Section 22(4) of
the Act for contesting the claim/reliefs by the plaintiff in the subject
suits including of interim injunction reliefs.
23. This Court has already reproduced above the sketches of
the registered designs of the plaintiff. This Court has also reproduced
the coloured photographs with respect to the footwear of the plaintiff
CS (COMM) No. 772/2016 and connected cases Page 43 of 54
pertaining to the registered designs. Can it be said that such footwear
of the registered designs have newness or originality.
24. On behalf of the plaintiff it has been argued that the
registered designs of the plaintiff have to be looked as a whole. It has
been argued that there are various features in the registered designs of
the plaintiff with respect to the placement, shape and size of the
perforations/gaps/open spaces, and the hump like protrusion at the
front of the footwear, and that there exists a mound above the joint
portion of the limb of the foot with the foot, and the designs of the
soles are unique, and that when such features are taken as a whole,
they have that much amount of visual appeal for the registered designs
of the plaintiff‘s footwear to have that much newness or originality for
having been rightly granted registrations under the Act. It is argued
that once registrations have been granted, then this Court must
presume existence of newness and originality and that onus in such
circumstances must shift upon the defendants to show that there is no
newness or originality.
25. No doubt once the plaintiff has a registered design in his
favour then it is for the defendants to plead and establish that the
registered design is such which is liable to be cancelled under one or
CS (COMM) No. 772/2016 and connected cases Page 44 of 54
more Sub-Sections of Section 19(1) of the Act for these aspects would
be available as defences to the claim of reliefs by the plaintiff (in view
of Sub-Section (4) of Section 22 of the Act), but in sum and substance,
in the opinion of this Court, the issue still remains the same as to
whether the registered designs of the plaintiff have or have not
sufficient newness or originality or that much amount of innovation
for being called an Intellectual Property Right.
26. One need not labour hard, or even labour much, to hold
that footwear have existed and are known to mankind from in fact
prehistoric age. Obviously footwear was originally created for the sole
purpose to protect the feet. Footwear created over passage of time has
differed because of choices made by human beings. Type of footwear
is also dependent on whether the same are/were used by men or
women. With respect to footwear of men there were created/existed
various variations and so too with respect to footwear of women.
Variations obviously are with respect to shape of the footwear, look of
the footwear, fashion statement as per the footwear and so on.
Footwear also when created had to take into account the convenience
of the wearer of the same. Besides the issue of convenience of the
wearer of the same footwear also was different depending on the place
CS (COMM) No. 772/2016 and connected cases Page 45 of 54
where it was worn or for the purpose for which it was worn. In those
areas where climatic conditions were on the colder side obviously the
footwear by its very nature had to be completely covered so that
besides giving protection to the feet against injury, the footwear also
provided warmth. In countries and areas where climatic conditions
are hot or humid obviously the footwear created were such that they
would be comfortable to wear in such climatic conditions being hot
and humid. In these latter areas footwear had openness or breathing
spaces. So far as the purpose of manufacture of footwear is concerned
it can be noted that footwear for walking is of one type, other type is
for sports, then again there is footwear for horse riding, or for
mountaineering, or for office wear or formal wear, and so on. Even
within sports shoes the type varies as per the type of the sport. I dare
say that all the aforesaid aspects need not be established in a court of
law and this Court can take judicial notice of the aforesaid aspects
with respect to footwear.
27. Besides the aforesaid aspects, an important aspect which
will be relevant in the facts of the present case is that footwear which
has been created have also been broken up in two types of a formal
footwear and of a casual footwear. In the category of casual footwear,
CS (COMM) No. 772/2016 and connected cases Page 46 of 54
since long, sandals are known to exist in this country. The concept of
sandals is a slip on footwear. Footwear being sandal called by any
name will be a sandal and one of the forms of footwear. With respect
to sandals to give stability and firmness for the wearer there did exist
straps at the back portions of the sandals. Where the sandals are
casuals, and for being worn for short periods only, the straps at the
back can be missing. Straps at the back of the sandals also existed or
were left out depending on the purposes for which the same were
worn. The existence of what is known as ―Jootis‖ is well known in
northern India especially in Punjab. ―Jootis‖ are fanciful sandals
having multi-colours, with embellishments being fixed on the ―Jootis‖
by means of fabrics of different colours. To give a further break up
and elucidation it is noted that there are variations with respect to the
sandals of men and women. Sandals of ladies, not unexpectedly were
designed, moulded, re-moulded and again re-moulded with respect to
the aspect of shapes and heights of the soles or the upper casing. To
wit we have stilettos or flats or the platforms and so on. Obviously
what is being stated by this Court is that save and except where a
footwear design is an Intellectual Property Right, footwear is a
footwear is a footwear, shoe is a shoe is a shoe and sandal is a sandal
CS (COMM) No. 772/2016 and connected cases Page 47 of 54
is a sandal. All the different footwear have changed over different
periods of time and also as per requirements as to who were the
persons wearing the same or of the particular climatic conditions
where they were worn or the footwear becoming fashion statements
but ultimately all the different types of footwear are variations of
nothing else but a footwear i.e foot plus wear i.e something that is
worn on the feet. Really therefore, it would take in the opinion of this
Court an effort larger than an ordinary effort to create a different
footwear than the known types of footwear, to be an
innovation/creation having such requisite newness and originality for
that creation to become an Intellectual Property Right as a design in
terms of the Designs Act.
28.(i) With the aforesaid observations with respect to what is
the law of design pertaining to newness and originality, and the
concept of footwear itself being of different types, let us apply the
aforesaid discussion to the facts of the present case as regards the
registered designs of the plaintiff. In my opinion, one does not have to
travel too far to understand that footwear of the plaintiff is nothing but
a sandal. Sandal with open spaces are only trade variations of a
sandal. Placing of the open spaces or perforation or gaps, and sandals
CS (COMM) No. 772/2016 and connected cases Page 48 of 54
being with or without straps at the back, are in the opinion of this
Court merely only variations or trade variations of footwear. Trade
variations of footwear/sandals cannot be and should not be given
exclusive monopoly. Of course every manufacturer who has done
variations wants to earn maximum profit therefrom, and one of the
ways to do so is by stifling competition by stopping the production of
similar type of footwear as being manufactured by the plaintiff,
however that eventuality does not mean that courts will allow such a
plaintiff/manufacturer to create a monopoly when the law does not
sanction the same. In my opinion the features which have been argued
on behalf of the plaintiff as existing in its sandals/footwear of mounds
or humps or straps (or lack of them) or soles designs or
perforations/open spaces etc etc, even when taken as a whole, or even
individually for that matter, cannot be said to result in innovation or
creation of newness or originality as is the intention of the legislature
in terms of the Section 4(a) of the Act read with Section 19(1)(d) of
the Act. It is therefore held that the registered design of the plaintiff
with respect to its footwear, does not have the necessary newness or
originality for the same to be called a creation or innovation or an
Intellectual Property Right, and which must necessarily exist as stated
CS (COMM) No. 772/2016 and connected cases Page 49 of 54
by the Supreme Court in the judgment in the case of Gopal Glass
Works Limited (supra). In my opinion the registered design of the
plaintiff is such which is liable to be cancelled as per Section 19(1)(d)
of the Act read with Section 4(a) of the Act, and therefore such factual
defences entitles the defendants to succeed in view of Sub-Section (4)
of Section 22 of the Act to argue against grant of reliefs in the
injunction applications which are subject matter of the present order.
On this ground itself also therefore the interim applications of the
plaintiff are liable to be and are accordingly dismissed.
(ii) Before concluding I must incidentally note two aspects. The
first is that the fifteen year period of life of the registrations is soon to
come to an end in the next few months i.e on 27.5.2018. The issue of
injunction thus is now limited. Second aspect is that it has not been the
case of the plaintiff argued before this Court that plaintiff's footwear
design has been got registered as a design on account of creation of
footwear of colours/colour combinations and with the fact of these
products having been made from resin/plastic, and that therefore for
such reasons the plaintiff's footwear has protection as a design.
Though ofcourse even if it would have so been, yet the prior
CS (COMM) No. 772/2016 and connected cases Page 50 of 54
publication of Holey Soles footwear (and by plaintiff itself) cannot be
wished away by the plaintiff.
29. In view of the aforesaid discussion, interim injunction
applications filed under Order XXXIX Rules 1 & 2 CPC in the
aforesaid seven suits would stand dismissed and the interim
application filed under Order XXXIX Rule 4 CPC filed by the
defendant in CS(COMM) Nos.52/2018 and 2850/2014 would stand
allowed.
30. Now the issue remains as to whether costs should be
awarded in favour of the defendants. The subject suits are commercial
suits and are governed by Commercial Courts, Commercial Division
and Commercial Appellate Division of High Courts Act, 2015. With
respect to commercial suits, the provision of costs under Section 35
CPC stands amended, and the provision of costs with respect to
commercial cases is now to be dealt with by the commercial courts as
per Section 35 of the CPC amended and as applicable to commercial
courts as under:-
“Section 35. Costs. (1) In relation to any commercial dispute, the Court,
notwithstanding anything contained in any other law for the time being in
force or Rule, has the discretion to determine:
(a) whether costs are payable by one party to another;
(b) the quantum of those costs; and
CS (COMM) No. 772/2016 and connected cases Page 51 of 54
(c) when they are to be paid.
Explanation.—For the purpose of clause (a), the expression ―costs‖
shall mean reasonable costs relating to—
(i) the fees and expenses of the witnesses incurred;
(ii) legal fees and expenses incurred;
(iii) any other expenses incurred in connection with the proceedings.
(2) If the Court decides to make an order for payment of costs, the general
rule is that the unsuccessful party shall be ordered to pay the costs of the
successful party:
Provided that the Court may make an order deviating from the
general rule for reasons to be recorded in writing.
Illustration: The Plaintiff, in his suit, seeks a money decree for
breach of contract, and damages. The Court holds that the Plaintiff is
entitled to the money decree. However, it returns a finding that the claim
for damages is frivolous and vexatious.
In such circumstances the Court may impose costs on the Plaintiff,
despite the Plaintiff being the successful party, for having raised frivolous
claims for damages.
(3) In making an order for the payment of costs, the Court shall have
regard to the following circumstances, including—
(a) the conduct of the parties;
(b) whether a party has succeeded on part of its case, even if that party
has not been wholly successful;
(c) whether the party had made a frivolous counterclaim leading to
delay in the disposal of the case;
(d) whether any reasonable offer to settle is made by a party and
unreasonably refused by the other party; and
(e) whether the party had made a frivolous claim and instituted a
vexatious proceeding wasting the time of the Court.
(4) The orders which the Court may make under this provision include an
order that a party must pay––
(a) a proportion of another party‘s costs;
(b) a stated amount in respect of another party‘s costs;
(c) costs from or until a certain date;
(d) costs incurred before proceedings have begun;
(e) costs relating to particular steps taken in the proceedings;
(f) costs relating to a distinct part of the proceedings; and
(g) interest on costs from or until a certain date.‖ (underlining added)
31. A reading of Section 35 CPC as applicable to commercial
courts shows that costs can be imposed at different stages of the suits
including at the time of disposal of the interim applications. Costs
CS (COMM) No. 772/2016 and connected cases Page 52 of 54
awarded are under different heads as provided under Sub-Section (4)
of Section 35 CPC. In making an order of payment of costs Courts
have to take note of the conduct of the parties and the fact that whether
any reasonable offer is made by one party to settle the disputes and
which is refused by the other party. At this stage it is required to be
noted that after some arguments in the injunction applications, on
behalf of the defendants a suggestion was put to the plaintiff that
judgment need not be invited from this Court and plaintiff should
simply agree to vacate the interim injunctions granted in its favour and
not press the injunction applications, and in which circumstances no
further relief could be asked for by the defendants, but on behalf of the
plaintiff after taking instructions, its counsel stated that a judgment is
invited from this Court.
32. In view of the aforesaid discussion, while dismissing the
injunction applications filed by the plaintiff in the suits, in favour of
the defendants in the suit each of the defendants costs are awarded
being costs incurred by them towards fees paid and payable till date by
these defendants to their counsels. In this regard, affidavits of fees
and charges paid and to be paid till date by the defendants to their
counsels be filed by filing affidavits within two weeks from today and
CS (COMM) No. 772/2016 and connected cases Page 53 of 54
which affidavits will be supported by the details of the payments made
by the defendants to their counsels. Such costs shall be the costs in
favour of the defendants and against the plaintiff with respect to and
till the stage of disposal of the interim injunction applications. Costs
shall be paid by the plaintiff to the defendants within a period of four
weeks of the affidavits of costs being filed by the defendants.
33. In addition to the awarding costs to be paid to the
defendants towards the legal costs as stated above, defendants in my
opinion are also entitled for the present to costs incurred by them
which would be towards time and man hours spent by these
defendants for conducting their defences in the present suits, and
subject to final decision as to costs. On behalf of the defendants it has
been argued that they have also suffered losses of profits running into
lacs and lacs, and even crores of rupees, on account of interim
injunctions having been obtained by the plaintiff, and obdurately and
illegally continued by the plaintiff. Therefore, in addition to the actual
legal costs being granted to the defendants, each of the defendant is
granted for the present a sum of Rs. 2 lacs each subject to final
decision towards costs incurred for these proceedings except the head
CS (COMM) No. 772/2016 and connected cases Page 54 of 54
of legal costs. These costs will be paid by the plaintiff to each of the
defendants within a period of eight weeks from today.
CS (COMM) No. 772/2016 CS(COMM) No. 570/2017,
CS(COMM) No. 780/2017, CS(OS) No. 2850/2014, CS(OS) No.
64/2016
34. I may note that issues in the suits have already been
framed and matters are listed before the Local Commissioners for
recording of evidence.
35. List for awaiting the proceedings for recording of
evidence on 27th
August, 2018.
CS(OS) Nos. 52/2018 & 53/2018
36. List for further proceedings on 28th April, 2018 when
orders will be passed with respect to procedural aspects of completion
of pleadings and admission/denial etc.
FEBRUARY 08, 2018 VALMIKI J. MEHTA, J
ib/godara/Ne/AK