Sunday, March 25, 2018

DEEPAK PRANJIVANDAS VS SAFEX CHEMICALS (INDIA) LTD





$~7
*                    IN THE HIGH COURT OF DELHI AT NEW DELHI
+CS(COMM) 262/2018 & CC (COMM) No.24/2018

DEEPAK PRANJIVANDAS SHAH & ORS           ..... Plaintiffs

Through:        Mr. Ankit Arvind, Adv.
Versus
SAFEX CHEMICALS (INDIA) LTD                               ..... Defendant
Through:        Mr. Ajay Amitabh Suman, Adv.


CORAM:


HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW O R D E R

%                                         21.03.2018

IA No.21484/2012 (of the plaintiffs under Order XXXIX Rules 1&2 CPC)

1.                 Adjournment is sought on behalf of the counsel for the plaintiffs.

2.                 There is no interim order in favour of the plaintiffs till now and issues have already been framed and recording of evidence is underway.

3.                 In this view of the matter, it is not deemed appropriate to keep this application pending. With liberty to the plaintiff to apply for interim relief if the defendant is found delaying the recording of evidence, the application is disposed of.

CS(COMM) 262/2018 & CC (COMM) No.24/2018

4.                 The counsel for the defendant states that the plaintiffs have not filed original documents.

5.                 It is open to the counsel for the defendant to take all objections in this regard in the course of recording of evidence and in accordance with Order XVIII Rule 4(4) of the CPC, the objections are not to be decided at this stage.


CS(COMM) 262/2018                                                                                                                              Page 1 of 2






The reliance by the counsel for the defendant on Shalimar Chemicals Works Ltd. Vs. Surendra Oil & Dal Mills (Refineries) 2010 (44) PTC (SC) 1 in this regard is misconceived.

6.                 The counsel for the defendant insists upon arguing further which is declined.

CS(COMM) 262/2018

7.                 List before the Joint Registrar on 11th April, 2018 for fixing the dates for recording of evidence.





RAJIV SAHAI ENDLAW, J

MARCH 21, 2018
‘gsr’..



CS(COMM) 262/2018                                                                                                                              Page 2 of 2

Tuesday, March 13, 2018

DEEPAK PRANJIVANDAS SHAH VS JAYLAXMI INDUSTRIES





$~5
*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+CS(COMM) 1395/2016 & CC(COMM) No.13/2017


DEEPAK PRANJIVANDAS SHAH & ORS                         ..... Plaintiffs
Through:        Mr. Hemant Singh, Ms. Mamta Jha

and Mr. Ankit Arvind, Advs.


Versus

JAYLAXMI INDUSTRIES & ANR                                           ..... Defendants

Through:        Mr.  Ajay  Amitabh  Suman  and  Mr.

Kapil Kumar Giri, Advs. for D-1.

CORAM:

HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW O R D E R
%                                                                                   05.03.2018

IA No.16318/2012 (of plaintiffs u/O XXXIX R-1&2 CPC)

1.                 The counsel for the plaintiffs states that the suit vis-a-vis defendant No.2 United Phosphorous Ltd. has already been decreed on 6th February, 2013 and insofar as the defendant No.1, who is now the only contesting defendant, is concerned, in another suit, the interim injunction restraining the defendant from infringing the patent has been granted. It is thus stated that there is no need to press for this interim relief in this suit.

2.                 The counsel for the plaintiffs further states that in view of the injunction granted as aforesaid, there is no need to insist upon confirmation of the ex-parte order in this case.
3.                 Accordingly, the ex-parte order dated 5th September, 2012 is vacated.

4.                 The counsel for the defendant No.1 controverts that there is any interim relief in any other suit.

CS(COMM) 1395/2016                                                                                                                           Page 1 of 2




5.                 However, since the plaintiffs are satisfied with the order dated 3rd

October, 2016 in CS(OS) No.2616/2012 titled Deepak Pranjivandas Shah & Ors. Vs. Crystal Phosphate Ltd. & Anr. copy of which is handed over in the Court, the need to hear this application is not felt.

6.                 The application is disposed of.

CS(COMM) 1395/2016

7.                 The counsel for the defendant No.1 states that the plaintiffs are delaying the recording of evidence.

8.                 A perusal of the last order dated 7th February, 2018 of the Joint Registrar shows that though the plaintiffs sought adjournment but the counsel for the defendant No.1 did not oppose the same; accordingly the Joint Registrar has posted the suit on 10th & 11th May, 2018 for evidence of the plaintiffs.

9.                 The defendant No.1, if wanted to, ought to have opposed adjournment and today cannot be heard to contend so.

10.            To be listed after the recording of evidence is completed.

IA No.11762/2016 (of plaintiffs u/O XI R-1(4) CPC)

11.            This application has now become infructuous and is disposed of.





RAJIV SAHAI ENDLAW, J.
MARCH 05, 2018
‘bs’..








CS(COMM) 1395/2016                                                                                                                           Page 2 of 2

M/s CROCS INC.USA VS M/s LIBERTY SHOES LTD





*
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.





Chawla,   Ms.   Tanvi      Mishra

Advocates.




CS (COMM) No. 772/2016 and connected cases



Page 1 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 2 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 3 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 4 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 5 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 6 of 54







































































CS (COMM) No. 772/2016 and connected cases                                          Page 7 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 8 of 54







































































CS (COMM) No. 772/2016 and connected cases                                          Page 9 of 54







































































CS (COMM) No. 772/2016 and connected cases                                          Page 10 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 11 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 12 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 13 of 54







































































CS (COMM) No. 772/2016 and connected cases                                          Page 14 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 15 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 16 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 17 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 18 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 19 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 20 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 21 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 22 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 23 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 24 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 25 of 54







































































CS (COMM) No. 772/2016 and connected cases                                          Page 26 of 54







































































CS (COMM) No. 772/2016 and connected cases                                          Page 27 of 54







































































CS (COMM) No. 772/2016 and connected cases                                          Page 28 of 54







































































CS (COMM) No. 772/2016 and connected cases                                          Page 29 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 30 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 31 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 32 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 33 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 34 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 35 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 36 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 37 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 38 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 39 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 40 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 41 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 42 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 43 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 44 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 45 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 46 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 47 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 48 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 49 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 50 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 51 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 52 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 53 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


















CS (COMM) No. 772/2016 and connected cases                                          Page 54 of 54

Featured Post

WHETHER THE REGISTRAR OF TRADEMARK IS REQUIRED TO BE SUMMONED IN A CIVIL SUIT TRIAL PROCEEDING

WHETHER THE REGISTRAR OF TRADEMARK IS REQUIRED TO BE SUMMONED IN A CIVIL SUIT TRIAL PROCEEDING IN ORDER TO PROVE THE TRADEMARK  REGISTRA...

My Blog List

IPR UPDATE BY ADVOCATE AJAY AMITABH SUMAN

IPR UPDATE BY ADVOCATE AJAY AMITABH SUMAN

Search This Blog