Design protection - Mere placement of few different straps, holes or claims on certain combination of colours not enough

By Ashna Pruthi
 
A Single Judge of the Delhi High Court vide its interim order dated May 06, 2019 in the case of Relaxo Footwears Limited v.  Aqualite India Ltd. & Anr. [See Endnote 1] vacated the ex-parte ad-interim injunction passed on December 14, 2018 in favour of the Plaintiff, restraining the Defendants from manufacturing, selling, offering for sale, advertising, importing, exporting or dealing in the impugned product or any other product consisting of fraudulent imitation of the Plaintiff’s registered design. The Ld. Single Judge while vacating the ad-interim injunction held that the Plaintiff lacks a prima facie case and the balance of convenience lies in favour of the Defendants who shall suffer irreparable loss if the ad-interim injunction is allowed to continue.
 
Brief facts
The Plaintiff registered a design for a footwear (slipper) on June 21, 2017 bearing the Design No. 294938. The design of footwear was claimed by the Plaintiff to be novel and original consisting of specific and particular surface pattern, cuts, ridges and graphics making the design of the slipper unique. The design in question was conceptualized, created and designed by a UK based design agency, M/s The Footsoldiers on behalf of the Plaintiff. Vide ex-parte ad-interim order dated December 14, 2018, the defendants were restrained from manufacturing, selling, offering for sale, advertising, importing, exporting or in any manner dealing in the registered design or any product that is a fraudulent imitation of the Plaintiff’s registered design amounting to piracy.

The case of the Plaintiff was that the Defendants have fraudulently imitated the said design of the Plaintiff by blatant and verbatim imitation of each and every element of the registered design leading to Piracy of the registered design under Section 22 of the Design Act, 2000. In order for a design to receive protection under the Designs Act, 2000, an applicant has to fulfil the requirements of Section 4 of the Designs Act, 2000 i.e.  the design
a) should be new or original; or
 b) should be distinguishable from known designs or combination of known designs; or
c) should not be disclosed to the public anywhere in India or in any other country by publication in tangible form or by use prior to the filing of the application or before the priority date of the application for registration; or
d) should not contain any scandalous or obscene matter.
The Ld. Single Judge on January 30, 2019  directed the Plaintiff and the Defendants to conduct a market survey in order to ascertain the availability of any third party products bearing the design in question. The survey was carried out by the representatives of the parties on February 05, 2019 wherein they came across various third parties selling products bearing the identical design as that of the Plaintiff.
 
Contention of parties
The Defendants contended that the Plaintiff’s registered design did not fulfil the criteria of novelty or originality as laid down under Section 4 of the Act and therefore, the registration of the said design is not valid. The Defendants argued that the Plaintiff has misled the Hon’ble Court as the design application of Plaintiff disclaimed any exclusive right to the use of colours or colour combinations appearing on the design at the prosecution stage whereas, the Plaintiff informed the Hon’ble court that it had claimed novelty over the combination of colours on the front surface of the mould of the design. Further, the Defendants contended that mere addition of three-four lines of different colour on a footwear does not make the design of the footwear novel.

The Plaintiff on the other hand contended that the tag of Maximum Retail Price (MRP) on the products of the Defendants was placed in an identical position as that on the Plaintiff’s footwear. However, in response to the same, the Defendants argued that the application for the design in question disclaimed any and all exclusive rights to the use of the words, letters, numerals, flags etc. appearing on the design. Accordingly, the Plaintiff could not take plea of the identical positioning of MRP tag in order to allege piracy of the registered design as the same does not constitute a novel or original feature.

The Plaintiff further argued that the reliance upon Crocs Inc USA v. Liberty Shoes Ltd. [See Endnote 2] by the Defendants was misplaced as the design in question in the cited case was the ‘shape of the article’ i.e. features comprising functionality of the product in question like holes, perforations, straps etc. whereas the design in question in the present case are the artistic, graphic and design elements applied on the product irrespective of the shape of the product. Secondly, the Defendants in Crocs Inc USA v. Liberty Shoes Ltd. (supra) were able to prove prior publication through cogent evidence whereas in the present case, the Defendants have failed to provide any such evidence showing prior publication of the design in question.

The Plaintiff placed reliance on Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd. [See endnote 3] and Dart Industries v. Polyset Plastics Pvt. Ltd. [See Endnote 4] wherein it was observed that the burden of proof that a design is not novel lies on the Defendant and unless the Defendant is able to provide the lack of novelty through concrete evidence, the prima facie assumption of validity will be in favour of the Plaintiff. Accordingly, it was argued that the Defendants did not place any material or evidence on record to show that the Plaintiff’s design is not novel.

Further, the prior art produced by the Defendants was substantially different in terms of the number and placement of stripes and strap design from the registered design of the Plaintiff. The Defendants in response to the same argued that the registered design of the Plaintiff was already in public domain long before the filing of the application by the Plaintiff for the same. The Defendants argued that Fujian Province Jinjiang City Foreign Trade Co. Ltd, China, an exporter company and mould maker of the Plaintiff had disclosed vide a letter and affidavit dated January 18, 2019 that the strap of the design in question was introduced in the market approximately seven to eight years ago and the same had gained popularity since 2015.

Further, the placement of straps on the surface pattern of the footwear too lacks novelty as identical straps have been in production under the brand name ‘Showaflops’ much prior to the adoption of the design by the Plaintiff. The product ‘Showaflops’ is available for sale on its official website www.showaflops.com and the e-commerce portal www.amazon.com. The said product was purchased by customers and reviews with respect to same were posted in the month of May 2017. Therefore, the registered design of the Plaintiff is not novel as an identical design was already in public domain by June 2017 and the said design is also common to trade with respect to the claim of straps on surface pattern, lines on strap and holes on the side of strap. It was also contended that there are numerous third parties selling products bearing the identical design in the market.

On the point of claims by the Plaintiff that the design in question was conceptualized and created by M/s. The Footsoldiers, the Defendants submitted that the Plaintiff had stated in their plaint that the said design was created by the Plaintiff’s in-house design team in 2017. Further, no documentary evidence was placed on record to show that there was any agreement between the Plaintiff and M/s. The Footsoldiers to prove that the designing of the footwear was entrusted to the said entity. Therefore, the Plaintiff was making fictitious claims with respect to the design of the footwear being created by M/s. The Footsoldiers.
 
Decision of the court:
The Single Judge observed that the results of the market survey conducted on February 05, 2019 established that  identical design as that of the Plaintiff was available in the market and the claiming and disclaiming of combination of colours and placement of MRP tag before the court and at the prosecution stage respectively goes to show the inconsistent stand taken by the Plaintiff. Further, the affidavit dated January 18, 2019 by Fujian Province Jinjiang City Foreign Trade Co. Ltd certifying that the strap of the design was introduced in the market seven to eight years ago prove that the plaintiff’s design lacks novelty and the same in common to trade. Accordingly, the application of the Plaintiff seeking interim injunction was dismissed and the ad-interim injunction passed against the Defendants was vacated.
 
Conclusion
The instant case shows that in determining the novelty or originality of a design in question during the application for registration of a design, mere placement of few different straps, holes on a design or claims on a certain combination of colours would not afford protection for a design. An application for registration of a design is required to be novel and original in essence and the same should not exist as a prior art anywhere in the world before the filing of the said application for registration by the Applicant. The Plaintiff’s registered design in the present case was a mere trade variant of the age old design for a footwear and therefore, could not be granted protection.
 
[The author is an Associate, IPR practice in Lakshmikumaran & Sridharan, New Delhi]