$~ * % IN THE HIGH COURT OF DELHI AT NEW DELHI Date of Decision:
06. h May, 2019 + CS(COMM) 1288/2018 & I.As. 17103/2018, 1419/2019 RELAXO FOOTWEARS LIMITED ..... Plaintiff Through: Mr.Pravin Anand, Mr.Saif Khan and Mr.Shobhit Agrawal, Advocates versus AQUALITE INDIA LTD. & ANR. ..... Defendants Through: Mr.Sandeep Sethi, Senior Advocate with Mr.C.A. Brijesh, Mr.Peeyoosh Kalra, Mr.Rohan Seth, Mr.Dhruv Grover Advocates. CORAM: HON'BLE MR. JUSTICE J.R. MIDHA JUDGMENT I.A.17103/2018 1. The plaintiff has instituted this suit for permanent injunction for restraining the defendants from manufacturing, selling, offering for sale, advertising, importing, exporting or in any manner dealing in the impugned product (Defendant‟s product code: UFG145 or any product which is an obvious or fraudulent imitation of plaintiff‟s registered design No.294938. The plaintiff is also claiming till up rendition of accounts and damages from the defendants. In I.A.17103/2018, the plaintiff is seeking ad interim injunction against the defendants. CS(COMM) 1288/2018 Page 1 of 11 Plaintiff’s Case 2. The plaintiff registered a design of footwear slipper as design No.294938 on 21st June, 2017. According to the plaintiff, the design is novel and original creating comprising of unique features comprising a specific and particular surface pattern, cuts, ridges, sides, graphics etc. and the suit design registration complies with the statutory requirements under Section 2(d) and does not fall under any prohibitions under Section 4 of the Designs Act, 2000.
3. The plaintiff claims that the subject design was originally conceptualized, designed and created on and behalf of the Plaintiff‟s by a UK based design Agency named M/s The Footsoldiers for valuable consideration along with Plaintiff‟s in-house design.
4. According to the plaintiff, the defendants have substantially and fraudulently imitated the Plaintiff‟s suit design. The Plaintiff‟s registration pertains to combination of surface pattern, shape and configuration comprising several features including its shape, pattern, cuts, ridges, curves, composition of lines etc. The Defendants have literally pirated the Plaintiff‟s design by blatant and verbatim imitation of each and every element of the said design amounting to infringement/piracy of registered design. The acts of the Defendants are squarely covered under Section 22 of the Designs Act and amounts to infringement.
5. The defendants have wrongly alleged that the Design is not novel and is common to trade. The Defendants have not produced any material or evidence to show that the same design as of the Plaintiff was published CS(COMM) 1288/2018 Page 2 of 11 prior to the registration. It is not even the Defendants‟ defense that they themselves had used or published the suit Design prior to the Plaintiff‟s registration.
6. The Defendants have purchased certain third party products after the filing of the suit and have merely put pictures of the same. However, neither there is material to show that these products were manufactured and/or were sold prior to the Plaintiff‟s design registration in order to amount to prior publication nor any existence of earlier known designs have been placed on record. In fact, most of these third parties products are local unorganized manufacturers/suppliers having no or minimal legal compliances.
7. One instance of alleged prior art produced by the Defendant at the time of hearing also is substantially different from the design in question so much so the number of stripes, placement of the stripe, the strap design, the slipper side pattern, the surface pattern are all different from the Plaintiff‟s design.
8. Mere existence of other parties producing the same infringing product is no license to the Defendants to do the same. Reliance is placed on Apollo Tyres Ltd. v. Pioneer Trading Corporation, 2017 (72) PTC253(Delhi).
9. The defendants have not discharged their burden to prove lack of novelty. It is submitted that the burden to prove that the design is not novel lies on the Defendants and unless the Defendants are able to prove that through concrete evidence, prima facie presumption of validity shall be in favour of the Plaintiff. Reliance is placed on Bharat Glass Tubes Ltd. v. CS(COMM) 1288/2018 Page 3 of 11 Gopal Glass Works Ltd. 2008 (37) PTC1(SC) and Dart Industries Inc v. Polyset Plastics Pvt. Ltd. 2018 (75) PTC495(Del).
10. The Defendants have further wrongly alleged that the rival products are different and there is no imitation. The similarity of the product is evident from the products itself. The alleged differences as claimed by the Defendants in paragraph 29-30 of their application are vague and misleading. For instance, the Defendants allege that the trademark of the parties is mentioned on the product which has no bearing on the present suit for infringement of design of the article. Significantly, the Defendants are on one hand contending that there are similar third party products and on the other hand are claiming that the rival products are different. The Defendants cannot blow hot and cold at the same time and it is clear that their claims are misconceived and have no basis. Moreover, the differences as claimed are no differences under law as the test to be applied in determining similarity in two designs is not that the products should be exactly the same. Reliance is placed on Alert India v. Naveen Plastics, 1997 PTC (17) (Delhi) and Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd.,1996 PTC (16) 202.
11. The designs of footwear have been protected by this Court especially when there is blatant and dishonest piracy. Reliance was placed on Skechers USA v. PurePlay Sports, 2016(67) PTC324Del), order dated 30th March, 2016 in CS (COMM) No.274/2016, RelaxoFootwears v. Parth India.
12. With respect to Crocs Inc USA v. Liberty Shoes Ltd., CS (COMM) No.772/2016 decided on 08th December, 2018 relied upon by the CS(COMM) 1288/2018 Page 4 of 11 defendant, it is submitted that reliance on the said judgment is misplaced since firstly, the judgment was on its own facts which were absolutely different viz. the product/design/subject matter in question was of the shape of the article per se i.e. sandals wherein features comprising functionality of the product was in question like holes, perforations, straps etc. which make the product comfortable and are inherent to the product i.e. sandals. As opposed to in the present the subject matter is the get up comprising of artistic, graphic and design elements applied on the product irrespective of its inherent shape i.e. slippers; and secondly, the injunction was also refused in that case as the Defendants were able to show prior publication through clear and cogent evidence. This is borne out of observations in inter alia paragraphs 26 – 28 of the said judgment wherein the functionality of the product has been observed in detail, which is not in the present case at all.
13. The Defendants have not offered a whisper as to how the Defendants adopted and came to use the design in question in a verbatim manner. The present case is not of an honest and coincidental similarity but of a deliberate and dishonest copying, as described in the plaint. Moreover, the balance of convenience is in favour of the Plaintiff as the Defendants can continue with their business of other designs which do not infringe Plaintiff‟s design. Moreover, the Plaintiff being the registered proprietor and the balance of convenience requires protection be granted to the Plaintiff as irreparable injury will be caused. Defendants‟ dishonest conduct and the blatant infringement further make the Defendants liable to be restrained. Reliance is placed on Castrol India (Supra), and The Timken Company v. Timken Services, 2013 (55) PTC568(Del). CS(COMM) 1288/2018 Page 5 of 11 14. The life of design registration is limited (15 years), and the Defendants are dealing in several other products and can continue to deal with other products without infringing Plaintiff‟s design. On the contrary, the very purpose of the Plaintiff‟s rights will be rendered infructuous while it will also give strength to third party infringement, which it appears to have begun in the present case. Submissions of defendants 15. The plaintiff‟s subject design is not a valid design as per Section 2(d) and it comes under the purview of Section 4 of the Designs Act, 2000 inasmuch as the claims made by Plaintiff in its subject Design application under No.294938 do not list out any novel or original feature in the subject design.
16. The Plaintiff has misled this Court by claiming novelty over the combination of colors on the front surface of the mould of the subject design. A perusal of plaintiff‟s very own design application reveals that Plaintiff has disclaimed any right to the exclusive use of colors or color combination appearing on the subject design. At any rate, mere addition/placement of 3-4 lines of different color on footwear does not constitute novelty, let alone substantial novelty.
17. The plaintiff‟s contention that placement of MRP of rival products is at an identical position. It is submitted that the plaintiff has disclaimed any and all rights to the exclusive use of the words, letters, numerals, flags, crowns, arms, etc. appearing on the subject design. At any rate, the said placement of MRP in an identical portion cannot come under the realm of design infringement since there cannot be any originality or novelty on the CS(COMM) 1288/2018 Page 6 of 11 same. Further, numerous third party products reflect similar positioning of MRP thereby pointing towards harmonious trade practices.
18. The plaintiff‟s subject design is nothing but a mere trade variant and a repetition to an age old footwear design. Reliance is placed on Rotela Auto Components (P) Ltd. v. Jaspal Singh, 2002 (24) PTC449(Del) and Pentel Kabushiki Kaisha v. Arora Stationers, judgment dated January 08, 2018 in CS (COMM) No.361 of 2017 and Crocs Inc., USA v. M/S Liberty Shoes Ltd., judgment dated 08th February, 2018 in CS (COMM) No.772 of 2016.
19. The plaintiff‟s design clearly lacks novelty and originality and is subject matter of cancellation. To this effect, defendants have already filed a Cancellation Action against the subject design which has been registered under No.D-9/6/2019-KOL and is pending adjudication. It was submitted that no injunction should be granted as the subject design is recent; a serious question as to the validity of a design has arisen and an application for cancellation has been made. Reliance is placed on NikiTasha India Pvt. v. Faridabad Gas Gadgets Pvt.; AIR1985Delhi 136.
20. The adoption of the design in question by the plaintiff is dishonest inasmuch as the registration was secured for a design which was available in the public domain long before Plaintiff‟s adoption of the same. In fact, one of Plaintiff‟s very own mould maker and exporter company under the name Fujian Province Jinjiang City Foreign Trade Co. Ltd., China has disclosed vide letter dated 18th January, 2019 (at page No.120 of Defendants‟ List of Documents dated 29th January, 2019), supported by an CS(COMM) 1288/2018 Page 7 of 11 affidavit, that strap of the subject design was introduced in the market around 7-8 years ago and became very popular since 2015.
21. Further, the placement of stripes on the upper mould/surface pattern of the footwear lacks novelty on account of prior publication as well. One such product under the brand „Showaflops‟ having near identical stripes on upper mould/surface pattern has been in production and sale much prior to Plaintiff‟s adoption of the design in June 2017. In fact, one Mr. T. Betton has purchased the said product from the Amazon store (screenshots enclosed), used it for some time and even reviewed it on 25th May, 2017 with the comment “so good..”. It is apparent that a product which has been commented upon in 25th May, 2017 must have been adopted, manufactured and circulated for sale much prior to the said date, thereby vitiating Plaintiff‟s claim of novelty and originality in the stripes of the subject design. Even the website of the said brand „www.showaflops.com‟ has listed the said product at a price of $ 24.
22. The plaintiff has further argued that the subject design was created by a UK Company for a valuable consideration. However, it is pertinent to note that Plaintiff has not made any disclosure regarding the UK entity or the “valuable consideration” in adoption of the subject design. On the contrary, Plaintiff, in its Plaint under paragraph No.9 at page No.12, has stated that the subject design has been originally conceptualized, designed and created by Plaintiff‟s in-house design team in 2017. It is pertinent to mention that Plaintiff has not made any averment nor filed any documentary evidence along with the plaint qua the agreement with the UK entity. It is, thus, evident that the entire premise, as argued by Plaintiff that CS(COMM) 1288/2018 Page 8 of 11 the subject design was created by a UK Company, is completely fictitious and an afterthought.
23. The plaintiff‟s design is common to trade, insofar as the claim over stripes on mould, lines on strap and holes on the side of the strap are concerned, as there are numerous third party products bearing near identical design and are available for sale in the market.
24. In fact, this Court, on 30th January, 2019 had opined that representatives of Plaintiff and Defendants should conduct a market survey to ascertain availability of third party products under the subject design. The said survey was duly carried out on 5th February, 2019 wherein both the parties came across various third party products with near identical design, readily available for sale in the market. In this regard, an affidavit of the Defendants‟ representative was also filed with the Court on 04th February, 2019. The subject design, thus, being common to trade, does not extract any novelty.
25. It was further submitted that on account of lack of novelty and originality in the subject design of Plaintiff, existence of numerous third party products bearing near identical design and existence of prior art at least since 25th May, 2017, no irreparable loss or damage will be caused to Plaintiff in case the ex parte interim injunction Order dated 14th, December, 2018 is vacated. Findings 26. Vide order dated 30th January, 2019, this Court directed the representatives of both the parties to conduct a market survey to ascertain the availability of third party products with the subject design in pursuance CS(COMM) 1288/2018 Page 9 of 11 to which the representatives of both the parties conducted the survey on 05th February, 2019 and came across various third party products with near identical design which were readily available in the market. The plaintiff is claiming novelty over the combination of colours on the front surface whereas in the design application, the plaintiff has disclaimed any right to exclusive use of colours on colour combinations appearing on the design. The plaintiff is also claiming right over the placement of MRP whereas the plaintiff has disclaimed the right in respect of exclusive use of words, letters and numerals appearing on the design. The defendant has placed on record the letter dated 18th January, 2019 issued by a Chinese manufacturer who has certified that the strap of the subject design was introduced in the market 7-8 years ago and became very popular since 2015. This Court is of the prima facie view that the plaintiff‟s design lacks novelty and originality. The subject design appears to be common to trade. The plaintiff lacks prima facie case. The balance of convenience is in favour of the defendant who shall suffer irreparable loss if the interim injunction is continued.
27. The application is dismissed. The ex parte interim injunction dated 14th December, 2018 is hereby vacated. However, the defendants are directed to maintain the accounts with respect to the manufacture of the footwear products with the impugned design and the same shall be filed every quarter along with an affidavit during the pendency of this suit.
28. It is clarified that the observations made hereinabove are prima facie for the purpose of deciding this application and shall not constitute any expression of final opinion on the merits of this case. CS(COMM) 1288/2018 Page 10 of 11 CS(COMM)1288/2018 29. List before roster Bench for directions on 05th July, 2019. MAY06 2019 ak J.R. MIDHA, J.
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