Proprietor Of Registered Design Doesn't Forfeit Its Right Merely Because It Hasn't Enforced It Against All Infringers: Delhi High Court

The Delhi High Court has said that a proprietor of a registered design does not forfeit its right merely because it has not enforced the same against all infringers.The design holder retains the right to interdict infringement of the registered design notwithstanding that it has not proceeded against some of the infringers, said the court."It is not unusual for small players to copy designs, which have become popular. It is not necessary for the proprietor of a design to pursue its remedies against each dealer/manufacturer selling infringing products. It is possible that the benefits of pursuing a particular infringer may not be commensurate with the cost and effort for doing so," it added.The division bench of Justice Vibhu Bakhru and Justice Amit Mahajan further said it is understandable that a design holder would evaluate its option including on commercial considerations. "A design holder is not required to pursue the available remedies against all infringers in order to pursue its remedies against some infringers. It is open for the design holder to select the infringers that it wants to proceed against. The rights of a proprietor of a registered design is not diluted merely because there are multiple infringers," said the court.The court made the observations in its judgment on the appeal filed by Relaxo Footwears Limited against the judgement of a single bench which had dismissed its application for interim injunction in May 2019, and allowed the application filed by its competitor Aqualite for vacation of an ex parte ad interim injunction dated 14.12.2018.Both Relaxo and Aqualite are famous footwear brands. Relaxo in 2018 had filed a suit accusing Aqualite of infringing its design relating to slippers. Relaxo claimed that the design is novel and unique in particular in respect of the surface pattern, cuts, ridges and curves.Single Bench DecisionThe Single Bench in its judgement said that market survey conducted by parties pursuant to its order indicated that there were third-party products available in the market, which were similar to the Subject Design.The court also said Relaxo claimed novelty in respect of the combination of colours and the placement of the label indicating the maximum retail price (MRP), but its application for registration of the Subject Design did not include any such claim of novelty. It had also taken note of the letter dated 18.01.2019 sent by a Chinese manufacturer stating that the strap of the footwear in the Subject Design was introduced in the market seven or eight years ago and had become very popular since the year 2016. Thus, the court had held the design to be common to trade.Division Bench DecisionThe division bench headed by Justice Bakhru in its decision on the appeal said it is apparent that design of the products of Aqualite is almost identical to the Subject Design.The court at the outset noted that the single bench could not could not have suo moto directed the parties to conduct a market survey. "Further, we are also not persuaded to accept that the results of the market survey were relevant to address the controversy before the learned Single Judge. The market survey would, at best, indicate that the products were available in the market. It would not establish that the Subject Design lacked novelty and originality at the time when it was registered," said the court.The court said it is unable to accept that a finding that the Subject Design lacked novelty and originality could have been arrived at on the basis of the market survey without any evidence as to when the said products were introduced in the markets by their respective sellers. It necessarily was required to be determined with reference to the date when the Subject Design was registered, said the court.The court also said the letter stating the strap had been introduced in the market seven to eight years ago would be of little assistance in arriving at the prima facie finding in respect of the Subject Design as Relaxo had not claimed novelty in the design of the strap."Relaxo had claimed novelty in the shape, configuration and surface pattern as illustrated in the images of the Subject Design. Relaxo had not claimed any novelty in respect of the strap of the footwear. The Subject Design indicates a surface pattern comprising of four parallels stripes on one half of the top surface. The central stripe runs at the center of the surface with three further stripes on one side. In addition, there is a white stripe running through a groove at center of the vertical surface of the footwear. The question whether the Subject Design is novel or original was required to be ascertained by determining whether it was published or available in public domain prior to the registration," said the court.It further noted that Aqualite had also claimed that a product bearing a similar design was available on Amazon and therefore, the said design was available in the public domain prior to registration of the...

Proprietor Of Registered Design Doesn't Forfeit Its Right Merely Because It Hasn't Enforced It Against All Infringers: Delhi High Court

Nupur Thapliyal

Allowing the appeal of Relaxo, the court said Acqualite is restrained from manufacturing and selling or in any manner dealing with products infringing the Subject Design of the slippers till the pendency of the suit.

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