December 12, 2022
Court: Delhi High court
Case: Relaxo footwears VS Aqualite industries PVT Limited
The case is a dispute between two footwear manufacturing companies Relaxo and Aqualite. Relaxo filed a lawsuit against Aqualite for infringing their footwear design.
In 2018, the Plaintiff came to know about a look-alike footwear product being traded in the market and was astonished to witness that the product sold in the market was an identical replication of one of the products the plaintiff registered in June 2017 under the Designs Act, 2000. According to the plaintiff, the product was originally designed by its in-house design team and a design agency based in the UK. The plaintiff immediately filed a lawsuit against the defendant in the Delhi High Court, seeking relief in this matter. To this, ad-interim injunction was granted against the defendant.
Defendant aggrieved by this order moved an appeal where the Defendant was given the liberty to file application for vacating the injunction.
The single judge was of an opinion that the design in question lacked novelty and originality because:
- That third-party product, similar to that of the Plaintiff was available in the market.
- That Relaxo claimed novelty in respect of the combination of colours and the placement of MRP label, but the application for the design didn’t have such a claim.
- That the strap of the footwear was in use for almost 7-8 years and therefore was not new, as stated by a Chinese manufacturer in its letter.
Averments of Relaxo in Appeal
- Plaintiff submitted that the market survey was not asked by any party but was a procedure devised by the Learned Single Judge. The mere presence of third party products is no proof of lack of novelty and originality in Plaintiff’s designs.
- It was also contended that concept of common to trade is not applicable in the design infringement suits.
- The letter by the Chinese manufacturer is self-serving and doesn’t have any evidentiary value.
- Defendant failed to explain the adoption of the infringing design, whereas the Plaintiff had in detailed documentation submitted the process of designing and conceptualizing and that Aqualitewas a habitual infringer.
Averments of Aqualite
- It was averred that the Plaintiff had failed to show the novel feature of the design in question. The judgement of Crocs IncUsa v. Bata India Ltd &Ors.: (2019) 78 PTC 1was relied on to stated that there is limited area to work with in the footwear industry.
- It was also submitted that similar designs were available on online marketplace since 25.05.2017.
- The affidavit of the Chinese Manufacturer was also relied upon.
Observations of the Court
- The court stated that at the beginning it is important to see the subject application and also a comparison of the competing designs is relevant in such proceedings. After going through the images it was evident that the designs are identical. The question was whether it would be covered under 4(a) or 4(c) of the Act.
2. It was observed that the Court could not suomoto order for market survey, who’s result at best suggests the availability of products and nowhereis of a view that Plaintiff’s design lack novelty. It was also stated that it is upto the Plaintiff, against whom they want to take an action as there are various small players copying designs of popular products and a design holder is not required to pursue action against all of them.
3. Also, the letter from the Chinese manufacturer does not testify to anything concerned with the novelty or the originality of the subject design. As the letter states about the strap, which was present earlier that the subject design but the Relaxo has claimed novelty over the patterns and design of the product, not the strap. The letter of the Chinese manufacturer was of no meritas there was lack of other important documents, so the letter only cannot be considered concrete evidence for the same.
4. The Defendant’s contention with regards to products being available on E-commerce was disregarded stating that on a plain view it was clear that there was no similarity between the products.
5. The contention of common to trade was also responded to stating that it is a principle for trademarks as the idea behind a trademark fails if it is used by a large number of traders in market but such a concept is of no use in Designs as when a design is available, i.e. published prior to application for registration.The application for such a design is rendered incapable of registration.
6. The Section 4 of the Design Act, 2000 was referred to, specifically 4(c), which states that a design cannot be registered if a design is not significantly distinguishable froma known design or combination of designs. But a simple market survey cannot answer this question.
7. The reliance on the Crocs judgement was not accepted stating that the mere fact that there is constraint in footwear industry for designing doesn’t mean that no design is capable of registration. It the designs creators find a way to express themselves in a novel idea, it cannot be disregarded.
The appeal was allowed and the impugned judgment was set aside, the Defendant was restrained from manufacturing, selling, offering for sale, advertising, importing, and exporting or in any manner dealing with products infringing the Subject Design till the disposal of suit.
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Apoorva Sharma is a 2022 Law Graduate from GGSIPU. With interest in Intellectual Property and related rights, To know more Apoorva click here
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