Concept of Newness and originality determine validity of registration to answer the question of Designs & Piracy – So going by Sections 4, 19 and 22 of Designs Act, 2000 it is to be held footwear of Plaintiff is nothing but a sandal. Sandal with open spaces are only trade variations of a sandal. Placing of open spaces or perforation or gaps, and sandals being with or without straps at back, are merely only variations or trade variations of footwear. Trade variations of footwear/sandals cannot be and should not be given exclusive monopoly.

MIPR 2018 (1) 0328 = MANU/DE/0615/2018

IN THE HIGH COURT OF DELHI

M/s. CROCS Inc. USA

vs.

M/s. Liberty Shoes Ltd.

 

 

[Alongwith CS (Comm) No. 570/2017, CS (Comm) No. 571/2017,

CS (Comm) No. 780/2017 and LA. No. 9971/2015, CS (OS) No. 2850/2014,

CS (OS) No. 64/2016, CS (Comm) No. 52/2018 and CS (Comm) No. 53/2018]

CS (COMM) NO. 772/2016 DECIDED ON: 08.02.2018

Judge

Valmiki J. Mehta,}.

Counsel

For Appellant/Petitioner/Plaintiff: Akhil Sibal, Sr. Adv., Ajay Amitabh Suman Pankaj Kumar, Kapil Giri, Vinay Shukla, Nikhil Chawla and Tanvi Mishra Advs.

 

 

For Respondents/Defendant: Jayant Mehta, Kapil Wadhwa, Devyani Nath, Shubhankar, Rahul Kukreja, Advs. for Defendant No. 1 in CS (Comm) No. 772/ 2016, Anil Dutt and VS. Mani, Advs. for Defendant Nos. 2 and 3 in CS (Comm) No. 780/2017 and LA. No. 9971/2015 and CS (Comm) No. 53/2018, Neeraj Grover and Ragini Anand, Advs. in CS (OS) No. 2850/2014, Kapil Wadhwa and Devyani Nath, Advs. in CS (OS) No. 64/2016, Sandeep Sethi, Sr. Adv., C.A. Brijesh, Rohan Seth, Dhruv Grover and Peeyoosh Kalra, Advs. in CS (Comm) No. 52/2018

 

Reference made to :Law of Copyright and Industrial Designs by P. Narayanan (Fourth Edition)

 

Cases referred

Phillips v. Harbro Rubber Company (1920) 37 R.P.C. 233

Le May v. Welch (1884) 28 Ch. D, 24

Simmons v. Mathieson and Cold (1911) 28 R.P.C. 486

 

Bharat Glass Tube Limited v. Gopal Glass Works Limited MANU/SC/2096/2008: (2008) 10 SCC 657: AIR 2008 SC 2520: 2009 (4) ALT 21 (SC): MIPR 2008 (2) 173: (2008) 5 MLJ 939 (SC): 2008 (37) PTC 1 (SC): 2008 (8) SCALE 4

 

M/s. B. Chawla & Sons v. M/s. Bright Auto Industries MANU/DE/0336/1980: AIR 1981 Delhi 95: 19 (1981) DLT 323: 1981 RLR 373

Pentel Kabushiki Kaisha & Anr. v. M/S Arora Stationers & Ors. MANU/DE/0103/2018
Reckitt Benkiser India Ltd. v. WYETH Ltd. MANU/DE/0695/2013: AIR 2013 Delhi
101 (FB): AIR 2013 Delhi 113: 198 (2013) DLT 521: 2013 (54) PTC 90 (Del): 2014 (1)
RCR (Civil) 352: 2014 (1) RCR (Rent) 352 (Discussed)

Civil Procedure, 1908

Section 35

Section 35(4)

Order XXXIX Rule 1

Order XXXIX Rule 2

Order XXXIX Rule 4 Copyright Act, 1957

Section 2(c) Commercial Courts, Commercial Division and Commercial Appellate Division of

High Courts Act, 2015

Designs Act, 2000

Section 2(d)

Section 4

Section 4(a)

Section 4(b)

Section 4(c)

Section 4(d)

 

Section 11

Section 19

Section 19(b)

Section 19(d)

Section 19(1)

Section 19(1) (b)

Section 19(l)(c)

Section 19(l)(d)

Section 22

Section 22(3)

Section 22(4) Indian Penal Code, 1860

Section 479

Patents and Designs Act, 1907 Trade and Merchandise Marks Act, 1958

Section 2(1) (v)

HEAD NOTE

Designs – Piracy – Prior publication – The stand of the plaintiff is clearly hit by concept of “prior publication” which would seriously undermine validity of registration per sections 4,19 and 22 of Designs Act, 2000. So when the designs of footwear of plaintiffs are in public domain prior to registration, the element of exclusivity is lost thereof. Therefore Held, once design of footwear of Plaintiff is found in public domain as shown in website of Holey Shoes prior to 28th May, 2003 then clearly in view of Section 4(b) read with Section 19(d) of Act, registration granted to Plaintiff is clearly faulty and is liable to be cancelled under Section 19 of Act. In such scenario therefore Plaintiff cannot seek benefit of its registered design for seeking reliefs in present case. Taking a prima facie view of matter, since Plaintiff has not filed its copies of print out downloaded from website of Holey Soles as on 10th December, 2002 and 17th February, 2003, this Court at this stage for arriving at a prima facie view would accept factum that a design similar to design of footwear of Plaintiff had already been published and sold by M/s. Holey Soles prior to 28th May, 2003, and hence, such design having existed in public domain prior to Plaintiff’s registration, Plaintiff therefore cannot claim exclusivity for its registered design merely on ground that Plaintiff’s footwear/registrations does have a strap at back of its footwear. On behalf of Plaintiff it could not be seriously disputed, and nor it could have been, that printouts filed by Defendants from website of Plaintiff itself show as on 16th October, 2002, 24th November, 2002, 25th November, 2002, 28th November, 2002 and 13th December, 2002 that registered designs were in public domain as on those dates which are prior to date of priority of registration being 28th May, 2003. In view of aforesaid publications of Plaintiff itself existing in public domain in website of Plaintiff much prior to 28th May, 2003 showing registered designs footwear of Plaintiff, and that too repeatedly, registered designs of Plaintiff are to be held to be already existing in public domain prior to 28th May, 2003 and consequently registrations of Plaintiff are liable to be cancelled in terms of Section 19(1) (b) read with Section 4(b) of Act. Therefore, clearly registered designs of Plaintiff were in public domain prior to priority date of 28th May, 2003 and therefore registration granted to Plaintiff with respect to registered designs which are subject matter of present suits will not afford any legal entitlement to Plaintiff to allege piracy of designs under Section 22 of Act.

  Concept of Newness and originality determine validity of registration to answer the question of Designs & Piracy – So going by Sections 4, 19 and 22 of Designs Act, 2000 it is to be held footwear of Plaintiff is nothing but a sandal. Sandal with open spaces are only trade variations of a sandal. Placing of open spaces or perforation or gaps, and sandals being with or without straps at back, are merely only variations or trade variations of footwear. Trade variations of footwear/sandals cannot be and should not be given exclusive monopoly.

Held, it is necessary for protection of a registered design that, registered design must be an Intellectual Property Right created after application of sufficient time,

  labour, effort, etc, and there must be sufficient newness or originality i.e. existence of requisite innovation and trade variations of known designs cannot result in newness and originality. No doubt, once Plaintiff has a registered design in his favour then it is for Defendants to plead and establish that registered design is such which is liable to be cancelled under one or more Sub-sections of Section 19(1) of Act, for these aspects would be available as defences to claim of reliefs by

  Plaintiff (in view of Sub-section (4) of Section 22 of Act), but, issue still remains same as to whether registered designs of Plaintiff have or have not sufficient newness or originality or that much amount of innovation for being called an Intellectual Property Right. One does not have to travel too far to understand that footwear of Plaintiff is nothing but a sandal. Sandal with open spaces are only trade variations of a sandal. Placing of open spaces or perforation or gaps, and

  sandals being with or without straps at back, are merely only variations or trade variations of footwear. Trade variations of footwear/sandals cannot be and should not be given exclusive monopoly. Moreover features which have been argued on behalf of 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 was intention of legislature in terms of Section 4(a) of Act, read with Section 19(1) (d) of Act. Therefore, registered design of Plaintiff with respect to its footwear, does not have necessary newness or originality for same to be called a creation or innovation or an Intellectual Property Right, and which must necessarily exist as stated by Supreme Court in judgment in case of Bharat Glass Tube Limited v. Gopal Glass Works

 Limited. Registered design of Plaintiff is such which is liable to be cancelled as per Section 19(1) (d) of Act, read with Section 4(a) of Act, and therefore such factual defences entitles Defendants to succeed in view of Sub-section (4) of Section 22 of Act, to argue against grant of reliefs injunction applications which are subject matter of present order. Interim injunction applications filed under Order XXXIX Rules 1 and 2 Code of Civil Procedure in seven suits would stand dismissed and interim application filed under Order XXXIX Rule 4 Code of Civil Procedure  filed by Defendant in CS (COMM) Nos. 52/2018 and 2850/2014 would stand allowed.

 

JUDGMENT

Valmiki J. Mehta, J.

  CS (COMM) No. 772/2016 and LA. No. (to be numbered) (under Order XXXIX Rules 1 and 2 Code of Civil Procedure)

 

 

CS (COMM) No. 571/2017 and LA. No. 6811/2015 (under Order XXXIX Rules 1 and 2 Code of Civil Procedure)

CS (COMM) No. 780/2017 and LA. No. 9971/2015 (under Order XXXIX Rules 1 and 2 Code of Civil Procedure)

CS (COMM) No. 2850/2014 and LA. No. 19747/2014 (under Order XXXIX Rules 1 and 2 Code of Civil Procedure) and LA. No. 24965/2014 (under Order XXXIX Rule 4 Code of Civil Procedure)

CS (COMM) 52/2018 and LA. No. 1791/2018 (under Order XXXIX Rules 1 and 2 Code of Civil Procedure) and LA. (to be numbered) under Order XXXIX Rule 4 Code of Civil Procedure)

CS (COMM) 53/2018 and LA. No. 1794/2018 (under Order XXXIX Rules 1 and 2 Code of Civil Procedure)

  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 Code of Civil Procedure 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 v. 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 of the Plaintiff Bearing Registration No. 197685 which is said to be valid up to 28th May, 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:-

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  1. 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:-

 

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  1. 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:-

 

  1. 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.

  • 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
    to the Plaintiff for the purposes of destruction and erasure.
  • 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.
  • Costs of the proceedings.
  • 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.

  1. 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.
  2. 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)
    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:-

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  1. 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, 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 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.

 

  1. 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.
  2. 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 (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-

  • is not new or original; or
  • 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

 

  • is not significantly distinguishable from known designs or
    combination of known designs; or
  • comprises or contains scandalous or obscene matter shall not be

shall not be registered.

Section 19. Cancellation of registration.-(l) 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:-

  • that the design has been previously registered in India; or
  • that it has been 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
  • 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.-(l) During the existence of copyright in any design it shall not be lawful for any person-

  • 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
  • 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
  • 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.

(2)  If any person acts in contravention of this section, he shall be liable for
every contravention-

  • to pay to the registered proprietor of the design a sum not exceeding
    twenty-five thousand rupees recoverable as a contract debt, or
  • 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 Sub-section shall be instituted in any Court below the Court of District Judge.

  • In any suit or any other proceeding for relief under Sub-section (2), ever
    ground on which the registration of a design may be cancelled under Section
    19 shall be available as a ground of defence.
  • 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.
  • 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.

 

  1. 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.
  2. 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 10th December, 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 10th December, 2002 is depicted as under:-

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  1. Similar depictions as shown above also exist on the same website of Holey Sole?
    as on 17th February, 2003. Internet downloads of Holey Soles on 17th February, 200:
    are filed as documents by the Defendants. The footwear shown on 17th February, 200:
    is same as on 10th December, 2002 except that the colours of the said footwear, whic’f
    are sandals without a strap, are shown to be of different colours than the reddish
    pink colour as on 10th December, 2002. These depictions dated 17th February, 200′:
    are as under:-

 

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  1. The registration which is granted to the Plaintiff in India is effective from 28th May, 2004. In U.S. it is informed to this Court on behalf of the Plaintiff that the design was also registered on 28th May, 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 28th May, 2004 i.e. from 28th May, 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 28th May, 2003 then clearly in view of 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 10th December, 2002 and 17th February, 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 10th December, 2002 and 17th February, 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. v. WYETH Ltd.2 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.

(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 10th December, 2002 and 17th February, 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 17th February, 2003, then what was the difficulty in the Plaintiff filing its copies of printout downloads of website of Holey Soles as on 10th December, 2002 and 17* February, 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 10th December, 2002 and 17th February, 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 28th May, 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 Plaintiff’s footwear/registrations does have a strap at the back of its footwear.

  1. 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 28th May, 2003, and that the Defendants have filed the printout downloads from the website of the

 

 

Plaintiff itself earlier than 28th May, 2003 i.e. as on 16* October, 2002, 24th November, 2002, 25th November, 2002, 28th November, 2002 and 13th December, 2002 showing as per these printout downloads that the subject designs are clearly in the public domain w.e.f. 16th October, 2002, 24th November, 2002, 25th November, 2002, 28th November, 2002 and 13th December, 2002 i.e. prior to the priority date of registrations of the Plaintiff w.e.f. 28th May, 2003. For the sake of convenience, these printout downloads from the website of the Plaintiff, are reproduced as under:-

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  1. 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 16lh October, 2002, 24th November, 2002, 25th November, 2002, 28* November, 2002 and 13th December, 2002 that the registered designs were in public domain as on those dates which are prior to the date of priority of registration being 28th May, 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

 

28th May, 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 28th May, 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 28lh May, 2003 and consequently the registrations of the Plaintiff are liable to be cancelled in terms of Section 19(l)(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 28th May, 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 entitlement to the Plaintiff to allege piracy of the designs under Section 22 of the Act.

  1. 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.
  2. 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 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(l)(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.

20.1 have recently in the judgment delivered in the case of Pentel Kabushiki Kaisha & Anr. v. M/S Arora Stationers & Os.3 CS (COMM) No. 361/2017 decided on 8th January, 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 v. 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 v. Gopal Glass Works Limited5 (2008) 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 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:-

  1. 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 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;
  • 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     263172  for  purpose   of
    erasure/destruction;
  • 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.

  1. In the interim injunction application which is being disposed of in terms of the present order, the following reliefs are prayed:-
  2. 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 are identical or
    obvious and fraudulent imitation to the Plaintiffs’ Copyright in the
    Registered Design No. 263172 during the pendency of the suit.
  3. 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

  1. Sub-section (3) of Section 22 of the Act provides that inspite 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.
  2. (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
    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 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 v. 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:-

  1. 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.

  1. Similar view was expressed by Buckley L.J. on the question of quantum
    of novelty in Simmons v. Mathieson and Cold (1911) 28 R.RC. 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 brain of its proprietor and that must not be in a trivial or infinitesimal degree, but in some substantial degree.

  1. In Phillips 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 duty 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.
  2. 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
    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.
  3. 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
    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 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)

  1. 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.
  2. The Supreme Court in the case of Bharat Glass Tube Limited v. Gopal Glass
    Works Limited (2008) 10 SCC 657 has made similar observations in para 26 and
    this para 26 reads as under:-
  3. 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 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.

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)

  1. 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 Mis. 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)

  1. 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.
  2. 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.

  1. 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 pertaining to the registered designs. Can it be
    said that such footwear of the registered designs have newness or originality.
  2. 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.
  3. 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 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.
  4. 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 o:
    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 tc
    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 o:
    the wearer of the same. Besides the issue of convenience of the wearer of the same
    footwear also was different depending on the place 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 sc
    that besides giving protection to the feet against injury, the footwear also providec
    In countries and areas where climatic conditions are hot or humid obvioush
    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 concernec
    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 c:

 

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.

  1. 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, 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 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 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(l)(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 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(l)(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 27th May, 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 of course even if it would have so been, yet the prior publication of Holey Soles footwear (and by Plaintiff itself) cannot be wished away by the Plaintiff.

  1. In view of the aforesaid discussion, interim injunction applications filed under
    Order XXXIX Rules 1 and 2 Code of Civil Procedure in the aforesaid seven suits
    would stand dismissed and the interim application filed under Order XXXIX Rule 4
    Code of Civil Procedure filed by the Defendant in CS (COMM) Nos. 52/2018 and
    2850/2014 would stand allowed.
  2. Now the issue remains as to whether costs should be awarded in favour of the
    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
    Code of Civil Procedure 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 Code of Civil Procedure 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:

  • whether costs are payable by one party to another;
  • the quantum of those costs; and
  • 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—

  • the conduct of the parties:
  • whether a party has succeeded on part of its case, even if that party
    has not been wholly successful;
  • whether the party had made a frivolous counterclaim leading to delay
    in the disposal of the case;

 

  • whether any reasonable offer to settle is made by a party and
    unreasonably refused by the other party: and
  • 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 proportion of another party’s costs;
  • a stated amount in respect of another party’s costs:
  • costs from or until a certain date;
  • costs incurred before proceedings have begun:
  • costs relating to particular steps taken in the proceedings:
  • costs relating to a distinct part of the proceedings: and
  • interest on costs from or until a certain date.

(underlining added)

  1. A reading of Section 35 Code of Civil Procedure 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 awarded are under different heads as provided under Sub-section (4) of Section 35 Code of Civil Procedure. 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.

  1. 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 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.
  2. 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 of legal costs. These costs will be
    paid by the Plaintiff to each of the Defendants within a period of eight weeks from

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

  1. I may note that issues in the suits have already been framed and matters are
    listed before the Local Commissioners for recording of evidence.
  2. List for awaiting the proceedings for recording of evidence on 27th August, 2018.
    CS (OS) Nos. 52/2018 and 53/2018
  3. 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

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