The protection of registered design depends on aesthetic appeal, and if the design possesses significant artistic value, it can be safeguarded against piracy despite functional elements.

Judgment :

SHARMILA U. DESHMUKH, J.

1. This is an action for piracy of registered design and passing-o By order dated 24^th September, 2024, this Court had granted ad-interim reliefs in terms of prayer clauses (a) to (d). Subsequently, the Defendants entered appearance and filed its Affidavit-in-reply dated 23^rd November, 2024. Though initially it was the Defendant’s contention that the ad-interim order ought to be vacated and it was not necessary for filing of a separate application under Order XXXIX, Rule 4 of Code of Civil Procedure, 1908, it was agreed that the Interim Application itself could be taken for final disposal. Accordingly the Interim application was taken up for final hearing and is being disposed of by this order.

2. The Plaintiffs are engaged in the business of marketing and sale of travel accessory products through online and offline modes, which are manufactured by Plaintiff No. 2. The case of the Plaintiffs is that in the year 2015, Plaintiff No. 2 designed an innovative and distinctive “Travel Blue Tranquility Neck Pillow” and obtained registration of the tranquility pillow in India on 9^th March, 2016 claiming reciprocity from 19th October, 2015. The certificate of registration was issued on 24th July, 2017 with a reciprocity date of 19^th October, 2015 bearing number 281315. The Plaintiff No. 2 applied for extension of copyright in the Plaintiffs’ registered design under Section 11 of the DESIGNS ACT , 2000 before Controller of Designs which has been extended for five years i.e., till 19^th October, 2030. The Plaintiff registrations in Europe, Republic of China, United States of America and Australia apart from India. According to the Plaintiffs, since October, 2015, Plaintiff No. 1 has done substantial business in respect of its tranquility pillow and the annual sales figure as of 2024-2025 is Rs. 70,20,507.80 with the sales and promotional expenses at Rs. 25,20,934.77. It is stated that the tranquility pillow was widely accepted on various social media platforms and exhibitions and conferences. The Plaintiff No. 2 claims to be a proprietor/owner of tranquility pillow design bearing design registration no. 281315. It is submitted that appropriate steps were taken by the Plaintiffs in protecting its registered design against the piracy by third parties.

3. In or around August, 2024, the Plaintiffs became aware of the Defendant’s impugned travel neck pillow bearing the same distinctive features as the Plaintiff’s design in retail stores in Mumbai and that the Defendants had been marketing their neck pillow on various e- commerce websites. It is submitted that the Defendants have not only copied the Plaintiff’s identical design but have also copied the exact colours in which the Plaintiff’s product was being sold, i.e. gray, blue, purple and pink colors. The tabular comparison is placed as part of the Plaint. In such circumstances, the suit came to be filed for piracy of the registered design and passing-off.

4. By ad-interim order dated 24^th September, 2024, this Court came to a prima facie view that aesthetic and visual appeal of the rival products is identical and that the impugned product is obvious imitation and a replica and/or near replica of the said Tranquility Pillow/Plaintiff’s registered design. It further came to a prima facie view that dishonesty of the Defendants is also evident as they are selling their goods in the same colors as those of