The main legal point established in the judgment is that for a design to be protected under the Designs Act, 2000, it must be new or original, and not previously published or registered.

Manmohan Singh, J.

1. The plaintiff has filed a suit for permanent injunction restraining infringement of design under Registration No.241153, passing off, rendition of accounts, damages etc. The said suit was listed along with IA No.19671/2013 under Order 39 Rules 1 and 2 CPC wherein this Court passed the interim order. Upon service, the defendants have filed reply to the interim application and also filed an application being I.A. No.596/2014 under Order 39 Rule 4 CPC for vacation of the ex parte ad-interim order passed on 6th December, 2013.

Case of the Plaintiff

2. i) The Plaintiff produces wide variety of open face and full face motorcycle helmets like Safety Helmets, Ski Helmets, Grand Prix Racing Helmets, Jet Helmets, Off Road Helmets, Moto Cross Helmets etc. in different sizes catering to all customer segments.

ii) The helmets, pannier boxes and other motor accessories of the Plaintiff and its sister concerns are manufactured under strict quality control to ensure that they meet the national and the international safety standards.

iii) The Plaintiff’s product is a helmet bearing novel and distinctive features in shape, configuration and surface pattern. The Plaintiff is the registered proprietor of the design under No.241153 dated 1st December 2011 as per the Designs Act, 2000 (hereinafter referred to as “the Act”) in respect of “the shape, configuration and surface pattern of the Helmet”.

iv) The shape, configuration and surface pattern is distinctive and unique to the Plaintiff’s helmet sold under the trademark “STEELBIRD”.

v) The Plaintiff has been using the helmets bearing the design No.241153, since January 2012.

vi) The plaintiff has marketed and promoted the said products in India and abroad on a substantial scale. The plaintiff’s product under the aforesaid design respectively has met with unprecedented success within a short period of time. Thus the design for the aforesaid helmet has come about to be exclusively identified with the plaintiff by the members of trade and the public in general within this period of time. The plaintiff has sold a huge number of helmets bearing the said design. (The sales figures and the number of the Plaintiff’s helmets bearing the said design sold in the last two years are given.)

vii) The plaintiff has earned substantial goodwill and reputation inter alia in the design of the said helmet as a result of its efforts towards the creation of the said design. Due to such efforts of the plaintiff, the said design has acquired a secondary meaning in the eyes of the public as denoting the goods of the plaintiff and no one else.

viii) In November, 2013, the plaintiff learnt about the fraudulent imitation of its registered design under No.241153 by the defendants who were manufacturing and selling helmets under the mark ‘Format’ in the same design as that of the plaintiffs wherein the defendants had copied the essential features of the plaintiff’s registered design applied to helmets.

ix) The plaintiff’s representative visited a shop and purchased the defendants infringing product without a cash memo. On enquiry, the plaintiffs came to know that the defendants have recently launched impugned helmets bearing the said design in the month of November, 2013.

xi) From comparison of the plaintiff’s and the defendants’ helmets there is no difference between any essential features of the plaintiff’s registered design and that of the defendants impugned product design. Therefore it is evident that the impugned product of the defendant under the mark ‘Format’ constitutes an infringement of the prior statutory rights that vest in the plaintiff by virtue of registered design No.241153.

3. The defendants have filed the reply to the injunction application and also filed a separate application for vacation of the ex-parte orders. In the application under Order 39 Rule 4 CPC, the prayer is made that the ex-parte interim order dated 6th December, 2013 is liable to be vacated inter alia on the following grou