A design must have visual appeal and novelty to be protected under the Designs Act, and the existence of prior art can invalidate a design registration.

VIPIN SANGHI, J.

1. By this order, I proceed to dispose of the aforesaid application filed by the plaintiff to seek ad-interim injunction against the defendant under Order 39 Rule 1 & 2 CPC.

2. The plaintiff has filed the present suit alleging infringement of the plaintiff’s registered design in respect of a Hollow Section Pipe – which the plaintiff claims, as novel and original. The plaintiff claims that novelty and originality in the Hollow Section Pipe designed by the plaintiff resides in its shape and configuration which gives the Hollow Section Pipe an original, unique, new and distinctive configuration, look and feature, which was not available in the market earlier and the same was designed and introduced for the first time by the plaintiff. The plaintiff claims that its original and novel design was not published in India or in any other country, and it was not disclosed to the public anywhere in or outside India prior to the date of filing of the plaintiff’s application for registration of its design. The plaintiff claims that the novelty and originality of the design is as a result of research and development done by its designing team. The design of the plaintiff has special ocular features which appeal to the eye, because of its shape and configuration.

3. The said Hollow Section Pipe is claimed by the plaintiff to be in use in amusement parks, playground equipment, signages, leisure equipment, furniture, transport industries, ceiling support systems, support structures, prefabricated structures etc. It is used as a preferred alternative for rolled products like angles, channels and beams. It is also used for fluid and wire conveyance and can also be used as a door frame.

4. The plaintiff applied for and got registered its design under the Designs Act, 2000 (hereinafter “the Act”) in classes 23-01 and 25-99. The applications were made on 25.07.2014 and registration was granted in respect of the Hollow Section Pipes in classes 23-01 vide design registration no.264233, and in class 25-99 vide design registration no.264234. Post registration of the aforesaid designs, the plaintiff claims continuous manufacture and sale of Hollow Section Pipes under the registered designs. The plaintiff claims that its Hollow Section Pipes under the registered design have built up handsome sales over a short span of time. From sales of Rs. 20 lacs in July 2014, the same have arisen to over Rs. 2 crores in January 2016.

5. The defendant is alleged to have knowingly and malafidely infringed the plaintiff’s aforesaid registered designs in Hollow Section Pipe. The defendant filed two applications for cancellation of the plaintiff’s registered designs on 05.02.2016. Upon receipt of notice thereof on 08.02.2016, the plaintiff learnt that the defendant had adopted same/ similar designs as that of the plaintiff. The plaintiff states that the defendants have, without waiting for the outcome of the cancellation proceedings initiated before the Controller of Designs, Kolkata, copied all the essential and distinguishing features of the plaintiff’s registered design in Hollow Section Pipes manufactured by it and started manufacturing and selling its infringing products. The plaintiff submits that it became aware of the actual presence of the defendant’s infringing Hollow Section Pipe on 19th February, 2016 when the same became visible in the market.

6. The plaintiff has set out in the plaint itself, the pictures of the products of the plaintiff and the defendant to compare the said product as they appear visually. The pictures are extracted herein below:

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7. In the suit, the plaintiff seeks a decree of permanent injunction to restrain the defendant from infringing or using, in any manner, the plaintiff’s registered design bearing nos.264233 in class 23-01 and no.264234 in class 25-99 and in relation to Hollow Section Pipes. Other consequ