The court emphasized the importance of establishing novelty and originality in design claims and considered the balance of convenience in design infringement cases.

J.R. Midha, J.

I.A.17103/2018

The plaintiff has instituted this suit for permanent injunction for restraining the defendants from manufacturing, selling, offering for sale, advertising, importing, exporting or in any manner dealing in the impugned product (Defendant's product code: UFG 145) or any product which is an obvious or fraudulent imitation of plaintiff's registered design No.294938.

The plaintiff is also claiming till up rendition of accounts and damages from the defendants. In I.A.17103/2018, the plaintiff is seeking ad interim injunction against the defendants.

Plaintiff's Case

2. The plaintiff registered a design of footwear slipper as design No.294938 on 21st June, 2017. According to the plaintiff, the design is novel and original creating comprising of unique features comprising a specific and particular surface pattern, cuts, ridges, sides, graphics etc. and the suit design registration complies with the statutory requirements under Section 2(d) and does not fall under any prohibitions under Section 4 of the Designs Act, 2000.

3. The plaintiff claims that the subject design was originally conceptualized, designed and created on and behalf of the Plaintiff's by a UK based design Agency named M/s The Footsoldiers for valuable consideration along with Plaintiff's in-house design.

4. According to the plaintiff, the defendants have substantially and fraudulently imitated the Plaintiff's suit design. The Plaintiff's registration pertains to combination of surface pattern, shape and configuration comprising several features including its shape, pattern, cuts, ridges, curves, composition of lines etc. The Defendants have literally pirated the Plaintiff's design by blatant and verbatim imitation of each and every element of the said design amounting to infringement/piracy of registered design. The acts of the Defendants are squarely covered under Section 22 of the Designs Act and amounts to infringement.

5. The defendants have wrongly alleged that the Design is not novel and is common to trade. The Defendants have not produced any material or evidence to show that the same design as of the Plaintiff was published prior to the registration. It is not even the Defendants' defense that they themselves had used or published the suit Design prior to the Plaintiff's registration.

6. The Defendants have purchased certain third party products after the filing of the suit and have merely put pictures of the same. However, neither there is material to show that these products were manufactured and/or were sold prior to the Plaintiff's design registration in order to amount to prior publication nor any existence of earlier known designs have been placed on record. In fact, most of these third parties products are local unorganized manufacturers/suppliers having no or minimal legal compliances.

7. One instance of alleged prior art produced by the Defendant at the time of hearing also is substantially different from the design in question so much so the number of stripes, placement of the stripe, the strap design, the slipper side pattern, the surface pattern are all different from the Plaintiff's design.

8. Mere existence of other parties producing the same infringing product is no license to the Defendants to do the same. Reliance is placed on Apollo Tyres Ltd. v. Pioneer Trading Corporation, (2017) 72 PTC 253 (Delhi).

9. The defendants have not discharged their burden to prove lack of novelty. It is submitted that the burden to prove that the design is not novel lies on the Defendants and unless the Defendants are able to prove that through concrete evidence, prima facie presumption of validity shall be in favour of the Plaintiff. Reliance is placed on Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd., (2008) 37 PTC 1 (SC) and Dart Industries Inc v. Polyset Plastics Pvt. Ltd., (2018) 75 PTC 495 (Del).

10. The Defendants have further wrongly alleged that the rival products are different and there is no imitation. The similarity of the