Mere registration of a design does not automatically entitle the registrant to claim protection. The protection of essential features and the extent of similarity in designs are crucial in determining infringement.

JUDGMENT

Jayant Nath, J.

IA No. 5717/2021 (u/O 39 R 1 & 2 CPC)

1. The present application is filed by the plaintiff seeking an ex parte injunction to restrain the defendant, its directors, etc. from manufacturing, selling, advertising, etc. the impugned footwear products which are said to be an imitation of the plaintiff's products/design/trade dress/get up. Other connected reliefs are also sought.

2. It is the case of the plaintiff that the plaintiff began as a small enterprise in the year 1976. It was incorporated in 1984. It is stated that beginning from manufacturing Hawaii slippers, the plaintiff through sheer commitment has grown into a large-scale enterprise. It is further stated that from a modest sales figure of Rs.10 lakhs in 1977, the turnover of the plaintiff grew up to Rs.2,400 crores last year. It is stated that the plaintiff manufactures over 6 lakh pairs of footwear per day and 18 crores pairs per year and has emerged as the largest footwear producer in India. The plaintiff's products are marketed under various distinctive trademarks/labels and with a unique get up and trade dress including the house mark RELAXO and various product specific brands like BAHAMAS, FLITE, SPARX, SCHOOLMATE, etc. .

3. It is urged that the present suit pertains to intellectual property rights of the plaintiff in the design and/or overall trade dress/getup of certain footwear products. The defendant is said to have unlawfully imitated and pirated the said design/trade dress of the plaintiff in the said products.

4. Suit Product No. 1 is `BHG136'. The same is depicted as follows:-

It is stated that a distinctive, distinguishable and prominent feature of the aforesaid design/getup/trade dress is the vertical ridges/grooving pattern running across the periphery of the entire slipper. The shape, configuration and surface pattern of the said product is said to be a duly registered design under the Designs Act, 2000 bearing Regn. No. 325071 dated 27.12.2019.

5. Suit Product No. 2 is `BHG 137' which is as follows:-

It is stated that a distinctive and distinguishable feature of the aforesaid design is vertical ridges/grooving pattern running in the upper half of the periphery of the slipper. The said product is said to have been honestly and originally adopted by the plaintiff in November 2019. It is urged that by virtue of prior and continuous use, the plaintiff has acquired goodwill and reputation for the product. The said product is also said to have been duly registered under the Designs Act, 2000 bearing Design Regn. No. 325074 dated 27.12.2019.

6. Suit Product No.3 is `BHG 147'. On 03.06.2021 while addressing arguments, learned counsel for the plaintiff had submitted that for the purpose of the present application, the plaintiff does not press any relief for the said design for the time being as the design is not a registered design. Hence, there is no further need to spell out the details for the said product.

7. It is the submission of the plaintiff that the getup/trade dress/design of the suit products are inherently distinctive, arbitrary and fanciful and having no commonplace existence for or connection with any existing products/footwear. It is stated that the plaintiff's products are sold throughout India and exported to various countries like UAE, Australia, Bahrain, etc.

8. It is stated that the plaintiff in February 2021 received information from their market sources about availability of certain lookalikes of the plaintiff's suit products being sold in the markets of Delhi. The plaintiff was shocked to see that the products were slavish replicas of the plaintiff's suit products copying the unique and distinctive elements of the plaintiff's products. It is urged that a mere perusal of the impugned products of the defendant would reveal that the defendant has deliberately and fraudulently imitated the plaintiff's products. The defendant is also pirating the trade dress of the plaintiff's products with malafide and fraudulen