The onus to prove lack of novelty or originality in a design as a ground of defence against design piracy lies with the defendants, and unsubstantiated claims cannot invalidate the plaintiff's copyright.

ORDER (Oral)

C. Hari Shankar, J.

I.A. 13291/2022 (Order VIII Rule 1(3) of the CPC for placing documents on record)

1. By this application preferred under Order VIII Rule 1(3) of the Code of Civil Procedure, 1908 (CPC), the defendants seek to place certain additional documents on record. Following the decision in Sudhir Kumar @ S Baliyan v. Vinay Kumar G.B., 2021 SCC OnLine SC 734, the application is treated as having been preferred under Order XI Rule 1(10) of the CPC, as amended by the Commercial Courts Act, 2015.

2. Mr. Rishi Bansal, learned Counsel for the plaintiff initially opposed the application but, later, agreed to the documents being taken on record.

3. Accordingly, the application is allowed. The documents filed with the application are taken on record.

I.A. 12436/2022 (Order XXXIX Rules 1 and 2 of the CPC) and I.A. 13344/2022(Order XXXIX Rule 4 of the CPC)

4. This case was originally pending before the learned Commercial Court and has subsequently been transferred to this Court. In I.A. 12436/2022 filed by the plaintiff under Order XXXIX Rules 1 and 2 of the CPC, ad interim relief was granted by the Additional District Judge ('the learned ADJ') vide order dated 25th June 2021.

5. The defendants have filed IA 13344/2022 under Order XXXIX Rule 4 of the CPC for vacation of the said order dated 25th June 2021.

6. I have heard Mr. Rishi Bansal, learned Counsel for the plaintiff and Mr. Arnav Goyal, learned Counsel for the defendants on these applications and proceed, by this order, to decide the applications.

7. The plaintiff is a well known entity engaged in the manufacture of, among other things, musical keyboards. One of the keyboards of the plaintiff stands registered in the plaintiff's favour as an 'Electronic Keyboard' vide Design Registration No. 224547, with effect from 2nd September 2009. The registration is valid and subsisting, till 2nd September 2024. The Certificate of Registration issued to the plaintiff by the Controller of Designs certifies that novelty resides in the shape and configuration of the keyboard. The various views of the keyboard, in each of which the Certificate of Registration certifies existence of novelty in its shape and configuration may be thus presented, in a tabular form:

Details of Casio mini Keyboard Design registration

8. The plaintiff claims copyright in the registered design, under Section 11(1)^1[11. Copyright on registration. -

(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.^] read with Clause (c) of Section 2^2[(c) 'copyright' means the exclusive right to apply a design to any article in any class in which the design is registered;^] of the Designs Act, 2000.

9. The plaintiff manufactures keyboards carrying the suit design under Model Nos. SA-46 and SA-47, the difference between the two being with respect to the colour of the base of the keyboards.

10. In order to fortify its case regarding its goodwill and repute in the market, the plaintiff has provided the figures of returns from sale of the products carrying the suit design from the year 2011 till 2020- 21 in India. The defendant does not dispute the reputation or goodwill of the plaintiff.

11. The plaint asserts that the suit design has become indelibly associated with the plaintiff and has, over a period of time, acquired secondary significance. The purchasing public, it is submitted, invariably associates the suit design with the plaintiff's keyboard.

12. The plaintiff is aggrieved by the adoption, by the defendants, of a near identical design for its keyboard sold under the brand name 'Nexus32', under its registered trademark 'Blueberry'. The plaint provides photographs of the plaintiff's and the defendants' keyboards, to emphasiz