1. Appeal No.62 of 2012 is filed against order dated December 23, 2011 of the learned Single Judge granting ad-interim relief by which the defendants are restrained from passing off the defendants' footwear, which are held to be deceptively similar to the plaintiff's footwear. The plaintiff has filed Appeal (L) No.97 of 2012 challenging the order dated December 9, 2011 by which the learned Single Judge had declined to grant ad-interim injunction on the basis of infringement of the plaintiff's registered design for the same footwear. For the sake of brevity and convenience, the parties are referred to by their nomenclature in the suit.

2. On December 15, 1999 the plaintiff obtained registration under Designs Act, in relation to a footwear design, being registration No.181088. The registration mentioned that novelty resides in the shape, configuration and pattern of the "Footwear" as illustrated. It further indicated that the design is neither restricted to any colour or combination of colours, nor is any claim made by virtue of this registration to the exclusive use of the particular colour or combination of colours as illustrated in the representations. Similarly on December 29, 1999, the plaintiff obtained registration under the Designs Act in relation to footwear, being registration No. 181193 and third registration under the Designs Act in relation to another footwear on March 7, 2000 vide registration no.181829. The products are named by the plaintiff as "Methiyadi Yodhha", "Methiyadi Yoga" and "Methiyadi Export-SwamisZ". The plaintiff has been selling these products from 2000 onwards in the open market. Following is the chart showing annual turnover of the plaintiff.

Accounting year 2006-2007 2007-2008 2008-2009 2009-2010 April-2010 to Jan-2011 Amounts (Rs.) Rs.53,27,359/-Rs.38,32,503/-Rs.1,21,37,480/-Rs.2,13,52,355/-Rs.1,54,88,787/-

3. It is the plaintiff’s case, and not seriously disputed by the defendants that, upon coming to learn about infringement of the registered designs of the plaintiff, the plaintiff issued caution notice on June 14, 2009 and thereupon the infringing goods disappeared from the market. Thereafter on June 22, 2009, the defendants made an application for design registration identical to that of plaintiff. Prayer made in the said application for design registration was allowed and the defendant was granted design registration on December 14, 2009 vide registration No.223556. When the plaintiff became aware that the defendants’ design is registered, the plaintiff filed proceedings for cancellation of Registration No.223556 in October 2010. Again the infringed goods appeared in the market in October 2011. Therefore, the plaintiff filed present suit along with Notice of Motion seeking injunction against defendants on October 18, 2011. The defendant filed affidavit-in-reply to the Notice of Motion and pleaded, inter alia, the following defences:

i) The impugned design of the footwear registered by the plaintiff was not new and original. Even according to the plaintiff, his design was developed from "Padukas" which design has been commonly available since time immemorial. Therefore, the design of plaintiff cannot be said to be new or original;

ii) The plaintiff's footwear is a pattern which is normally used in the trade with a functional aspect. People at large and persons in the trade including the defendants have used the said pattern even prior to registration of the plaintiff's design. The plaintiff's design is not significantly distinguishable from known designs and/or is a combination of known designs. The plaintiff relied upon advertisements in the footwear news magazines;

iii) The design of stud of the plaintiff's footwear and defendants’ footwear are different and distinct from each other. The top of the stud in the defendants’ footwear has a surface pattern of circles within circle while the top of the stud in plaintiff's footwear has no surface pattern and is plain;

iv) The design of t