Source: www.delhihighcourt.nic.in
Brief Background
- Crocs Inc. USA (hereinafter referred to as ‘the Plaintiff’) are proprietors of certain registered designs related to footwear in India. The registered design in issue in the case bear registration numbers 197685 and 198786. The tabular representation of the designs are given below -
- In the plaint, the Plaintiff stated
that Liberty Shoes Ltd. and others (hereinafter referred to as ‘the Defendants’)
has been violating the rights of the Plaintiff by imitating its registered
design shown above. It claimed piracy of design under Section 22 of the
Act.
- The Plaintiff filed a suit for
permanent injunction against all the Defendants from manufacturing,
marketing, supplying, using, selling, soliciting, exporting, displaying,
advertising by any other mode or manner the impugned design or any other
design which is deceptively similar to or is a fraudulent and/or any
obvious imitation of the Plaintiff ‘s design.
- The Plaintiff also filed interim
applications seeking pendente lite
restraint against the Defendants from manufacturing, marketing, supplying,
selling etc. the footwear of the Defendants which footwear as per the Plaintiff
have been manufactured and sold by infringing the registered designs of
the Plaintiff.
- The Defendants challenged the interim
injunction application.
Issues
- Whether the registered designs, of
the Plaintiff, lacked novelty and originality?
- Whether the registered designs
existed in public domain prior to the registration being granted in favor
of the Plaintiff?
- Whether the Defendants are guilty of piracy of designs?
Plaintiff’s Contentions
- The Plaintiff alleged that the
footwear manufactured by the Defendants were more or less same or similar,
with color variations or other changes with respect to placements of the
perforations/open spaces/holes in the footwear or certain other aspects
for creating visual appeal.
- With regard to the website evidence
filed by the Defendant in pursuance of issue no. 2, it argued that
depiction in the website is no guarantee that depiction of the footwear in
question in fact took place as on December 10, 2002, as stated in the
printouts downloaded and filed by the Defendants.
- The Plaintiff contended that once the
registration is done, there must be a presumption of newness and
originality and the onus should be on the Defendant to prove that there is
no newness or originality.
Defendant’s Contentions
- They contended that the registration
of design with respect to footwear is in itself invalid. Taking defence under
Section 22 (4) of the Act, they argued that since the registration of the
design granted to the Plaintiff is not valid, hence no case could be made
out of piracy of the registered design of the Plaintiff.
- They further claimed that the
registered design of the Plaintiff’s when registered lacked any
newness/originality. The design was in public domain at the time of
registration.
- To prove issue no. 2, the Defendants
produced the internet-downloaded pages from the website of the company ‘Holey
Soles’, the footwear designs of which were similar to that of the Plaintiff.
The designs on the page were stated to be archived on the page since
December 12, 2002. The 'Holey' in the 'Holey Soles' is because of
holes/spaces/gaps existing in the footwear of this company.
- It was submitted that the registration
date granted to Plaintiff in India was May 28, 2004. Since, the design of
the footwear of the Plaintiff was found in the public domain since 2002,
therefore, the registration granted to the Plaintiff was clearly faulty
and liable to be cancelled under Section 19 of the Act.
Court’s Decision
- The Court analyzed Sections 2 (d), 4,
19 and 22 of the Act.
- Regarding issue no. 1, the Court went
on to evaluate the meaning of a
design being new or original. The Court revisited its judgement in Pentel Kabushiki Kaisha & Anr. Vs.
M/S Arora Stationers & Ors., and held that mere variations to existing products which do not result in
requisite amount of newness or originality cannot be considered as
innovations having newness and originality for being granted monopoly for
fifteen years.
- Further adducing the test of newness
and originality, the Court held that it
is necessary for protection of a registered design that the registered
design must be an Intellectual Property Right created after application of
sufficient time, labor, effort, etc. and that there must be sufficient newness
or originality i.e. existence of requisite innovation and that trade
variations of known designs cannot result in newness and originality.
- Dealing with issue no. 2, the Court
reiterated that according to Section 19 of the Act a design, which existed
in the public domain prior to grant of registration under the Act, is a
ground for cancellation of the design. Rejecting the contentions of the Plaintiff,
the Court prima facie accepted that
such design existed in public domain prior to Plaintiff's registration,
the Plaintiff therefore, cannot claim exclusivity for its registered
design merely on the ground that Plaintiff ‘s footwear/registrations does
have a strap at the back of its footwear.
- The Court opined that in cases where
the registered design is associated with something so common to human
lifestyle, for example in this case footwear, the bar of newness and
originality automatically increases. It said that it requires an effort larger than an ordinary effort to create a
different footwear than the known types of footwear, to be an
innovation/creation having such requisite newness and originality for that
creation to become an Intellectual Property Right as a design in terms of
the Designs Act.
- In the present case, in Court’s view
the design of Plaintiff’s footwear is nothing but a sandal. Sandal with
open spaces are only trade variations of a sandal. Trade variations of
footwear/sandals cannot be and should not be given exclusive monopoly. In
addition, the features which were argued on behalf of the Plaintiff, as
existing in its sandals/footwear of mounds or humps or straps (or lack of
them) or soles designs or perforations/open spaces etc., even when taken
as a whole, or even individually for that matter, cannot be said to result
in innovation or creation of newness or originality.
- The Court also assessed the claim of cost payable to the Defendants. Taking into consideration the Commercial Courts Act, 2015, read with Section 35 of the Code of Civil Procedure, the Court held that ‘the Court had the power to order costs at the interim stage, and that, in this case, the Plaintiff, in refusing to settle the interim applications with the Defendants, and ‘obdurately and illegally continuing proceedings’, and imposed costs of a whopping INR 2 lakhs per Defendant, in addition to legal costs’.
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