Designs Act,2000 is applicable in cases pertaining to footwear: Delhi HC

Read Judgment: Relaxo Footwear vs. Aqualite Industries Private Ltd. 

Pankaj Bajpai

New Delhi, October 18, 2021: The Delhi High Court has recently restrained Aqualite Industries (defendant & its directors) from using registered designs of Relaxo Footwear (plaintiff) for suit products or any other design, deceptively similar to the designs of the plaintiff.

The Single Judge Bench of Justice Jayant Nath observed that the Designs Act, 2000 is applicable to footwear and there is no reason now for the defendant to claim that plaintiff’s designs being a ‘footwear’ could not be protected. 

The plaintiff had filed the present application seeking ex-parte injunction to restrain defendant and its directors from manufacturing, selling & advertising the footwear products, which were alleged to be imitation of plaintiff’s products/design/trade dress/get up. 

Going by the background of the case, the present suit pertained to intellectual property rights of plaintiff in the design and/or overall trade dress/getup of certain footwear products, wherein defendant was alleged to have unlawfully imitated and pirated the design/trade dress of plaintiff in challenged products. 

After considering the pleadings, the High Court stated that comparison of defendant’s products with plaintiff’s products showed a striking resemblance. 

Teeth-like structure had been copied in defendant’s product code Fashion 919 in the entire circumference while in defendant’s product code Fashion 925 teeth had been copied in upper half, added the Court. 

Justice Nath observed that a visual inspection of both designs showed that essential features of plaintiff’s designs had been copied in defendant’s product, and it was clear that prima facie, defendant had copied essential features of plaintiff’s products.

Defendant contended that as plaintiff’s designs lacked originality and novelty, they were not entitled to protection and hence, High Court should not pass any interim order in plaintiff’s favour, noted the Single Judge. 

It was true that in the case of footwear for novelty, footwear manufacturers had very little flexibility in creating new designs. However, it could not be said that the Act did not apply to footwear, clarified Justice Nath. 

Noticing that the defendant had themselves applied for registration of challenged designs, the High Court opined that there could be no reason now for them to claim that plaintiff’s designs, being a footwear could not be protected.

The Single Judge went on to add that the defendant had prima facie copied two designs of plaintiff, and therefore, defendant’s claims that plaintiff’s designs lacked originality or there being existence of prior art were issues, would require better examination and would be considered after evidence had been led. 

At this stage, defendant’s pleas prima facie could not be accepted and the plaintiff had made out a prima facie case. Thus, the High Court concluded that balance of convenience was in plaintiff’s favour and against defendant.