Vega Auto Accessories (P) Ltd. V. S.K. Jain Bros. Helmet (I) Pvt.
Citation: CS(COMM) 837/2017
Judgment: In favour of the plaintiff
Coram: Justice Rajiv Sahai Endlaw

Facts:
The plaintiff has sued the defendant for permanent injunction restraining infringement of registered design in relation to helmets, and for ancillary reliefs.the Plaintiff filed a suit before the High Court of Delhi alleging piracy-infringement of registered design of its Vega brand auto helmet.

The Defendant took the defenses that it's own design is also registered, that the Plaintiff's design is invalid for lacking novelty (in light of pre-published designs), and also that the Defendant's design is dissimilar.
Taking as settled now that even a registered design is subject to an infringement claim by an earlier design, the Court confirmed its ad-interim injunction. It did so by treating the Defendant as estopped at this stage from challenging the validity of Plaintiff's design registration for lack of novelty on account of it itself also having subsequently applied for and obtained design registration for its near similar design:

"...defendant having itself obtained registration of the impugned design; if the impugned design is found to infringe the design of the plaintiff..., is estopped from taking the plea of invalidity of registration in favour of plaintiff."
Prima -facie similarity has been found by applying the side-by-side comparison test thus: "...sameness of the features does not necessarily mean that the two designs must be identical in all points and should differ on none – they have to be substantially the same."

Issues:
1.whether it is open to the defendant to oppose the interim injunction on the ground of invalidity ofthe design of the plaintiff and / or on the ground that the design of the plaintiff has been prior published.

2. Another contention of the counsel for the defendant was that unlike under the Trade Marks law, under the scheme of Designs Act there is no requirement on the applicant for registration of a design to make an averment of the design being novel or new and having not been pre-published and no such.

3.whether the defendant has pirated the registered design of the plaintiff within the meaning of Section 22(1)of the Designs Act.

What the plaintiff held:
(i) that the registration in favour of the plaintiff is dated 13th August, 2014 and the registration relied upon by the defendant in its favour with respect to the impugned product is dated 1st March, 2017;
(ii) that while the product of the plaintiff is sold under the mark" VEGA" , the product of the defendant is sold under the mark "POWER";
(iii) that the defendant, in its written statement has raised three defences; firstly, that they also have a registered design; secondly, that the registered design of the plaintiff had been pre-published; and, thirdly, that the design of the plaintiff and the design of the defendant are different;
(iv) attention was invited to the registration in favour of the respective parties to contend that the design of the defendant is identical to the design of the plaintiff and minor variations cannot allow the defendant to defeat the claim of the plaintiff for infringement, as the test of substantial similarity is to be applied.

the counsel for the plaintiff, with respect to the vents at the place of chin on the helmet of the defendant, also agreed that the said vents are of the same shape as the vents in the helmets under the mark, O2" and ,VEGA OFF ROAD" of the plaintiff. The defendant thus cannot claim uniqueness with respect thereto as well.

The counsel for the plaintiff, in rejoinder, contended that it is overall design which has to be seen and not only the unique features. It was argued, that the registration granted is also not with respect to the unique features but with respect to overall design.

What the Defendants held:
Contended that merely because the defendant also has obtained registration, even if the design of the defendant is identical to that of the plaintiff, the same would not prevent the defendant from taking the plea of, the design of which the plaintiff has obtained registration, being not original or new or having been prior published. It was contended that the said defence, under the scheme of the Designs Act, 2000, is vested in a defendant in a suit for infringement and merely because the defendant is also a registrant, will not deprive the defendant from taking such a defence. The counsel for the defendant next contended that the registration is never for the entire product and is only for what is new and novel. It was argued, that otherwise, helmets have been in vogue since much prior to the registration in favour of the plaintiff and owing to the very nature of the product and the requirement to comply with ISI specifications, all the helmets will have certain common features.

The counsel for the defendant, invited attention to four features i.e. (a) placing of front air vent; (b) button at the bottom for lifting the visor is on the inside and not visible from outside and is different from that on the helmet of the plaintiff; (c) symbol of gear lock on the right side of the helmet of the defendant is unique and not to be found on the helmet of the plaintiff; and, (d) the shape of the air vent at the place of the chin are different in the two helmets.

It was also the contention of the counsel for the defendant, that air vents are also common to all helmets and the newness or originality with respect thereto can only be with respect to the shape thereof. It is argued that the shape of the air vents in the subject helmet of the plaintiff and in the impugned helmet of the defendant is different. It is further contended that the functional features in a helmet, by virtue of the definition of designinSection 2(d), are excluded from consideration and the lines on the helmet are functional for the reason of aerodynamic and no uniqueness with respect thereto can be claimed.

The counsel for the defendant also argued that mere registration does not grant protection and the entire case of the plaintiff is based on the entirety of similarity but it is the uniqueness of the features which is to be seen and not the product in entirety.

Conclusion:
1.The defendant itself having got his mark registered, when faced with action by another for infringement, cannot say that the mark of the prior registrant was not distinctive or could not have been registered. The reasoning which prevailed to hold so was that it is not open to a litigant to approbate and reprobate or to blow hot and cold. It was yet further held that even if the defendant had only applied for registration, it is still not open to him to thereafter in a suit by another, take the defence of the mark being descriptive and incapable of protection as a trade mark by the Civil Court.

The said principle serves well as it does not allow a litigant to blow hot and cold at successive stages of the same litigation or another litigation. It was held to be an elementary rule, that a party litigant cannot be permitted to assume inconsistent positions in Court, to play fast and loose, to blow hot and cold, to approbate and reprobate, to the detriment of his opponent. This wholesome doctrine was held to apply not only to the successive stages of the same suit, but also to another suit than the one in which the position was taken up, provided that the second suit grows out of the judgment in the first.

2.once an application for registration is made, in the light of the prohibition containedinSection 4of the Designs Act that a design which is not new or original or which has been disclosed to the public anywhere in India or in any other country by publication or which is not significantly distinguishable from known designs or combination of known designs, shall not be registered, it is implicit that the applicant for registration is making a declaration of the design of which registration is sought not falling in any of the clauses ofSection 4of the Act. In fact, the counsel for the defendant also subsequently stated that the prescribed form requires a declaration of newness and originality to be made.

Invalidity of registration of design of the plaintiff is not open to the defendant. The defendant having itself obtained registration of the impugned design; if the impugned design is found to infringe the design of the plaintiff registered prior to registration in favour of defendant, is estopped from taking the plea of invalidity of registration in favour of plaintiff.

3.It is thus to be determined, whether the design of the helmet under the mark, POWER of the defendant whereof the defendant obtained registration vide registration certificate dated 1 st March, 2017, is fraudulent or obvious imitation of the registered designno.264763 dated 13th August, 2014 under the mark, VEGA of the plaintiff.

Having been shown the subject helmets as well as a host of other helmets during the course of hearing, in my view the subject helmet of the defendant is an obvious imitation of the shape and configuration of the subject helmet of the plaintiffs, far as the differences between the two pointed out by the counsel for the defendant during the hearing and as recorded above are concerned, the Division Bench of this Court in Dabur India Limited supra cited by the counsel for the plaintiff has reiterated that sameness of the features does not necessarily mean that the two designs must be identical in all points and should differ on none - they have to be substantially the same. It was further held that the Court must address its mind as to whether the design adopted by the defendants was substantially different from the design which was registered.