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
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."
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
(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
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
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.
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.