Brief Fact: The Plaintiff namely Vikas Jain filed Suit seeking the relief of inter-alia permanent injunction on the basis of their registered Design under No.194631 dated 23.02.2004.

The Plaintiff obtained the said Design in relation to toy called as BOOM SCOOTY. Grievance of the Plaintiff was that the Defendants were also  manufacturing the Scooty which was, according to the Plaintiff amounts to infringement of its registered Design under No.194631 dated 23.02.2004.
 
Accordingly, the Plaintiff filed Suit against the Defendants before the Hon'ble High Court of Delhi against the Defendants. Vide order dated 11.08.2005 , the Hon'ble High Court of Delhi was pleased to grant ex-party injunction against the Defendants.
 
Subsequently , the Defendants appeared and filed the written statement challenging the validity of the impugned registered design inter alia on the ground of prior publication.

However vide detailed order dated 04.07.2007 passed in the said Suit, ex-parte injunction order passed in the suit was confirmed and the Defendants were restrained from manufacturing the subject matter toy Scooty.
 
Subsequently issues were framed in the suit vide order dated 08.04.2008. The Plaintiff and the Defendants both lead their evidence and for speedy trial even Local Commissioner was appointed. After completion of the evidence, the Suit was directed to be listed in the category of final hearing vide order dated 07.02.2013.
 
Relevant Provision of Design Act 2000 : For the purpose of better understanding of this case, it is important to go through the relevant case laws governing the tenure of existence of a Registered  Design.
 
It is submitted that the Design Act 2000, provides 10 years time for subsistence of the registered Design which may be further extended upon 5 more years. Section 11 of the Design Act 2000, provide for the same. Section 11 of the Design Act 2000 is reproduced as under:
 
11. Copyright on registration:

1. When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.
2. If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years.

In view of the above, it is clear that in the maximum period of validity of registered Design of the Plaintiff could have been 23.02.2019.
 
The Finding of Court: The Hon'ble Court observed that the as the Registered Design of the Plaintiff has itself lapsed during the pendency of the suit proceeding, the registered design of the Plaintiff has fallen in public domain.
 
Accordingly, the Hon'ble Court observed that the suit itself have become infructuous. In view of the above, the injunction order which was continue to operate from 2005 to 24.05.2022, when the subject matter order was passed , was ordered not to be continued further. The Suit was disposed off being infructuos.
 
Conclusion:
Design is the creation of statute. The right to sue on the basis of registered design emanates from the provisions of Design Act 2000 only.
The moment validity of registered Design expires (which is after 15 years of its registration), the right to sue on the basis of registered design also expires.
In case a registered design expires during the pendency of a suit proceeding, the suit for infringement design becomes infructuous.
After expiry of validity of a registered design , no one can claim exclusivity over the same as statutory protection granted under the Design Act 2000 no longer exists.
Hence any body in public is entitled to use the registered Design after its expiry.

The Judgement Discussed:
Date of Judgement:25.05.2022 [CS(Comm) 384/2018]
Case Title: Vikas Jain Vs Aftab Ahmed  and Ors
Court: Hon'ble High Court of Delhi[Ms. Justice  Prathiba M Singh]
Issues Discussed: What is the effect of Suit for Infringement of Registered Design, when Registered Design Expires during pendency of a Suit proceeding.

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
Email: ajayamitabh7@gmail.com, Ph no: 9990389529