Dwarkadas Dhanji Sha

Chhotalal Ravicarandas And Co.

Printed design on textile goods

Suit under Section 53(2) of the Indian Patents and Designs Act, 1911 for infringement of a registered design, to restrain infringement and seek accounts, damages, and costs.

A certificate of registration of a design under the Indian Patents and Designs Act, 1911, serves only as prima facie evidence of proprietorship and originality. It is not final or conclusive proof.
- Allowed the chamber summons for further discovery of specified documents relevant to these defences.
- Plaintiffs were ordered to provide supplemental affidavits and inspection of relevant documents.

- Section 46(3) of the Patents and Designs Act, 1911 provides that the register of designs is prima facie evidence of the matters entered but this is rebuttable by prior publications.
- Defendants are not limited only to statutory remedies but may also plead in defence that the design was not new or original (ss.51A and 64)
- Ordinary discovery tests applied.

https://www.casemine.com/judgement/in/56b49357607dba348f006733

Mohammad Abdul Karim

Mohammad Yasin And Anr.

Brass trays with novel grooves on the sides

Appeal under Section 53 of the Patents and Designs Act, 1911 against a order of a suit for infringement of a registered design.

- 17 August 1929: issuance of design certificate
- 22 April 1930: Files suit under s.53 for injunction and damages
- before 7 February 1934: District judge dismissed plaintiff suit

- Upheld the lower court’s finding that the plaintiff was not the true proprietor.
- Consequently, plaintiff’s suit for injunction and damages failed.

- Registration alone is not conclusive proof for being actual proprietor of the design. S. 2(14): the proprietor must be the author of the design or someone who acquired rights from the author.
- Tray design had been in use for many years (20 + years) before the plaintiff’s registration, and the manufacture by local artisans was widespread.
- S. 46(3): where both parties present evidence, the registry’s presumptive effect is not conclusive.

S.D. Containers Indore

M/S. Mold Tek Packaging Ltd.

Exclusive designs for rigid plastic containers and lids

Civil suit for declaration and permanent injunction to restrain infringement of registered designs (S.22)
Defendant filed a written statement and counterclaim - cancellation of registered designs (not new or original)

- 23 March 2020: Commercial court transfer order
- 1 September 2020: MP high court intervention

- Supreme Court set aside the Madhya Pradesh High Court order that reversed the Commercial Court’s transfer
- Since, counterclaim under S.19 (for cancellation) was raised, the suit required transfer to the appropriate High Court for decision.

- S.22(4) of the Designs Act, 2000: grounds available under S.19 for cancellation of a registered design are taken as a ground of defence in a design infringement suit, the suit must be transferred to the High Court for decision.
- The controller of Designs and High Courts have exclusive jurisdiction over cancellation, and an ordinary trial court should not proceed on cancellation grounds.
- Commercial Court Act, 2015 cannot override the specific provisions of the Designs Act dealing with transfer.

https://indiankanoon.org/doc/38764718/

M/S Action Construction Equipments

254816, 254817, 254819, 254823, 254825, 254826, 254818, 254827

Construction equipment: Tower Cranes and their Parts (three-dimensional shape, configuration, pattern of the machine components)

Alleged that defendant’s products were fraudulent imitations of its registered designs under Section 22(2) of the Designs Act, 2000.
Defendants contended the designs were not new or original and thus invalid under Section 19 of the Designs Act, 2000

- 26 June 2013: Design Registration granted
- 6 November 2015: Suit filed
- 21 January 2016: Interim Injunction order
- 2016: First appeal filed

- Interim injunction order set aside.
- Under S.22(4) of the Designs Act, 2000, when grounds for cancellation/invalidity are pleaded as a defence, the entire proceeding should be transferred to HC.

- Pleading invalidity under Section 19 activates the mandatory transfer provision under Section 22(4).
- Jurisdictional defect arising from invocation of Section 19 was fundamental & thus, the Trial Court had effectively lost competence to proceed once validity was challenged.

https://indiankanoon.org/doc/188397546/

Novateur Electrical & Digital Systems Pvt. Ltd.

Electrical design: aesthetic designs of electrical switch plates

Plaintiff alleges defendant’s “MATTEO” switch plates infringe its registered designs.
Defendant filed counterclaim seeking cancellation of plaintiff registered designs.

- 27 July 2017: Design registration
- 2021: filed design infringment suit
- 8 December 2021: Filed Counter-claim seeking cancellation
- 2022-Early 2023: interlocutory application heard
- 4 Janauary 2023: Interim injunction order

- Rejected the plaintiff’s objection to the maintainability of the defendant’s counterclaim.
- Allowed the defendant to place newly discovered documents on record to support its case on prior publication/invalidity.

- Defendant in a design infringement suit can file a counterclaim for cancellation before the High Court, and that such cancellation issues can be decided within the civil suit.
- Court allowed these documents discovered later and did not change the nature of the pleadings.

https://indiankanoon.org/doc/30210674/

Atlas Metal Processors Pvt. Ltd.
Thermos Houseware Pvt. Ltd.
Kingston Victor

205153, 207081, 207085, 207083

Thermally insulated stainless steel vacuum bottles

Plaintiffs alleged that the defendants were importing, marketing, and selling vacuum bottles that infringed the patent’s functional claims.
Sought relief for infringement of their registered designs Nos. 205153, 207081, 207085, 207083 under the Designs Act, 2000.

- 18 July 2006: Patent application filed
- 30 June 2006 – 13 November 2006: Designs Nos. 205153, 207081, 207085, 207083 registered in favour of plaintiffs.
- 26 February 2009: Patent granted in favour of the 3rd plaintiff.
2009 (pre-April): Suit filed

- Court upheld the validity and enforceability of the plaintiff’s patent
- Graned permanent injunctions restraining defendants

- Evidence showed that defendants imported bottles with inner and outer stainless steel shells and substantially similar design and features covered by the patent and designs, leading to infringement.
- Registered designs for shape, configuration, and colour schemes were also upheld as novel and exclusive to plaintiffs

https://indiankanoon.org/doc/20301777/

JCB India Limited (Petitioner No. 1)

J.C. Bamford Excavators Limited (Petitioner No. 2)

Competition Commission of India (CCI) (Respondent No. 1)

Bull Machines Private Limited (BMPL) (Respondent No. 2)

Design Registration No. 200017, Class 12-16.
​

Design Registration No. 200018, Class 12-16.

Backhoe loaders and their components (construction/earthmoving machinery; JCB’s “3DX” BHL and Bull’s “Bull Smart” loader, including buckets and other loader parts).

The cause of action in the underlying civil suit was JCB’s allegation that Bull Machines’ “Bull Smart” backhoe loader copied and pirated JCB’s registered designs (including Designs 200017 and 200018) and infringed its copyright and trade dress, leading to a suit for injunction against piracy of registered designs, infringement of copyright and passing off under the Designs Act, 2000 and allied IP laws.
​

-24 November 2011 – JCB files CS(OS) 2934/2011 (design/copyright/passing off suit) in Delhi High Court.
​-25 November 2011 – Ex parte ad‑interim injunction granted with local commissioners for seizure.
​-11 March 2014 – CCI passes Section 26(1) order in Case No. 105/2013 directing DG investigation against JCB.
​-17 September 2014 – CMM, Patiala House, issues search warrants under Section 240A for searches at JCB premises.
​-26 August 2021 – Supreme Court records mediation Settlement Agreement dated 22 July 2021 and disposes interconnected SLPs and civil suit.
​-14 August 2024 – Delhi High Court judgment allowing both writ petitions, setting aside CCI’s 11 March 2014 order and the 17 September 2014 warrant, and terminating CCI Case No. 105/2013.
​

-Delhi High Court held that once the underlying design infringement dispute between JCB and Bull had been fully settled through mediation (recorded by the Supreme Court), the very substratum of the CCI proceedings based on allegations of sham litigation disappeared, so the CCI inquiry could not continue.

-The Court emphasizes the sanctity and finality of mediated settlements, relying on Salem Advocate Bar Assn., Vikram Bakshi, Ericsson and other authorities to hold that regulatory bodies like CCI must ordinarily respect such settlements, unless a settlement itself is specifically alleged to be anti‑competitive, which was not the case here.

https://indiankanoon.org/doc/54051079/

S.D. Containers Indore

M/s Mold Tek Packaging Ltd

Nos. 299039 (Container) and 299041 (Lid)

Packaging containers (plastic container and lid designs).

-Plaintiff sued for declaration/permanent injunction alleging defendants copied/used its registered designs (299039 container, 299041 lid); defendants counter-claimed cancellation under Section 19 as not new/original.
​

-Pre-23 March 2020 – Plaintiff files suit in Commercial Court, Indore.
​-23 March 2020 – Commercial Court transfers suit to Calcutta High Court u/s 22(4) Designs Act.
​-1 September 2020 – MP High Court sets aside transfer, holds Commercial Court competent.
​-1 December 2020 – SC sets aside MP HC order, remits to MP HC Indore Bench for trial.

-SC holds Section 22(4) Designs Act mandates transfer to High Court (not Controller) on revocation plea in infringement suit; Commercial Court/CCA 2015 yields to Designs Act (no inconsistency); remits to MP HC Indore (cause arose there).

-SC clarifies: revocation in suit (S.22(4)) distinct from Controller proceedings (S.19 appeal to HC); transfer ministerial if S.19 ground pleaded; CCA overriding only if inconsistent (not here); Calcutta HC wrong forum as no cause there.

https://indiankanoon.org/doc/38764718/

Liberty Shoes Ltd., Relaxo Footwear Ltd., Bata India Ltd., Action Shoes Pvt. Ltd., Aqualite India Ltd., Bioworld Merchandising India Ltd., Kidz Palace & Ors.

197685 (footwear), 197686 (footwear variant); valid till 28.05.2019.

Footwear (casual sandals with perforations, humps, straps).

-Crocs alleged defendants manufactured/sold footwear pirating its registered designs 197685/197686 via fraudulent/obvious imitation, entitling reliefs u/s 22 Designs Act.

-Pre-28.05.2003: Prior publication (Holey Soles, Crocs sites).
-28.05.2004: Designs registered (priority 28.05.2003).
-2014-2018: Suits filed/transferred to Delhi HC.
-08.02.2018: Injunctions dismissed.

-Delhi HC dismissed all interim injunctions; held designs invalid (prior publication, no novelty/originality, mere trade variants); awarded defendants legal costs + Rs.2L each (subject to final).

-Designs lack IP protection sans substantial novelty (s 4(a)); prior public domain (websites pre-2003) + trade variants (perforations/straps) bar monopoly; s 22(3)/(4) defences valid pre-trial. Costs u/s 35 CCA for frivolous claims.

https://indiankanoon.org/doc/82833881/

Ms Maya Appliances Pvt Ltd

Preethi Kitchen Appliances Pvt Ltd; Baghyaa Home Appliances

Plaintiff: 276216 (tripod base, eff. 01.10.2015); Defendant: 292910 (tripod base, eff. 17.04.2017).

Kitchen appliances (mixer grinder tripod-shaped base units).

-Preethi alleged Maya infringed its registered design 276216 via Vidiem V-Star series (fraudulent/obvious imitation) and passed off using deceptively similar tripod base.

-Mar 2016: Preethi launches Zodiac mixer grinder.
-01.10.2015: Design 276216 registered.
-17.04.2017: Maya design 292910 registered.
-Dec 2017: Maya launches Vidiem V-Star.
-01.03.2018: Single Judge grants ad-interim injunction.
-28.04.2018: DB reverses injunction.

-Madras HC DB set aside Single Judge injunction; held no fraudulent imitation (substantial differences in legs/top/bottom views, no consumer confusion); balance of convenience against injunction; suit to continue.

-Designs judged wholly by eye (visual appeal test); no monopoly on tripod shape; minor variants (protrusions, curves) distinguish; registration prima facie valid but rebuttable; no irreparable harm sans strong prima facie case.

https://indiankanoon.org/doc/59688970/

Videocon Industries Ltd.

Plaintiff: 223833, 223835 (eff. 15.07.2009, valid 10+5 yrs); Defendant: Subsequent registration for "Pebble" model.

Home appliances (semi-automatic washing machines: circular wash tub, rectangular dryer, control panel).

-Whirlpool alleged Videocon's "Pebble" washing machine slavishly copied its registered designs 223833/223835 via obvious/fraudulent imitation and passed off as its product.

-15.07.2009: Plaintiff designs registered.
-Sep 2010: Whirlpool launches machine (Rs.308Cr sales in 2 yrs).
~Jun 2012: Videocon launches Pebble.
-25.07.2012: Ad-interim injunction granted.
-27.05.2014: NM allowed (injunction confirmed).

-Bombay HC granted injunction restraining Videocon from manufacturing/selling infringing machines; held suit maintainable vs registered proprietor; prima facie copying established (eye test); passing off via deceptive similarity.

-Infringement lies vs any person incl subsequent registrant (s22 "any person"); judged by eye (whole design, imperfect recollection); minor variants insufficient; functionality no bar if alt shapes possible; Controller registration prima facie only.

https://indiankanoon.org/doc/188051985/

Parle Products Pvt Ltd (Mumbai)

Surya Food & Agro Ltd (Noida, UP)

Plaintiff: 185711, 185712, 185713 (31.05.2001, Class 09-01); 188156, 188157 (18.02.2002, Class 09-07).

Food packaging (biscuit packets: novel shape, configuration, surface pattern).

-Parle alleged Surya pirated its registered designs via Priyagold biscuits packets (fraudulent/obvious imitation) sold in Chennai, seeking injunction/destruction u/s 22.

-31.05.2001: Designs 185711-185713 registered.
-18.02.2002: Designs 188156-188157 registered.
-23.11.2005: Cease notice by Parle.
-29.09.2006: Suit filed; leave granted 11.10.2006.
-05.09.2007: Single Judge revokes leave.
-09.09.2008: DB restores leave.

-Madras HC DB set aside revocation of leave; held jurisdiction (part cause via Chennai sales) trial-worthy; forum conveniens inapplicable; suit maintainable for trial with evidence.

-Jurisdiction on plaint averments alone (sales prove partial cause); revocation premature sans trial evidence; counter-claim for cancellation (s19) viable but not jurisdictional bar; designs prima facie protected till cancellation.

Rakesh Kumar t/a Saurabh Industries & Ors

Industrial containers (lubricants, paints: shape/configuration).

-Plaintiffs sued registered proprietors for design infringement u/s 22 + passing off; reference on suit maintainability vs fellow registrant and passing off post-design expiry.

-Pre-2011: Designs registered by parties.
-2011: CS(OS)1446/2011 & CS(OS)384/2008 filed.
-30.03.2012: Single Judge refers 3 questions to FB.
-19.02.2013: Arguments heard.
-15.05.2013: FB judgment (2:1).

-No infringement suit by one registrant vs another (s22 "any person" excludes); no passing off for design shapes (statutory monopoly not extendable); suits not maintainable; dissent allows suits.

-Designs Act self-contained code; infringement only vs non-registrants; s223 limits validity challenge to plaintiff's design as defense; passing off inconsistent with limited statutory monopoly (15 yrs); Controller exclusive for cancellation (s19)

https://indiankanoon.org/doc/76636976/

Mohan Lal (Mourya Industries)

Mohan Lal: 202050, 202051 (09.11.2005); 203506-203509 (15.03.2006); Defendant: 206510.

Hardware (mirror frames, door handles, hinges, almirah locks/plates).

-Registrants sued each other for design infringement u/s 22 + passing off via imitation containers/frames; reference on suit maintainability, passing off post-registration, joinder.

-2005-2006: Designs registered.
-2007-2011: Suits filed/transferred.
-30.03.2012: Single Judge refers 3 questions.
-19.02.2013: Hearing.
-15.05.2013: FB (2:1 majority).

-Infringement suits maintainable between registrants (s22 "any person" inclusive); passing off viable (common law, no bar); no joinder (distinct causes); trial proceeds.

-Registration prima facie valid (s10/104 rebuttable); Controller cancellation (s19) parallel to suit defenses (s22(3)); passing off protects goodwill post-statutory term; Trademarks Act s27(2) saves common law analogously.

https://indiankanoon.org/doc/188045559/

Consumer products (artificial leaves/paper plates lamination).

-Plaintiff sued defendant under Trade Marks Act + Designs Act s22 for injunction against infringing registered designs (shape/configuration) via identical imitation manufacture/sale + passing off.

-Jun 2002: Suit filed (O.S.1/2002).
-05.07.2002: Dist. Court returns s22(4) transfer IA.
-12.12.2002: HC directs numbering/disposal (CRP PD 2148/2002).
-2003: Transfer/stay apps filed in HC.

-HC (Kanakaraj J) dismissed transfer (A.No.4458/2003) + stay (A.No.4459/2003): s22(4) inapplicable sans proof of s19 grounds raised; no jurisdiction loss u/s24 CPC(5); suit stays in Dist. Court.

-s22(4) mandates auto-transfer only if s19 cancellation grounds explicitly availed as defense u/s22(3); mere plea insufficient sans evidence; prejudice/apprehension no ground for transfer; passing off claim unaffected.

Symphony Limited & Anr

Raj Cooling System Private Limited

Home appliances (air cooler front grill)

-Symphony alleged defendants slavishly copied its registered novel/original grill design (eye-appeal, no prior publication); sought injunction u/s 22 despite s19 defenses raised.

-Pre-24.12.2019: Design developed/sales.
-24.12.2019: Plaintiffs' registration.
-Post-2019: Defendants copy/sell.
-2021: Suit filed; ex-parte injunction.
-29.10.2021: Interim confirmed.

-HC granted/confirmed injunction restraining defendants; prima facie copying (eye test); no cogent prior publication evidence (invoices/websites inadequate); balance favors plaintiffs.

-No s19 cancellation filed (defenses s22(3) allowed but weak prima facie); prior publication needs tangible proof (visual effect on article); defendants habitual infringers; trial pending.

https://indiankanoon.org/doc/115914159/

183322 ("KARATACHI" figured glass; reg. 28.08.2000, Class 4).

Glass manufacturing (figured glass surface pattern/ornamentation).

-IAG sued Triveni for infringing its registered "KARATACHI" design (3D reproduction of 2D artistic work) + passing off via identical figured glass.

-~1964: Design developed abroad.
-02.01.2001: Reg. certificate issued (app. prior).
-11.05.2001: Designs Act 2000 effective.
-15.01.2003: Defendant files s19 cancellation.
-01.08.2003: Suit filed.
-11.02.2004: IA dismissed.

-Single Judge (Biswas J) refused interim injunction: no prima facie proprietorship/novelty (imported roller, prior global use); Designs Act 2000 s22(3) defenses available despite 1911 reg.; passing off baseless.

-Post-repeal suits governed by Designs Act 2000 (s48); reg. prima facie only, rebuttable (no monopoly presumption); prior foreign publication irrelevant pre-2000 Act; trial needed for validity/publication.

Pranda Jewelry Pvt. Ltd. and others

Jewellery (gold sheet religious figures/symbols).

-Plaintiffs sued for copyright infringement + passing off alleging defendants copied 22 original artistic drawings (computer-generated) to produce identical 3D gold sheet deities/symbols.

~Aug 2010: Plaintiffs notice infringement (ex-manager joins D1).
-Sep 2011: Suit filed.
-2012: NM 2235/2012 for injunction.
-18.12.2014: Hearing reserved.
-01.04.2015: Interim granted.

-HC granted ad-interim injunction restraining defendants from infringing plaintiffs' copyright in 22 drawings: prima facie artistic works (not industrial designs u/s15 Copyright Act); clear imitation; no delay/acquiescence.

-Artistic drawings (2D) retain full copyright even in 3D gold reproduction (not "applied to article" as design); excludes s15(2) loss post-50 uses; gods/images generic but specific expression protectable; dishonest copying by ex-employee.

https://indiankanoon.org/doc/196384280/

Textiles (upholstery fabric patterns/ornaments).

-Microfibres sued Girdhar for infringing copyright in original artistic works (paintings adapted to fabric designs); Girdhar copied substantial patterns via identical motifs.

-Pre-2001: Designs created/applied (Designs Act 1911 era).
-13.01.2006: Single Judge dismisses suit (designs registrable, copyright lapsed).
-21.01.2009: Appeal reserved.
-28.05.2009: DB upholds dismissal.

-dismissed appeal: fabric designs "capable of registration" u/Designs Act (industrial intent, >50 uses); copyright ceases u/s15(2) Copyright Act despite artistic origin; excludes pure art (e.g., Hussain painting).

-Designs Act s2(d) excludes pure artistic works (s2(c) Copyright Act); but commercial textile patterns = designs (lose copyright post-50 industrial uses); legislative intent limits monopoly (15 yrs Designs vs. life+60 yrs Copyright); Microfibres unregistered despite UK protection.

https://indiankanoon.org/doc/112937069/

Mita Ashok Kapoor (POA Paresh Ajitkumar Kapoor), Symphony Ltd.

: Raj Cooling System Pvt. Ltd and others

324986-017 (front grill; reg. 24.12.2019, valid to 23.12.2029, Class 23-04); linked: 233559 (air cooler)

Home appliances (air cooler front/rear grills).

-Symphony alleged Raj Cooling slavishly copied its registered novel grill design (shape/configuration/pattern) for air coolers, manufacturing/selling identical imitations post-registration.

-2019: Design developed/sales.
-24.12.2019: Plaintiffs' reg.
-06.01.2020: D's copy reg.
-Apr 2021: Suits filed; ex-parte injunction.
-Jun 2021: Transferred to HC u/s22(4).
-29.10.2021: Hearing.

-HC confirmed interim injunction: prima facie copying (eye test, exact dimensions); weak prior publication (invoices/websites/ exhibitions inadequate sans tangible proof); no s19 cancellation filed; defendants habitual infringers; balance favors plaintiffs.

-s22(3) allows s19 grounds as defense (no auto-injunction); prior publication needs clear/unmistakable directions + eye-appeal on article (Bharat Glass Tube Ltd.); injunction continues pending trial/cancellation.

https://indiankanoon.org/doc/115914159/

Air Coolers (Consumer Appliances / Desert Coolers)

-The suit was filed as a quia-timet action alleging apprehended infringement and piracy of a registered air cooler design under Section 22 of the Designs Act, 2000, based on the defendant’s proposed launch and marketing in Gujarat.

-9 March 2015 – Civil Suit No. 2 of 2015 filed (quia-timet action).
-5 May 2015 – Single Judge granted interim injunction.
-27 July 2015 – Division Bench delivered appellate judgment.
-Prior to suit – Plaintiff had earlier registered design (date not specified in excerpt).
-Prior to suit – Defendant allegedly began marketing in other cities (Bhopal, Nagpur).
-Pending at time – Cancellation proceedings before Controller of Designs.

-The Division Bench dismissed the appeal and upheld the interim injunction granted by the Single Judge, restraining the defendant from marketing or dealing in the allegedly infringing air cooler design.
The Court held that a quia-timet action was maintainable and that territorial jurisdiction existed in Gujarat.

-The Court clarified that under Section 22 of the Designs Act, the expression “any person” includes even a subsequently registered proprietor, meaning prior registration prevails. It also reinforced that for interim injunctions in intellectual property cases, reasonable apprehension of infringement is sufficient, and appellate courts should not lightly interfere with discretionary injunction orders.

https://indiankanoon.org/doc/23425708/

J.C. Bamford Excavators Ltd. and JCB India Ltd.

Bull Machines Pvt. Ltd. (BMPL).

200007 (hydraulic tank), 200009 (diesel tank), 200011 (seat), 200016 (stabilizer leg); cancelled: 200016.

Construction equipment (backhoe loader parts).

-JCB alleged BMPL copied registered designs + technical drawings (boom/dipper/bucket/stabilizer/hoses etc.) for identical backhoe loader parts.

-1979: JCB India JV.
-2002: Wholly owned.
-Nov 2011: Suit (quia timet).
-25.11.2011: Ex-parte injunction.
-20.12.2017: Apps dismissed.

-HC (Bakhru J) dismissed rejection apps: plaint discloses cause (averments accepted); prior suits not fraud/admission (trial issue); s15(2)/52(1)(w) Copyright Act triable (functional?); jurisdiction ok (Delhi sales); proceed to trial.

-s15(2) Copyright Act ceases copyright post-50 industrial uses for registrable designs; artistic works (drawings) distinct; s52(1)(w) bars 3D from 2D functional drawings; O7R11/O12R6 discretionary, no conclusive admissions.

https://indiankanoon.org/doc/25293192/

Bata India Ltd., Liberty Shoes, Relaxo, Aqualite, Action Shoes and others

197685, 197686 (clog footwear; prio. 28.05.2003).

-Crocs alleged Bata etc. pirated its novel registered clog designs (holes/straps/humps/perforations) via identical/imitative footwear sales.

-2002: Holey Soles pubs.
-28.05.2003: Prio. date.
-2004: India launch/reg.
-2015: Suits filed.
-2018: Single judge no injunction.
-24.01.2019: DB dismisses appeal.

-DB (Bhat/Chawla JJ) upheld: prima facie prior pub. (plaintiff's/Crocs.com/Holey Soles websites pre-prio.); no novelty/originality (clog/trade variants); s19(1)(b)/(c) defenses u/s22(3); costs to defendants upheld.

-s4: No reg. if prior pub./non-new/non-distinct from known/combos; eye test (ordinary purchaser); WayBack reliable prima facie (s65B); functionality no bar if alternatives exist; passing off suits relist w/design claims.

https://indiankanoon.org/doc/38584045/

Rotela Auto Components (P) Ltd. + Chinese corp. (Taiwan)

Automotive security (gear shift locks).

-Plaintiffs alleged defendants pirated registered novel lock designs (shackle layers, panels, pins) via identical shape/configuration/pattern.

-1995-98: Prior pubs (Taiwan mags).
-Pre-2001: Reg.
-Jul 2001: Ex-parte injunction.
-11.10.2001: Judgment.

-HC vacated injunction: prima facie prior publication (Taiwan ads pre-reg); no novelty/originality (functional/trade variants); s22(3) permits s19 defenses (prior pub/non-new); defendants maintain accounts.

-s22(3) allows s19 grounds (prior pub/non-original) as defense sans cancellation petition (unlike 1911 Act); eye test no deception (branded differently); recent reg. no auto-injunction (Metro Plastic FB distinguished).

Dart Industries Inc. and Tupperware India Pvt. Ltd

Techno Plast and others

Household plastics (storage containers).

-Dart/Tupperware alleged Techno Plast copied registered novel designs (shape/pattern/config.) via identical infringing Signoraware containers.

-1996: India marketing.
-Pre-suit: Regs./pubs. (Tupperware Cook book).
-2004: IITF notice.
-2005: Suit.
-21.07.2016: DB dismisses appeal.

- It upheld no injunction: prima facie prior pub. (catalogs/books pre-reg.); no novelty (commonplace/trade variants); s15 Copyright Act bars claims (industrial drawings cease post-reg./50 uses); no passing off (distinct names, no confusion).

-Publication: visual replication (mind's eye test, Gopal Glass); s22(3): s19 defenses (prior pub./non-original) at interim; copyright-design divide (Microfibres: artistic orig. survives); shape passing off needs distinctiveness (no monopoly on functional/common).

Pentel Kabushiki Kaisha and others

Arora Stationers and others

-Pentel alleged Arora infringed its registered novel pen design (grip wedges/clip/barrel/cap config.) via identical Montex Mastani pens.

-1976: Defendants business.
-2005+: Defendants prior designs.
-Suit 2017: Filed.
-26.05.2017: Interim order.
-08.01.2018: No injunction.

-HC dismissed injunction: no substantial novelty/originality (trade variants: grip wedges functional; octagonal barrel/curved tip common); s19 defenses u/s22(3) (non-new/known combos); vacates interim order.

-s4(a)/(c): No reg./protect. if non-new/non-original/non-distinct from known/combos; s2(d): excludes functional (grip=construction mode); ball pen=ball pen (common features no monopoly); B. Chawla/Bharat Glass: instructed eye test, no trade block.

https://indiankanoon.org/doc/150713260/

Troikaa Pharmaceuticals Ltd.

Pro Laboratories P. Ltd. and others

186992 (Class 28; D-shape tablet; reg. 16.10.2001).

-Troikaa alleged Pro copied its novel registered D-shape tablet design (shape/config./color) via identical infringing Denpar etc. tablets.

-Pre-2001: Pfizer etc. prior D-shapes alleged.
-16.10.2001: Reg.
-04.12.2007: Suit filed.
-05.12.2007: Ex-parte injunction.
-15.05.2008: Continued till suit.

- HC continued injunction: prima facie novel application (despite alphabet D/semi-circle); prior pub. disputed (pics unreliable); eye test similarity/deception; no irreparable harm to defendants (alt. shapes/colors); expedite suit.

-s4/19: Prior pub./non-new defenses u/s22(3), but visual replication needed (Vikas Jain); reg. prima facie valid (novelty in pharma application); Saunders: idea common, application novel; balance favors plaintiff (Dynapar rep.).

Diageo Brands B.V. and others

Alcobrew Distilleries India Pvt. Ltd

306577 (Class 21; bottles/flasks; filed 12.06.2017; reg. 22.03.2019); prior: D562138.

Beverages (alcoholic whisky bottles/flasks).

-Diageo alleged Alcobrew's Golfers Shot 180ml Hipster bottle (shape/config.) pirates its smartphone-inspired rectangular Hipster design via obvious/fraudulent imitation.

-12.06.2017: Filed.
-22.03.2019: Registered.
-2021: Prior Diageo v. Great Galleon injunction.
-19.12.2022: Injunction judgment.

-The Delhi High Court denied the injunction application. The court held that the defendant's design is novel and original vis-à-vis the plaintiff's suit design, as key distinguishing features such as rounder edges, smaller dimple, size and thickness variations, and a crest logo differentiate it sufficiently.
​

-The court applied the instructed eye test for both design validity and infringement, finding no obvious or fraudulent imitation under Section 22(3) read with Section 19 defenses. Section 22(3)/19 defenses are viable, with no prima facie piracy established.

https://indiankanoon.org/doc/155053317/

Maya Appliances Pvt. Ltd and others

Vibrant Concepts & Designs and others

304676 (lead; cooking stove); others: 264343, 264344, 276080, 272567, 272882, 272883.

Kitchen appliances (gas stoves/cooktops).

-Maya sued defendants for infringing registered frameless gas stove designs (esp. 304676) + patents 452008/463327 via identical cooktops providing visual gas leak feedback.

-30.07.2014: Early designs filed.
-11.04.2018: 304676 filed.
-15.09.2023: Patent 452008.
-30.10.2023: Patent 463327.
-2023: Suits filed.
-02.04.2024: Inj. dismissed.

-HC dismissed interim injunctions: no prima facie case (functionality bars design protect.; patents/designs vulnerable to prior art/s19; triable issues); defendants maintain sales accounts till trial.

-Court noted prior C.S.677/2016 refusal (functionality); post-grant opps./cancellations pending; products differ (steel frame vs. flat glass); trial needed for expert comparison/validity.

https://indiankanoon.org/doc/150964375/

Travel Blue Products India Pvt. Ltd. and Travel Blue Ltd. (UK).

Miniso Life Style Pvt. Ltd. and Miniso Hong Kong Ltd

281315 (Class 06-09; neck pillow with pocket; reciprocity 19.10.2015; extended to 2030).

Travel accessories (neck pillows).

-Travel Blue sued Miniso for pirating registered Tranquility neck pillow design (shape/config./colors) via identical infringing pillows sold online/offline.

-19.10.2015: Priority.
-09.03.2016: Filed India.
-24.07.2017: Registered.
-Aug 2024: Infringement noticed.
-24.09.2024: Ad-interim inj.
-31.07.2025: Confirmed.

- HC confirmed injunction: prima facie validity (aesthetic appeal > function; not only option); obvious imitation (eye test); no prior art proof; passing off (goodwill INR 3.95Cr; deception likely); restr. sales/display of infringing pillows.

-Court rejected functionality (Whirlpool test: alt. forms exist); no s19 cancel. (intl. regs. ≠ pub./India reg.); pocket mechanical, novelty in overall shape; upheld despite minor diffs. (Cryogas reinforces Whirlpool).

https://indiankanoon.org/doc/189582982/

Reckitt Benckiser India Ltd.

193988 (Class 99-00; reg. 05.12.2003); priors: UK 2055969 (30.04.1996), US D387629 (16.12.1997), Aus 131347 (29.10.1996)

Cosmetics (depilatory spatula).

-Reckitt sued Wyeth for infringing registered S-spatula design used with Veet hair removal cream; Wyeth defended via prior foreign regs./pubs.

-30.04.1996: UK reg.
-29.10.1996: Aus reg.
-23.10.1996: US filed.
-16.12.1997: US reg.
-Dec 2000: Aus mag. pub.
-05.12.2003: India reg.
-08.01.2007: Interim inj.
-07.08.2009: Vacated.
-08.10.2010: Upheld.

-HC upheld vacation: prior foreign regs./pubs. (s4(b)/19(1)(b)) = public domain pre-India reg.; valid s22(3) defense (not secret); no newness; larger bench ref. on foreign reg. as defense absent s44 priority.

-s19(1)(a) = India-only prior reg.; s19(1)(b) = pub. abroad ok; s44(2) grace 6-mo. post-convention app.; Gopal Glass/Dabur (no foreign reg. defense) ref. larger bench (overlooks s44/s4 interplay).

https://indiankanoon.org/doc/128213318/

Jayson Industries and others

Crown Craft India Pvt. Ltd

326707 (bucket), 326883 (mug), 326882 (tub); all Class 1, w.e.f. Feb 2020.

Household plastics (bathroom buckets/mugs/tubs).

-Jayson sued Crown Craft for pirating registered ribbed bucket/mug/tub designs (vertical ribs + rim fangs/flanges) via identical infringing products.

-Prior art existed in Migeplastics catalogue and US D784645 before 2020.
-Designs were registered on 1-6 February 2020.
-Defendant commenced manufacture in 2021.
-Court granted ex-parte injunction on 8 June 2022.
-Court vacated injunction on 3 July 2023.

-The Delhi High Court vacated the injunction. The court held that the defendant raised a credible challenge under Sections 19/4 to the suit designs on grounds of lack of novelty/originality and prior publication.
​

-The court found vertical ribs and rim flanges as mere trade variants common in prior art. There is no presumption of design validity unlike trade marks under Section 31 of the Trade Marks Act. The instructed eye test applies for assessing novelty vis-à-vis prior art.

https://indiankanoon.org/doc/155873398/

Officine Lovato S.P.A and others

Automotive (CNG/LPG converter spares).

-Plaintiff sued Italian mfr./Indian agents for infringing 5 registered designs of CNG/LPG auto parts via identical products advertised/sold in Ahmedabad.

-D1 in business since 1958; Italian approvals 19.02.1997.
-D1 India sales from 1995 (turnover data 1995-2001).
-Plaintiff designs registered 1999-2000.
-Ads published 26.11.2001.
-Suits filed Nov 2001; transferred to HC 09.01.2002.
-01.02.2002: Injunction denied.

-The Gujarat High Court vacated the ex-parte injunction. The court held that the plaintiff failed to establish a prima facie case or balance of convenience in his favour. The court noted Defendant 1's prior use and crores turnover since 1995, while Plaintiff had no manufacturing or investment. Defendant was directed to file quarterly sales accounts.

-Section 22(3) permits Section 19 grounds like prior publication/non-novelty as defenses without requiring pending cancellation. Niky Tasha and Metro Plast held no automatic injunction for recent registrations facing validity challenges. Plaintiff is relative of ex-agent Defendant 2, suggesting vengeance motive.

17324 (bottle; valid till 24.02.2011); 171486 (green cap; valid till 11.06.2011).

Packaging (plastic hair oil bottles/caps).

-Dabur sued defendants for infringing registered bottle/cap designs by mfr./sale of identical empty bottles (claimed for counterfeit Amla oil).

-Design 17324 registered (valid to 24.02.2011).
-Design 171486 registered (valid to 11.06.2011).
-Suit CS(OS) 306/2007 + IA 1881/2007 filed.
-20.03.2008: Injunction denied.

-Delhi HC (Dhingra J) denied interim injunction. Court held no prima facie case (common shape/no novelty; no "Dabur" embossing; trade variants). Suit to continue for trial.

-No strong prima facie for injunction sans novelty/originality (prior similar bottles); registration not conclusive vs. republication/lack originality; empty bottles for multifarious use ≠ auto-infringement.

271199 (front fender for Hero HF Deluxe motorcycle; reg. 07.04.2015).

Automotive (motorcycle front fender/spare parts).

-Hero sued Shree Amba for infringing registered front fender design (V-shape elevated surface, elongated sides) on HF Deluxe bikes via identical "HF DLX TYPE" copies sold cheaper; defendant challenged validity (prior art, functionality, non-registrable "article" u/s2(a)).

-Suit filed as CS(Comm) 1078/2018.
-Design registered on 07 April 2015.
-SB (Prathiba M Singh J?) held design invalid/not "article" on 16.08.2023.
-Appeal FAO(OS)(COMM) 241/2023 filed.
-INTA intervention appl. on 11.01.2024.

-Delhi HC SB held front fender non-registrable as "article" u/s2(a) (no independent commercial life beyond replacement for specific model; Ford Motor UK ratio applied). Appeal pending; INTA intervened arguing literal "capable of being made/sold separately" includes spares, distinguishing UK law/2000 amendment enlargement.

-SB interpreted s2(a) restrictively (spares need "independent life as commerce article," not mere substitutes); INTA opposes, citing Marico Bom DB (literal/capable ≠ must), 2000 SOR enlargement, UK repeal; risks mass invalidations.

https://www.inta.org/wp-content/uploads/public-files/advocacy/amicus-briefs/20240507_Hero-Motocorp-Limited-V-Shree-Amba-Industries-Intervention-Application.pdf

Kent RO Systems Ltd. and others

-Kent sued manufacturer/trader and eBay for infringing registered water purifier designs by advertising/selling identical/deceptively similar products on eBay platform.

-Plaintiffs obtained design registrations pre-suit.
-Suit filed as CS(COMM) 165/2016.
-21.12.2016: Summons + URLs blocked ex-parte.
-D1 consented to injunction (no damages).
-18.01.2017: Suit decreed vs D1; disposed vs D2.

-Delhi HC decreed permanent injunction vs D1 on consent (no damages/accounts). Suit vs D2 eBay disposed binding it to remove infringing listings on complaint + disclose seller details; rejected proactive screening duty.

-No intermediary liability sans specific notice (s79 IT Act + IT Rules); removal within 36 hrs on complaint suffices; no conspiracy/abetment without common intention proof. Reaffirmed Myspace: actual knowledge triggers action, not general awareness.

https://www.casemine.com/judgement/in/58be65654a9326199e6aac23

Ms Lalita Goyal Prop. M/s Baby Wheels India.

Baby products/wheels (design unspecified).

-Plaintiff sued for injunction against defendant's use of plaintiff's registered design; defendant challenged validity u/s19 as defense.

-16.04.2025: Comm. Ct. granted injunction despite validity plea.
-24.07.2025: DB set aside injunction + transferred suit to Del HC IPD.

-Delhi HC DB set aside Commercial Court's injunction order. Court held s22(4) mandates automatic transfer to HC on any s19 validity defense plea, regardless of vagueness. Suit transferred to IPD for fresh injunction hearing on 08.08.2025.

-s22(3) allows s19 grounds (e.g., non-novelty) as defense; s22(4) absolute - no discretion to deny transfer. Parties consent to fresh consideration uninfluenced by prior order.

https://indiankanoon.org/doc/36679961/

The Pilot Pen Co. (India) Private Ltd.

The Gujarat Industries Private Ltd.

The Pilot Pen Co. (India) Private Ltd. alleged that several defendants manufactured and marketed fountain pens with clips that were similar to or colourable imitations of its registered design.

- 28.09.1959: Registered Design no.101410 issued to Pilot Pen.
- 1963: Suit and Original Petition filed by pilot pen and defendants respectively.

- Delhi HC dismissed all suits by Pilot Pen with costs.
- Delhi HC dismissed the Defendants' petitions for cancellation of the registered design.

- The rights conferred by the registration of the design expired by the time suits were instituted.
- Plaintiff no longer had enforceable design rights at the time of seeking relief.
- Delhi HC found no sufficient novelty or originality in the design of the clip

Ust Global (Singapore) Pte Ltd

The Controller Of Patents And Designs

Digital graphical user interfaces

UST Global challenged the Controller’s rejection of the design application for a GUI “Touch Screen”

- 30.10.2017: Design application for touch screen
- 04.09.2019: Controller refuses design registration
- 2019: Appellant files appeal

- Calcutta HC set aside Impugned order
- Calcutta HC remanded the matter to the controller for fresh consideration within 3 months and directed to be not be bound by previous findings

- GUI can potentially qualify as a registrable design under the Designs Act, 2000 if it constitutes a feature of shape, configuration, pattern, ornament, or composition of lines or colours applied to an article, appeals to the eye.
- Application of the GUI design involves an industrial process

https://indiankanoon.org/doc/44587046/

Design Registration no. 174429 (highlighter/marker pen)

Highlighter or marker pen design

Faber Castle alleged that defendants were infringing their registered design for highlighter by copying shape, configuration, colour scheme and overall design.

- 1.08.1997: Registered Design granted
- 12.01.1998: Certification of design registration
- October 2002: Defedants marketing their highllighter

- Bombay HC granted Interlocutory injunction in favor of the plaintiffs.

- Design in question was found to cover the entire appearance of the highlighter, not merely individual parts, falling within the definition of Design.
- When substantial similarity is established, nterlocutory injunction is appropriate to protect the plaintiffs’ goodwill and registered rights pending trial.

The Kohinoor Mills Co. Ltd.

Vijay Bharat Thread Mills (India)

D 82466 (Class 05) - Respondents

Textile products: yarn & thread

Kohinoor Mills alleged that the respondents’ registered design D 82466 for “Sanyasi” was not a valid design and thus cancelled under Section 51A of the Patents and Designs Act, 1911.

- January 1955: Respondents began using “Sanyasi” mark
- 05.05.1955: Registered “Sanyasi” as Design No. D 82466
- 1956: Petitioner filed Misc. Petition filed suit seeking cancellation of design.

- Bombay HC cancelled the registration of Design.

- The design was essentially used as a trade mark, and not as a “design” applied to an article
- Design or its representation was published in India before the date of registration.

Paresh Ajitkumar Kapoor

Air cooler: appearance and configuration

Paresh Ajitkumar Kapoor and Kapsun Resources Corporation alleged that Tomar Enterprises were manufacturing, marketing, and selling air coolers that copied the plaintiffs’ registered design

- 27.12.2010: Plaintiff aplied for design registration for air coolers
- 2021: Plaintiff filed civil suit
- 26.02.2021: Lower court granted interim injunction

- Rajasthan HC dismissed the application seeking cancellation of the plaintiff's suit.
- Suit for infringement of the registered design remains maintainable and injunction proceedings continued.

- Order 7 Rule 11 CPC: Court must examine the pleadings in the plaint only without going into merits.
- Parallel proceedings do not per se defeat maintainability where different reliefs are sought under distinct legal provisions.

https://indiankanoon.org/doc/56708529/

Symphony Comforts Systems Ltd.

Air Cooler Appearance Shape

Symphony Comforts Systems Ltd. filed a petition under S. 51A of the Designs Act, 1911 seeking cancellation of the respondent’s registered design.

- 29.08.1997:Design registration granted to respondent.
- 2000: Respondent obtained injunction in civil suit asserting design rights.

- Gujarat HC dismissed the petition, holding that it lacked jurisdiction to entertain the case.

- design was registered by the Controller of Designs at Calcutta
- Mere fact of the petitioner’s business being at Ahmedabad did not confer jurisdiction on the Gujarat HC.
-S.2(7): Only specified High Courts can entertain petitions for cancellation. Choice of forum depends on where the registration enures or where cause of action substantially arises.

Asian Rubber Industries
Reliance Footwear Pvt. Ltd.
Rexona Footwear Pvt. Ltd.

181088, 181193, 181829 (Respondent - Foowear)
223556 (Defendant - Cancelled in 2009)

Asian Rubber Industries alleged that Reliance footwear designs infringed their registered designs.

- 15.12.1999: Jasco Rubber design registration No. 181088 granted.
- 29.12.1999: Design registration No. 181193 granted.
- 7.03.2000: Design registration No. 181829 granted.
- 14.12.2009: Defendant’s design registration granted.
- October 2010: Jasco Rubbers filed cancellation proceedings
- 20.12.2011: Controller cancelled defendant’s design registration.
- 23.12.2011: Trial Court granted ad-interim injunction on passing off basis.

- Bombay HC upheld the injunction granted by the trial court against the defendant
- Bombay HC granted ad-interim injunction pending the final disposal of suit
- Bombay HC rejected the application for stay of order.

- Injunction can be granted to prevent deceptive similarity and likelihood of consumer confusion, even when design infringement is contested.
- Courts assess overall visual impression rather than isolated details to determine significant distinguishability and likelihood of confusion.
- Cancellation of a competing registration strengthens the original registrant’s position in injunctive relief proceedings.

https://indiankanoon.org/doc/164890626/

M/S.Taranga Technologies

M/S.Neels Enterprises Pvt. Ltd.

Taranga Technologies filed an appeal against the order of injunction granted in favor of Neels Enterprises.

- November 2018: alleged infringing manhold covers at BPCL Petrol bunk found
- June 2019: Taranga applied for a tender to supply or install the same
- 16.12.2019: Leave granted to sue for design infringement.

- Madras HC dismissed the Original side appeal.
- Madras HC ordered to continue the trial suit.

- Continuing cause of action and territorial jursidiction proven
- Suit sufficiently addressed the passing off due to potential confusion and resultant misleading of the consumers.

https://indiankanoon.org/doc/139148140/

Preethi Kitchen Appliances Pvt. Ltd.

Baghyaa Home Appliances
M/s. Maya Appliances Private Limited

Base unit of mixer grinder - Tripod-shaped

Preethi Kitchen Appliancesalleged that Bhagya Home Appliances Vidiem V-Star series tripod base was an obvious imitation of their registered design which resulted in infringement, passing off and lack of novelty.

- 01.10.2015: Plaintiff’s Design registered
- March 2016: Plaintiff launched “Preethi Zodiac/Taurus/Aries” series
- 17.04.2017: Defendant’s Design registered
- September 2017: Defendant launched “Vidiem V-Star” series
- 2018: Interlocutory Applications filed

- Madras HC granted the interim injunction in favor of the plaintiff.
- Madras HC held that the Plaintiff is a prior registrant, Defendant’s product is an obvious imitation/piracy, and registration does not protect from infringement claims of prior registrant.

- Subsequent design registrant cannot claim protection against a prior registrant
- Followed instructed eye test: design registration is compared with alleged offending product, judgement solely by the eye.
- When overall perspective is similar, infringement can still be found.

https://indiankanoon.org/doc/122421233/

M/S Maya Appliances Private Limited

Butterfly Gandhimathi Appliances Ltd.

272882, 272883, 276080, 272567 and 264344.

Base Design of mixer, grinder, juicer

Maya Appliances alleged piracy or imitation fo designs, and claimed that Butterfly copied the concept of framelessness, color and aesthetic features.

- 1.10.2014: Patent application filed by plaintiff
- 2014 to 2015: Design registrations obtained
- 2017: Suit filed

- Madras HC dismissed the suit for interim injunction.

- Defendant challenged the validity of design registration, filed for cancellation under Section 19, and
claimed no substantial visual similarity.
- Plaintiff themselves have made prior publications of the same design, undermining novelty.
-Admission of framelessness as a functional innovation, the burden does not shift to the defendant.
- overlap of patent and design law; regsitration does not lead to automatic injunction

https://indiankanoon.org/doc/108011813/

Gyandeep International

165316 (Class 3 - Defendant)
166861, 166862, 173497, 174566, 173496, 173499, 173500, 173498

Electrical Rotary Switches and Hardware

Gyandeep sought injunction against threats arising from alleged design infringement & passing-off circulars issued by Salzer

-1998: Suit filed
- 29.01.2021: Board resolution and affidavit filed to not initiate proceedings
- 01.02.2021: Board resolution presented

- Madras HC decreed in favor of the plaintiff in part.
- Claim for damages was given up by plaintiff and dismissed.

- Salzer’s affidavit not to pursue infringement/passing off proceedings treated as sufficient to grant relief.
- Plaintiff did not pursue evidence and substantive ssues were not finally decided on merits.

https://indiankanoon.org/doc/189370435/

M/S. Maya Appliances Private Limited

M/S. Minit Engineers Marketing

Table-top wet grinders - Twin Wiper design.

Maya Appliances filed a suit under S. 22 Designs Act seeking declaration that defendants infringed their design through manufacure and sale of a product that incorporates the same design feature.

- 2015: suit filed seeking relief
- 20.10.2015: Defendants file an affidavit of undertaking
- 29.10.2015: Judgment delivered

- Madras HC decreed the suit partly in favour of the plaintiff.
- Recorded the undertaking of defendants ceasing to manufacture, sell or offer for sale products infringing the impugned design.
- Damages were dismissed.

- Defendants admitted the plaintiff’s rights and consented not to engage in infringing activity.
- Recorded undertaking and granted declaratory and injunctive relief accordingly.

https://indiankanoon.org/doc/31422969/

M/S. Kemp & Company & Another

Plastic chair - baby chair with human face backrest and removable insert

M/S. Kemp & Company claimed infringement of the registered design for the baby chairs with the human face backrest and removable inserts by M/S. Prima Plastics Ltd. and the resultant passing off.

- 22.08.1995: applicaton for registeation filed
- 31.7.1995: invoices of sales prior to registration
- 16.11.1995 to 23.11.1995: exhibiton at cross maidan where defendants chairs seen and plaintiff sent letter to defendant
- 25.4.1996: Defendant repluy
- 23.5.1996: plaintiff repsonse with registration certificate
- 5.8.1996: First affidavit in reply by defendant
- 30.8.1996: further affidavits by defendants.

- Bombay HC dismissed the notice of motion
- Bombay HC refuse the relief of temporary injunction
- Bombay HC directed defendants to file undertaking to pay damages if plaintiffs succeed.

- s.49 (Disclosure in good faith) was held inapplicable
- Passing off claim rejected since no fasle respresentation existed: plaintiff chair - "Moderna Champ" and Defendant "prima"
- Cancellation application - s.51A not dealt with in the current stage.

Metro Plastic Industries (Regd)

Decided on when an application for cancellation is made (s.51A) whether an injunction can be granted in favor of registered proprietor (s.53).

- Delhi HC held that injunction is not automatic upon registration
- When cancellation petition is pending, the grounds raised therein ought to be considered and exercise judicial discretion.

- Interpretation of s.53 and 51-A
- Rejected the decision in Niky Tasha case.
- s. 53 does not confer an absolute right & both 51A and 53 have to be read harmoniously.
- Defence of invalidity is available in s.53 only when s.51A cancellation application has been filed.

Bharat Glass Tube Limited

Gopal Glass Works Limited

Glass manufacturing (application of ornamental patterns, figured and wired glass sheets)

Bharat Glass Tube limited filed an appeal against the order of Calcutta HC which set aside the application for cancellation of a design registration under s.19.

- 29.10.2002: Respondent applied for registration
- 05.11.2002: Design duly registered
- 21.5.2003: Respondent issued a notice cautioning others
- 20.9.2004: Assistant Controller of Patents and Designs issued an order cancelling registration
- 17.8.2005: Single Judge set aside the cancellation

- SC dismissed the appeal
- SC upheld the validity of the design registration and ordered the appellant to pay rs. 50,000 as costs.

- Design is protected upon application to a specific article. - - Even if a pattern - when previously not applied - novely proven.
- Registration judged solely by the eye appeal of the finished article

Texla Metals & Plastics Pvt. Ltd.

Road safety equipment (Bollards and Delineators)

Texla Metals & Plastics Pvt. Ltd. filed a suit seeking injunction restraining Anil K Bhasin from infringing its registered design.

- 21.09.1988: Registration effective
- 31.12.1997: Letter by Defendant
- 28.4.1999: Ex parte injunction granted
- 12.4. 2001: matter listed before Joint Registrar

- Delhi HC allowed the application for an injunction
- Delhi HC confirmed the Ex parte injunction granted

- s.43: sufficient to analyse whether design was published or available to the public in India prior to registration
- s.51A: defence of lack of novely is not sufficient to invalidate registration at interim stage when cancellation petition has not been initiated or proof of publication does not exist.

Aqualite Industries Private Limited

Relaxo Footwears Limited

Design Registration certificate:
325071 , 325074 (Respondents)

Footwear (Hawai Slippers Flip flops)

Relaxo filed a suit alleging piracy of registered designs by Aquality under s.22(1) and sought permanent and interim injunction restraining manufacture and sale.

- 27.12.2019: Design registration date
- February 2021: Relaxo discovered infringing products
- 4.6.2021: Summons issued
- 9.10.2021: Interim injunction granted

- Delhi HC upheld the interim injunction order granted by the Single Judge
- Delhi HC dismissed the appeal with no order as to costs.

- Defences: s.22(3) r/w s.19(1)(b),(c) lack of novelty and prior publication
- Application of instructed eye test to assess novelty
- Design protection extends only to novel features and not entire article
- Novelty extends only to shape, configuration and surface pattern. Color is not included.

https://indiankanoon.org/doc/136592964/

Niky Tasha India Pvt. Ltd.

M/s. Faridabad Gad Gadgets Pvt. Ltd.

LPG gas cooking range (combination of gas burner, grill and oven)

Niky Tasha India Pvt. Ltd. filed a suit alleging Faridabad gas gadgets infringed the registered design of the product line "KITCHENETTE" by manufacturing and selling product "NAVJYOTI"

- 11.4.1983: Date of Registration
- 15.4.1983: Advertisement in India Toya issue (Alleged pre-publication)
- 17.11.1983: Suit filed
- 19.12.1983: Application for temporary injunction dismissed by Single Judge.

- Delhi HC dismissed the appeal
- Delhi HC upheld the dismissal of interlocutory injunction

- Certificate of Registration merely prima facie evidence of proprietorship
- Referenced Smith v. Grigg and American Cynamid to apply " balance of convenience
- Emphasized courts lean against monopolies.
- Application for cancellation (s.51A) pending.

Bansal Plastic Industries

Bansal Plastic Industries filed a suit alleging infringement by Neeraj Toys Industries through manufacture and sale of toy horse identical and similar in registered design.

- August 1983: Design prepared by plaintiff
- 7.8.1993: Application filed and date of registration
- 6.12.1983: Certificate issued
- 1988: Application for interim injunction
- 6.7.1989: Deadline for furnishing security.

- Delhi HC dismissed the temporary injunction
- Delhi HC directed defendant to furnish security against immovable property
- Ordered that plaintiff has the liberty to seek injunction if security not furnished.

- Registration merly give copyright under ss.46 & 47, but not conclusive proof of validity.
- Injunction discretionary & not automatic in design infringement cases.

M/s. Ampro Food Products

Andhra Pradesh HC (pre-Telangana)

Food Product (biscuit wih embossed design)

Appellant filed a suit alleging piracy of registered design by embossing identical design on its biscuit.

- 20.6.1972: Ad interim injunction granted
-10.7.1972: Interim injunction vacated by city civil court
- 31.7.1972: interm injunction granted in appeal

- Andhra HC allowed the appeal, granted interim injunction
- Trial court directed the immediate disposal of suit.

- s. 51A impliedly excludes jurisdiction of ordinary civil courts
- Registration is not prima facie evidence of novelty.
- TM registration does not permit piracy of registered design.

Tobu Enterprises Pvt. Ltd

Joginder Metal Works And Ors.

Tobu Enterprises Pvt. Ltd. filed a suit alleging infringement of the trircyle and seat designs by Joginder Metal Works.

1982: Application for interim injunction

- Delhi HC granted interim injunction
- Delhi HC restrained defendant from manufacture or marketing

- Without initiation of cancellation proceedings, defense of invalidity not available.
- s.51A(1)(a)(ii): foreign publication or solitary imported article did not amount to prior publication
- s.53(1) r/w s.2(5): focus on visual impression (shape, configuration, pattern & ornament); minor differences does not negate obvious imitation.

Ball point pen: corrugations above an elongated tapering portion

Rotmac filed a suit for infringement of its registered design and for passing off. Milap Chand challenged the validity of design and filed a cancellation petition under S.51A.

- February 1995: Appellant began sale of FIGHTER Pens
- November: Appellant filed infringement suit
- December 1997: appealed against trial court’s refusal to grant an ad-interim injunction
- 16.2.1998 – First appeal disposed of & interim order directed to continue until the interlocutory application was decided
- 23.12.1997: respondent filed an application seeking cancellation

- Calcutta HC granted injunction
- Caluctta HC held that challenges to validity cannot be raised as a defense but must be pursued under s.51A.

- Design infringement tested by visual similarity and not be likelihood of confusion.

https://www.casemine.com/judgement/in/56e12fbc607dba38966238a5

Essdee Industries Through Proprietor

Respondent filed a composite suit seeking relif for infringement of design & TM, & challenged the district court order permitting withdrawal of composite suit with liberty to file 2 separate suit.

- 14.12.202: Date of DC judgment
- 21.12.2020: Digitally signed date of judgment
- 2020 : Writ Petition filed

- Bombay HC dismissed the WP
- Bombay HC upheld the District court order of liberty to file 2 separate suit

- Defece under S.19 raised
- s.22(4) requires transfer to HC only when suit proceeded with and does not prevent District court jurisdiction.
- Diffences highlighted between R.N. Gupta and Carlsberg breweries
- Composite suits for design infringement and passing off are maintainable, plaintiff has liberty to withdraw and file separated when faced with s.19 defence.

https://indiankanoon.org/doc/17789938/

Carlsberg Breweries A/S

Som Distilleries And Breweries Limited

Bottle design of alcoholic beverage

Carlsberg filed a suit for infringement of its registerd design along with claims of passing off and imitation of label against Som Distilleries

- 30.03.2012: Plaintiff’s bottle design registered
- 28.11.2014: Defendant applied for registration of its bottle design
- April 2015: Defendant launched HUNTER beer in impugned bottle
- 28.05.2015: Consent order permitting limited sale
- 20.10.2015: Division Bench dismissed appeal
- 14.12.2015: SC ordered interim arrangement continuation
- 20.01.2016: Hearing of injunction application commenced

- Delhi HC dismissed the application for interlocutory injunction
- Delhi HC permitted to continue use of bottle design

- Applied “appeal to the eye” and “obvious imitation” test
- part of the design appeared functional and therefore weakening claim
- Balance of convenience in favor of defendants due to substantial investment.

https://indiankanoon.org/doc/87429194/

Copper tubes for air-conditioning, medical gas pipelines, refrigeration, and plumbing

Mandev Tubes Pvt. Ltd. filed a suit alleging infringement of a registered design of copper tubes Kalpesh R Jain and others.

- 17.09.2009: Registration certificate issued
- February 2015: Plaintiff discovered alleged infringing products
- 2016: Commercial Suit filed
- 6.12.2016 : Single Judge granted interim injunction
- 2017: Commercial Appeal filed

- Bombay HC dismissed appeal and upheld the grant of interim injunction.

- Asian Rubbers case: own claim of registration weakens novelty challenge
- Bharat Glass: design a conception/idea applied to an article
- Appeal to eye test applied

https://indiankanoon.org/doc/51214274/

Apl Apollo Tubes Ltd.

Hollow Section Pipes: Steel hollow metal framwe and structural support system

Apl Apollo Tubes filed a suit claiming infringement of its registered design relating to Hollow Section Pipes

- 2001: Publication of prior art
- 2011: American National Standard for Steel Frames relied upon by the defendant.
- 2003: BIS Specification referred to in the defendant’s prior art material

- Bombay HC dismissed the application and refused ad-interim injunction

https://indiankanoon.org/doc/168489488/

Match boxes: ectangular striking surface pattern with diamond shaped spots.

Wimco alleged that respondents were selling and manufacturing match boxes imitaing the registered design.

- 17.9.1942: Indian Patent Specification accepted.
- 19.5.1943: Publication
- 5.1.1978: Application and registration date of Design No. 146498.
- 19.10.1978: Certificate of registration issued.
- 13.5.1981: suit instituted by Wimsico.
- 20.5.1981: Cancellation petition filed (s. 51A)
- 29.4.1983: Cross-examination at trial.

- Delhi HC allowed cancellation petition
- Delhi HC cancelled design registration 146498 on the grounds of prior publication and lack of novelty.

- Applied ocular test under s.2(5) and held registered design was identical to prior publication
- s.51(1)(a)(ii), (iii) of Designs Act 1911 applied for cancellation of registration

Western Engineering Co.

Cycle locking mechanism design

Petitioner filed a petition to cancel the Respondent's design under S.51A since it lacked novelty, prior registration existed

- 25.05.1965:Petitioner’s design registered.
- 10.10.1965: Respondent’s design registered.
- 8.7.1966: Affidavit in reply
- 8.2.1967: Affidavit referring to publication in the journal Cycle Times

- Calcutta HC allowed the petition for revocation
- Calcutta HC cancelled design No. 127199

-Application of the appeal to eye test.
- Similarities that create same visual impression = Identical design
- Design protection should not grant monopoly over common designs