Delhi High Court in this case examined the principles of novelty and originality to be applied to a Design registered under the Design Act. SteelBird owner of a registered design of beak shape helmet initiated an action before the Delhi High Court against S.P.S. Gambhir & Ors (SPS) for imitation of its design. SteelBird alleged that SPS is manufacturing and marketing helmets with the same design copying all the essential features of the SteelBird’s design. At the time of filing of infringement suit an ex-parte injunction was granted restraining SPS from using the design. On being served SPS appeared and applied for setting aside the injunction order, and the case was heard on merits.

SteelBird contended that design of their helmets were novel with distinctive features; in shape, configuration and surface pattern and registered under the Design Act thus providing them the highest degree of protection. SteelBird further contended that in November 2012 they learnt about the fraudulent imitation of the registered design by SPS who started manufacturing and selling helmets under the same design by copying the essential features of SteelBird’s registered design.

SPS contended that the design of the SteelBird lacked novelty. It contended that claim of novelty over beak shaped design is common to trade and several competitors like STUDDS and AIROH have similar design helmets existing in the market prior to the registration by SteelBird’s design. To substantiate their stand they also produced brochure of the other competitors prior to the registration of the SteelBird’s design showing similar shape and design of helmets being available in the market for sale.

The Court after considering the submission of both sides observed that the SSP had successfully proved that the design of SteelBird had been prior published and was in the public knowledge even prior to the registration. Holding that the SteelBird’s design was not new and original, the Court observed that the ex parte injunction was liable to be set aside and SSP was entitled to use their designs of helmets.