Court frowns upon practice of blow hot and cold

Can you question novelty of design as a defence to infringement action? What is the impact of defendant seeking registration of a design and later claiming it lacks novelty? These among other issues were subject of dispute between two helmet manufacturers both claiming registration for their respective designs. The Plaintiff, Vega Auto Accessories (P) Ltd (Vega) filed the suit against the Defendant, S.K. Jain Bros. Helmet (I) Pvt. Ltd (Jain), before the Delhi High Court alleging infringement of registered design in relation to helmets. Pursuant to the filing of the suit the court granted injunction in favour of Vega restraining Jain and its dealers/agents from making, selling, offering for sale, advertising and directly or indirectly dealing in helmets amounting to infringement of Vega’s registered design. Aggrieved by the injunction order Jain has applied for setting aside the injunction.

Vega in the suit contends:

  1. They have obtained registration for the design for helmet on August 13, 2014, whereas, Jain has registered their design on March 01, 2017.
  2. Jain’s design for the helmet is identical to Vega’s design.
  3. Minor variations of helmet design by Jain are irrelevant as the test of substantial similarity has to be applied.
  4. It is the overall design which has to be considered and not the unique features alone. The registration granted is not for the unique features but with respect to overall design.

Jain contended:

  1. They have obtained registration for the design of their helmet.
  2. Vega’s registered design has been pre-published.
  3. The rival designs are not similar.
  4. The fact that Jain’s design is registered will not preclude them from taking the defence that Vega’s design in not novel or is prior published.
  5. Registration is not for the entire product and is only for what is new and novel, helmets have been in vogue much prior to the registration in favour of Vega and thus, all the helmets will have certain common features.
  6. Jain has also referred to the dissimilarities in the rival helmet designs.

Court Ruling:

  • With regard to trademarks it has been consistently held that one having got his mark registered, when faced with action by another for infringement, cannot state that the mark of the prior registrant was not distinctive or could not have been registered. The reasoning behind this is that it is not open to a litigant to approbate and reprobate. Even in case one has 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 Judge observed that there are differences between registration of a trademark and design and the presumption of validity of such registration. However, the reason behind courts taking a consistent stand is that if a party has taken up a specific stand at a particular stage of the Court proceedings, it should not be open for him to take a contrary position at a subsequent stage of litigation or in a different proceeding. The litigant cannot blow hot and cold at successive stages of the same litigation or another litigation.
  • Jain’s contention that there is no requirement on the applicant for registration of a design to make an averment of the design being novel or new and not having been pre-published is not correct. Further, once a party has claimed his design to be new or original and having not been prior published and being distinguishable from known designs, he cannot oppose the claim for infringement by a prior registrant, if his design is identical to that of the prior registrant, by contending that there is no newness or novelty in the design of the plaintiff and/or that the design of the plaintiff was prior published. Thus, plea of invalidity of Vega’s registration is not open to Jain, as they themselves have obtained registration of the impugned design. Further, if the impugned design is found to infringe the design of Vega which is admittedly prior registered, Jain is estopped from taking the plea of invalidity of registration in favour of the former.
  • On a comparison of the rival helmets the Court has observed that Jain’s helmet is an obvious imitation of Vega’s design. Thus, held Vega has a prima facie case and the balance of convenience is in their favour and the court accordingly confirmed the injunction.
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