Indian footwear market is estimated to be US $ 15.5 billion by 2022. With tremendous growth potential, the sector is witnessing an unprecedented investment and launch of footwear directed towards all segments of society. As disposable income rises among Indian consumers, they move up the value chain, demanding products for different uses and occasions.

The post discusses a Design infringement and passing off action brought by Relaxo Footwears Limited (Relaxo) before the Delhi High Court against the defendant, Aqualite Industries Pvt Limited (Aqualite). Relaxo seeks to restrain Aqualite from dealing in footwear (slippers), alleging they are imitating their designs and trade dress. The competing product images are reproduced below.

Relaxo in the suit contends:

1. Incorporated in 1984, they are one of the largest footwear manufacturers in India. 
2. Their products are marketed under various distinctive trademarks/labels with a unique get-up and trade dress, including the house mark RELAXO and multiple brands like BAHAMAS, FLITE, SPARX, SCHOOLMATE, and others. 
3. They have registrations for the designs, (1) distinctive vertical ridges/grooving pattern running across the periphery of the entire slipper, and (2) the vertical ridges/grooving pattern running in the upper half of the periphery of the slipper.
4. In February 2021, they became aware of Aqualite’s use of an identical trade dress concerning footwear. Aqualite is pirating the trade dress with malafide intention of encashing the hard-earned goodwill and reputation of Relaxo. 
5. Aqualite in the past has infringed Relaxo’s intellectual property rights, and cases have been filed and some are ongoing/pending before this Court. 
6. Relaxo contends that their designs contain unique features, including teeth-like structures from the front to the back. It is also multi-coloured. The other registration has the same teeth-like projection in the circular front. 
7. Similar designs relied upon by Aqualite are also copies of Relaxo’s designs, and the infringers have been issued notices.
8. The plea that there is no novelty in footwear is wrong. Aqualite has also applied for registration, thus, cannot argue that footwear designs cannot be the subject matter of registration.

Aqualite, in reply stated:

1. Subject designs cannot stand the test of novelty, and the adoption is dishonest. 
2. Features in the registered design are subject to prior art and not protectable.
3. Similar designs have been published in India and abroad, and the designs in question are prior published. Therefore, lacks novelty.

Court’s findings

Court after considering the pleadings, arguments, and earlier decided cases held: 

1. The issue essentially pertains to the teeth-like design of the rival products. It is a settled position that the designs don’t need to be the same in determining similarities of designs. If the broad features of shape, configuration, pattern, etc., are substantially the same, then it is a case of design imitation. 
2. One has to judge the two designs solely by the eye to see whether the Relaxo’s essential features have been copied by Aqualite. A comparison of the rival products shows a striking resemblance. The teeth-like structure has been copied in the entire circumference and also in the upper half. This evidences that Aqualite has copied the essential features of Relaxo’s design. 
3. The documents did not evidence when the third party’s designs were launched or published. One of the documents states ‘new arrival’. Thus, at this stage, the contention of ‘prior art’ cannot be accepted. 
4. Aqualite has applied for registration of the designs in question. Thus, there can be no reason now for them to claim that the said designs of Relaxo cannot be protected.
5. The Court concluded that Aqualite has prima facie copied the designs of Relaxo. The plea that Relaxo’s designs lack originality or there being the existence of prior art will not succeed at this point as those are issues that would require detailed examination and would be considered after evidence. 

The Court ruled, Relaxo has made a prima facie case, and the balance of convenience is in their favour. The Court thus, restrained Aqualite from using the registered designs or any other design deceptively similar to Relaxo.