Estoppel against invalidity in design infringement suits

By Omesh Puri, LexOrbis
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Delhi High Court recently held that the registered proprietor of a design could not use the invalidity or prior publication of the plaintiff’s design as a defence in a suit for design infringement.

Omesh PuriAssociate partnerLexOrbis
Omesh Puri
Associate partner
LexOrbis

In Vega Auto Accessories (P) Ltd v SK Jain Bros Helmet (I) Pvt Ltd, Vega sought a permanent injunction to restrain Jain Bros from using a helmet design. Both parties had registered the design for their helmets but Vega was the prior registrant. Jain Bros’ main defence was that it also had a registered design and that Vega’s registered design had been pre-published. Jain Bros also argued that the two designs were dissimilar.

The court, relying on its earlier decision in Mohan Lal, Proprietor of Mourya Industries v Sona Paint & Hardwares (2013), held that a suit for infringement of a registered design is maintainable against a registrant of a design.

Addressing the issue of estoppel against the defendant’s plea of invalidity of design registration, the court considered various trademark cases where it was held that the defendant, being a registered proprietor of a trademark, when faced with an infringement suit, could not say that the mark of the prior registrant was not distinctive or could not have been registered. The reasoning provided by the court was that if a party has taken a specific stand at a particular stage of the court proceedings, it should not be open for that party to take a contrary position at a subsequent stage of litigation or in a different proceeding. A litigant cannot be permitted to take inconsistent positions in court to the detriment of the opposing litigant.

The court discussed the difference between trademark and design registration. Trademark registration gives rise to a presumption of validity of registration while registration of a design is prima facie evidence only of the matters directed or authorized to be entered in the register. This was not an issue in the current case.

The court also referred to the judgment of a division bench of Bombay High Court in Asian Rubber Industries v Jasco Rubbers (2012) where it was held that the defendant, having sought registration of its design, was not entitled to say that the plaintiff could not claim exclusivity and it was not open to the defendant to contend that the plaintiff’s design was not new or original or there was no novelty.

The court held that once an application for design registration is made, it is implicit that the applicant for registration is making a declaration that the design for which registration is sought does not fall within any of the prohibitive clauses for design registration, which includes that a design is not new or original, or has been disclosed to the public anywhere in India or in any other country by publication, or is not significantly distinguishable from known designs or a combination of known designs.

Once a party files an application claiming that a design is new or original, has not been published before and is distinguishable from known designs, that party cannot oppose the claim for infringement by a prior registrant, if the party’s 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 published before. Finally, it was held that where the plaintiff has prior registration of a design, and the defendant is the registered proprietor of a design that has infringed registered design of the plaintiff, the defendant is estopped from pleading invalidity of the registration in favour of plaintiff.

As for the defendant’s argument of dissimilarity, the court held that the defendant’s helmet was an obvious imitation of the shape and configuration of the helmet in question of the plaintiff, and reiterated the settled principle of law that sameness of the features does not necessarily mean that the two designs must be identical in all ways and can differ on none – they have to be substantially the same.

The above decision adopts a perspective with respect to the scope of the defence of invalidity where the defendant is a subsequent registered proprietor of the design at issue. However, this decision may be challenged and open for arguments to determine the validity of plaintiff’s design if sufficient evidence is led to establish prior publication of the design. Moreover, if the same plaintiff files a separate suit against any other party and if the defendant in that suit takes the defence of invalidity and submits the supporting documents of prior publication, the court may be bound to refuse the grant of an injunction.

Omesh Puri is an associate partner at LexOrbis.

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