No ‘mini trial’ at interim injunction stage

By Omesh Puri, LexOrbis
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The division bench of Delhi High Court, in its judgment dated 24 January 2019, upheld the single judge’s order refusing interim injunctions against the use of similar designs of Crocs footwear.

Various suits were filed by Crocs (the plaintiff) for infringement of its registered designs (No.197685 and No.197686) against several defendants. Earlier, the single judge had granted ex parte ad interim injunctions, and subsequently defendants challenged the proceedings and also applied for the vacation of ex parte orders.

Omesh Puri and Dheeraj Kapoor LexOrbis
Omesh Puri
Associate partner
LexOrbis

The defendants argued that there cannot be an infringement of a registered design if the registration granted to the plaintiff with respect to the footwear itself was an invalid registration. It was argued that the plaintiff’s registered design at the time of registration was not a new or original design, and there existed prior publication of a registered design. In support of this, the plaintiff submitted web shots from an internet archive.

The plaintiff’s designs dated back to 28 May 2003, and to establish prior publication, the principal set of evidence were web shots from the archive from late 2002 to 2003, along with web shots from the plaintiff’s website. The plaintiff argued that the archives from the Holey Soles website, on 10 December 2002 and 17 February 2003, were no guarantee that the footwear in question already existed. It contended that there is no conclusiveness as to the design of the footwear found on the Holey Soles website.

The single judge prima facie held that printouts downloaded from the Holey Soles website could have been filed by the plaintiff to show that Holey Soles footwear designs were not on the public domain, and that designs may not have been available on the Holey Soles website. Relying on prior published documents, the single judge held that the designs were available on the Holey Soles website, and were therefore known to the public.

The court observed that the single judge’s order of not granting an injunction on the ground of prior publication had been arrived after a careful analysis of the materials and documents on record. The court did not find the single judge’s exercise of discretion faulty, and therefore held against the interference with the earlier order. The division bench observed that the court is not allowed to carry out a mini-trial at the stage of considering the prima facie merits of any given case, and the court cannot carry out a mini-trial. At the preliminary stage, the court is required to consider the broad prospects of the rival claims based on the pleadings and the documents.

The plaintiff’s argument with respect to the authenticity of the internet archive can be considered during the trial but not by conducting a mini-trial at the preliminary stage. The Division bench relied on an earlier judgment of the Supreme Court in Wander v Antox (1990), where it was held that “Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain, and remain uncertain till they are established at the trial on evidence”.

The court also observed that the Appellate Court is not required to interfere with the exercise of discretion, except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely, or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions.

While examining the impugned judgment, the court agreed with the analysis carried out with respect to prior publication and the existence of the Holey Soles designs in the public domain vis-à-vis the plaintiff’s claim of novelty of its designs or the lack of any similar design in the public domain, and held that such analysis is consistent with the law.

The court, in upholding the earlier judgment, also noted that the plaintiff’s registration in the EU was cancelled due to prior publications. The court held that Crocs designs are repetitions of age-old designs, with some variations. The plaintiff argued that the novelty in Crocs designs was its ugliness, the result of which was unusual and distinctive. Dealing with this argument, the appellate court noted that footwear and sandals, in particular, have a design constraint that means they have to necessarily cater for the somewhat irregular foot-shape, which is narrow at the heel and much broader at the toes.

The purpose of an interim injunction is to ensure protection of right of the parties on the basis of three factors: prima facie case, balance of convenience, and irreparable injury; where the interim injunction is granted by giving due weightage to these factors, the Appellate Court most of the time is reluctant to interfere with the findings of the trial court.

Omesh Puri is an associate partner at LexOrbis.

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