Case Note & Summary
The case involves a dispute between the plaintiff, Jasco Rubbers and Manpasand Footwear, and the defendants, Asian Rubber Industries and others, over footwear designs. The plaintiff obtained three design registrations under the Designs Act, 2000 for footwear in 1999 and 2000. The defendants manufactured footwear that the plaintiff alleged infringed its registered designs and amounted to passing off. The plaintiff filed a suit seeking injunction. The learned Single Judge, by order dated December 9, 2011, declined to grant ad-interim injunction for design infringement, finding that the designs lacked novelty and were not significantly different from prior art. However, by order dated December 23, 2011, the Single Judge granted ad-interim injunction restraining the defendants from passing off their footwear as that of the plaintiff's, finding deceptive similarity. Both parties appealed: the defendants challenged the passing off injunction, and the plaintiff challenged the refusal of design infringement injunction. The Division Bench, comprising Chief Justice Mohit S. Shah and Justice Ranjit More, heard the appeals together. The court examined the design registrations and noted that the designs were variations of common footwear shapes and lacked novelty. The court observed that the defendants had filed a cancellation petition under Section 19 of the Designs Act, 2000. On the issue of passing off, the court found that the plaintiff had made out a prima facie case of deceptive similarity, as the overall get-up and appearance of the defendants' footwear was likely to cause confusion. The balance of convenience was in favor of the plaintiff, and irreparable loss would be caused if injunction was not granted. The court upheld the Single Judge's order granting ad-interim injunction against passing off and dismissed the defendants' appeal. The court also upheld the Single Judge's order refusing injunction for design infringement, as the designs lacked novelty. The court directed that the appeals be disposed of accordingly, with no order as to costs.
Headnote
A) Passing Off - Deceptive Similarity - Ad-Interim Injunction - Designs Act, 2000 (not applicable) - Common Law - The plaintiff obtained registration of three footwear designs under the Designs Act, 2000. The defendants manufactured footwear allegedly deceptively similar to the plaintiff's registered designs. The Single Judge granted ad-interim injunction restraining passing off but refused injunction for design infringement. On appeal, the Division Bench upheld the passing off injunction, finding that the plaintiff had made out a prima facie case of deceptive similarity and balance of convenience favored the plaintiff. Held that the plaintiff's designs lacked novelty as they were not significantly different from prior art, but the plaintiff could still rely on common law passing off. (Paras 1-10) B) Designs Act, 2000 - Registration - Novelty - Cancellation - Section 19 - The court observed that the plaintiff's registered designs appeared to be variations of existing footwear designs and lacked novelty. The defendants had filed a cancellation petition under Section 19 of the Designs Act, 2000. The court noted that the registration did not confer a monopoly over common shapes and that the plaintiff could not claim infringement of a design that was not new or original. Held that the Single Judge rightly declined ad-interim injunction for design infringement. (Paras 2-8) C) Passing Off - Get-Up - Common Law Remedy - The court held that even if the design registration is weak, the plaintiff can still maintain an action for passing off based on the overall get-up and appearance of the footwear. The court found that the defendants' footwear was deceptively similar to the plaintiff's and that the plaintiff had acquired goodwill and reputation in the market. Held that the ad-interim injunction against passing off was justified. (Paras 9-10)
Issue of Consideration
Whether the learned Single Judge was justified in granting ad-interim injunction restraining the defendants from passing off their footwear as that of the plaintiff's, and whether the plaintiff is entitled to ad-interim injunction for infringement of registered design.
Final Decision
The Division Bench dismissed Appeal No.62 of 2012 (defendants' appeal) and dismissed Appeal (L) No.97 of 2012 (plaintiff's appeal), thereby upholding the Single Judge's orders: ad-interim injunction against passing off granted, and no injunction for design infringement. No order as to costs.
Law Points
- Passing off
- registered design
- novelty
- deceptive similarity
- ad-interim injunction
- balance of convenience
- irreparable loss
- common law remedy
