Design litigation is on the rise in India. Steelbird Hi-Tech India Ltd. (SBHT), a manufacturer of helmets, registered a design bearing No. 241153 for one of their products. In November 2013, it came to SBHT’s knowledge that the defendant was manufacturing helmets using a design similar to its design. SBHT filed a suit for permanent injunction to curb infringement of its Design, passing-off, rendition of accounts and also claimed damages. SBHT also filed an application for interim reliefs. An interim order was passed in SBHT’s favour in December 2013. In response, the defendant filed a reply opposing the interim reliefs granted and sought a vacation of the order.Both designs are shown below:

 

Case of SBHT:

1. SBHT contended that its helmet bore several novel and distinctive features. SBHT claimed to have manufactured the helmets bearing the registered design since January 2012. It contended that it had marketed and promoted such helmets on a substantial scale and had earned goodwill and reputation inter-alia in the design of the helmet on account of its novel design. 
2. The Defendant’s helmet was an imitation of its registered design and the Defendant had deliberately and slavishly copied all the essential features of SBHT’s registered design.
3. SBHT’s distinctive and uniquely designed products had come to be identified with the company and had acquired a secondary meaning in the eyes of the public as originating from it. SBHT further contended that when compared, the design of the defendant’s helmets was not materially different from its design and therefore infringement resulted.

Case of the Defendant:

1. The primary defense raised by the Defendant was that SBHT’s design lacked novelty. The novelty claimed by SBHT in the "Beak shaped design" was in fact common to helmets. The design was being utilized by others in the market, both in India and abroad prior to SBHT’s registration thereby making SBHT’s design registration invalid. The Defendant produced various photographs and documentary evidence including original product catalogues of other manufacturers to substantiate this argument.
2. The Defendant raised an alternative defense that its products were different from SBHT’s registered design. A comparison between its helmet and that of SHBT’s was also brought on record by the Defendants. 
3. The Defendant also contended that the visor provided in the center of the helmet was purely a "functional feature" and could by no means be the subject matter of a design registration.

The Delhi High Court considered all the above factors and arguments to determine the issue of whether the plaintiff’s design was “new or original” and therefore validly registered.

The Court considering the arguments put forth by both parties and bearing in mind the nature and scope of the statute, opined that “a product manufactured by Studds Accessories Ltd (a third party) bearing a similar design was already available in the market, and the design of which would certainly have been conceived much prior to 1st December, 2011. The product brochure of STUDDS along with the above said price list is filed with the present application which shows beyond doubt that the plaintiff's registered design is neither new nor original.’

The Court vacated the ad-interim relief order dated 6^th December, 2013 holding prima facie that the plaintiff's design was not new or original and not entitled to protection. 

Defendants can now rely on third party competitor price lists and catalogues as a defense against an action of infringement of Design against them.