Denying the plaintiff’s design rights is a common opening defense in design infringement cases. In Vega Auto Accessories (P) Ltd (Plaintiff) v S K Jain Bros Helmet (I) Pvt Ltd (Defendant) (CS(COMM)837/2017), the Delhi High Court (Court) once again dealt with this defense. However, this time the Defendant itself held the design registration for a similar product.

Background

The Plaintiff filed a design infringement case against the Defendant to inter alia stop the Defendant from selling or dealing with its product, the ‘Power Helmet’, in any manner. The Plaintiff alleged that the ‘Power Helmet’ was substantially similar to the Plaintiff’s product, the ‘Vega Helmet’, which was protected as Design No. 264763. Interestingly, in the present case, the Defendant also owned a design registration for the ‘Power Helmet’ (being, Design No. 291413).

Arguments

The Plaintiff argued that its design was registered on 13 August 2014, almost 3 years prior to that of the Defendant’s registration. The Plaintiff argued that minor variations cannot allow the Defendant to defeat the Plaintiff’s claim for infringement, as the test of substantial similarity is to be applied. The Plaintiff also contended that it is the overall design that should be seen and not only the unique features, as was contended by the Defendant.

The Defendant’s main argument was that the Plaintiff’s design was invalid as the same was prior published. Therefore, it was neither new nor original. When the Court probed whether a person in a suit for infringement can take the plea of invalidity of a registered design when such person himself owns the impugned design on the grounds of novelty, the Defendant contended that such defence is vested upon any defendant.

The Court, while dealing with the Defendant’s contention of invalidity of the Plaintiff’s design, relied on topical trade mark cases where it was held that the defendants having themselves sought registration of their trade mark, cannot argue that the plaintiff is restricted from claiming exclusivity. The Court observed that such defendants shall not be permitted to contend that the plaintiff’s design is not new or original or lacks novelty. This observation is consistent with the elementary rule that a party cannot be permitted to assume inconsistent positions in court to the detriment of its opponent.

Judgment

Upon due consideration, the Court did not find any merit in the Defendant’s contention that its ‘Power Helmet’ was different from the Plaintiff’s ‘Vega Helmet’. The Court ruled that the ‘Power Helmet’  was an obvious imitation of the ‘Vega Helmet’, in shape and configuration. Furthermore, as the Defendant itself had obtained registration of the impugned design, the Defendant would be estopped from taking the plea of invalidity of registration of the Plaintiff’s design if the impugned design was found to infringe the Plaintiff’s prior registered design. The Court ruled that the plea of invalidity of registration of the Plaintiff’s design is not open to the Defendant.

Conclusion

Although it is established that one cannot take contradictory views to deter the opponent, this judgment has a wide scope for interpretation. The debatable issue remains whether such a stand taken by a defendant renders its registration inconsequential irrespective of the degree of similarity between the rival products.