Finding that the Defendant has placed sufficient material on record to demonstrate that the design of the plaintiff company’s front fender is neither new nor original and that the plaintiff company’s design is not significantly distinguishable from known designs or combination of known designs in terms of Section 4(c) of the Designs Act, the Delhi High Court held that the plaintiff company has failed to make out a prima facie case for grant of interim injunction.

The High Court made it clear that the Statement of Objects and Reasons of the Designs Act itself provided that the “law does not unnecessarily extend the protection beyond what is necessary to create required incentive for design activity”, and therefore, while the intent of the new Act was to enlarge the scope of protection, it was only to the extent necessary to provide incentive for design activity.

A Single Judge Bench of Justice Amit Bansal observed that “the front fenders of the defendant are being sold in the market under the brand name “SAI”, whereas the products of the plaintiff company are sold under the brand name “HERO”. Therefore, consumers can make an informed decision and choose between the replacement part sold by the OEM and other manufacturers such as the defendant”.

Advocate Gaurav Miglani appeared for the Plaintiff, whereas Senior Advocate Amit Sibal appeared for the Defendant.

The brief facts of the case were that the plaintiff company is part of the “Hero Group” and is engaged in the business of manufacturing and selling of automobiles, spare parts, and accessories thereof. One of the motorcycle models being sold by the plaintiff company is the “HERO HF DELUXE” motorcycle. The plaintiff company also sells front fenders for the said motorcycle model. The design of the front fender of the plaintiff is a registered. In June 2018, the plaintiff became aware of a front fender similar to their own, being manufactured by the defendant and sold in the market. Upon examination, the plaintiff company discovered the front fender of the defendant sold as “HF DLX TYPE” to be a copy of the registered design of the plaintiff company. Contending that the replication and infringement of the registered design of the plaintiff by the defendant being sold for a price lesser than that of the plaintiff’s, leading to damage to the business, goodwill and reputation of the plaintiff company, the plaintiff approached the High Court with an application for interim injunction against the defendant.

After considering the submission, the Bench found that the front fender of the defendant is an exact replica of the front fender of the plaintiff company, and the defendant itself states that the defendant’s fender is to be an exact replacement of the fender for the plaintiff company’s motorcycle.

The Bench observed that the purpose of enacting the Designs Act was to protect new and original designs by giving exclusive rights over such designs to their inventors, however, there are limitations to the protection afforded under the Designs Act.

“A reading of Section 5 above would show that the Designs Act does not contemplate publication and advertisement of a design before grant of registration, which is in stark contrast to the procedure for registration of trademarks provided under the Trade Marks Act, 19991. Section 7 of the Designs Act provides that the publication will occur only after the registration of the design”, added the Bench.

The High Court found from a comparison of pre-existing designs that there are substantial similarities between the design of “TVS Apache” and the design of the plaintiff company, both of which have a ‘V’ shape design with elongated sides.

Thus, the slight change in the ‘V’ shape of the various fenders would therefore amount to nothing more than a trade variation/adjustment, clarified the Court.

The High Court also admitted that the “TVS Apache” design was published as far back as in 2008, much prior to the launch of the plaintiff company’s motorcycle, and the “HERO CBZ EXTREME” model of the plaintiff company has a fender with a ‘V’ shape and elongated sides and it has been selling from a date prior to the model “HERO HF DELUXE”, which has the suit fender.

“Even the design of the suit fender for the “HERO HF DELUXE” motorcycle has been advertised by the plaintiff company in 2013 and 2014, prior to the date of registration of the design in 2015”, added the Court.

The Bench elucidated that plea of design freedom cannot be used to get over the existing prior publication of the design.

Accordingly, observing that the plaintiff company’s front fender design is incapable of registration under Section 2(a) of the Designs Act, the Bench dismissed the application for grant of interim injunction.

Cause Title: Hero Moto Corp Limited v. Shree Amba Industries [Neutral Citation: 2023: DHC: 5757]

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Delhi High CourtJustice Amit BansalDesigns Act

Pankaj Bajpai