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01 March 2019

Design infringement – Prior publication and mere trade variation, fatal

The Division Bench of the Delhi High Court has upheld the interim decision of the single Judge in a case where defendant had alleged prior publication of the plaintiff’s design based on web-shots from Wayback machine, containing internet archive of the web pages.

The High Court in this regard observed that the plea that these were machine archived web pages and there was no guarantee to correctness of the contents, is to be looked at the time of trial.

The court in the case of Crocs Inc. USA v. Bata India Ltd. was of the view that at the stage of considering the prima facie merits of any given case, the court cannot carry out a mini-trial. The Court, while holding so, also noted that petitioner’s registration was cancelled in the European Union on considering previous publication.

On the issue of novelty, i.e. the distinctiveness of the plaintiff’s design, the court observed that footwear generally and sandals in particular have a design constraint, and that footwear manufacturers have little ‘play’ in creating new designs.

Further, observing that mere trade variation of an existing design does not entitle the originator of the design to protection through registration, it stated that the designs, over which petitioner claimed novelty and originality, were repetitions of age-old designs, with some variations – in strap, etc.