IP Case Law › Designs › Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir & Ors.
Relevant Acts and provisions
Designs Act, 2000
Provisions considered: Sections 4 and 19 of the Designs Act, 2000, on novelty and originality of a registered design.
Brief facts
Steelbird, a helmet manufacturer holding a registered design for a helmet with a distinctive beak-shaped visor projection, obtained an ex parte interim injunction restraining the defendants from manufacturing or selling helmets with a similar beak-shaped feature. The defendants applied for vacation of the injunction, contending that the beak-shaped design was already common to the helmet trade and had been used or conceived by other manufacturers before Steelbird's registration, so that the design lacked the novelty and originality required for valid registration.
Issues before the Court
- Is a registered design entitled to interim protection where its novelty is seriously disputed?
- Can a design feature already common to the trade before registration support a valid design monopoly?
Court's findings
The Court held that a registered design is entitled to interim protection only if it is prima facie shown to be new or original, and that material indicating competing manufacturers were using or had conceived a similar visor feature before the plaintiff's registration cast serious doubt on the design's novelty.
The Court observed that a design feature common to the trade, or already applied by other manufacturers before the registration date, cannot found a valid monopoly under the Designs Act, 2000, since novelty requires that the design not have been previously published, used or registered.
Finding that the balance of convenience and prima facie case were no longer in the plaintiff's favour in light of this material, the Court vacated the interim injunction, leaving the question of validity to be finally determined at trial.
Decision
The ex parte interim injunction restraining the defendants from selling similar helmets was vacated.
Key legal principle / ratio
An ex parte interim injunction restraining an alleged infringer of a registered design must be vacated where the defendant demonstrates a credible prima facie case that the design feature relied upon was already common to the trade or had been conceived and used by other manufacturers before the plaintiff's registration, since such material undermines the requirement that a registered design be new or original.
Keywords
Cancellation Design Infringement Design Registration Novelty Prior Publication
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