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Introduction
The dispute between Aqualite Industries Pvt. Ltd. and Relaxo Footwears Ltd. [2022 DHC 4461] arose from allegations of design piracy concerning hawai slippers. Relaxo, the registered proprietor of designs for models BHG 136 and BHG 137, claimed that Aqualite had manufactured and sold footwear that replicated its registered designs. The matter reached the Division Bench of the Delhi High Court in appeal against an interim injunction granted by a Single Judge restraining Aqualite from dealing in the allegedly infringing products.
Facts of the Case
Relaxo obtained design registrations on 27 December 2019 for its footwear models BHG 136 and BHG 137 under Registration Nos. 325071 and 325074. The certificates certified novelty in the shape, configuration, and surface pattern of the footwear, with the vertical side ridges being the primary novel feature. In February 2021, Relaxo discovered that Aqualite was manufacturing and selling slippers that closely resembled its registered designs.
Relaxo instituted CS (Comm) 190/2021 before the Intellectual Property Division of the Delhi High Court, alleging violation under Section 22(1) of the Designs Act, 2000. Alongside the suit, Relaxo filed IA 5717/2021seeking an interim injunction. On 8 October 2021, the Single Judge granted the injunction, finding clear similarity between the products and rejecting Aqualite’s defence of prior art. Aqualite thereafter filed an appeal before the Division Bench challenging the injunction.
Argument in Favour
Relaxo contended that the vertical side ridges constituted a novel aesthetic feature within the meaning of “design” under Section 2(d) of the Designs Act, 2000. It argued that Aqualite’s footwear identically replicated these ridges and, in some instances, even mirrored the placement of Relaxo’s “Bahamas” branding. Relaxo further submitted that Aqualite’s attempt to register similar designs after the suit commenced estopped it from contending that such designs were not registrable.
Relaxo relied on several precedents to support its case. In Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, (2008) 37 PTC 1 (SC), the Supreme Court emphasised the clarity required for prior publication. In Reckitt Benkiser India Ltd. v. Wyeth Ltd., AIR 2013 Del 101 (FB), the Full Bench of the Delhi High Court clarified the meaning of “publication in tangible form.” In Crocs Inc. v. Bata India Ltd., (2019) 78 PTC 1 (Del), (2019) 78 PTC 1, the court recognised that while footwear designs face functional constraints, distinct features can impart novelty. Relaxo also referred to Relaxo Footwears Ltd. v. Aqualite India Ltd., 2022 SCC OnLine Del 3530, to demonstrate consistency in judicial recognition of its designs.
Argument Against
Aqualite argued that the registered designs lacked novelty and were liable to cancellation under Section 19(1)(b) and (c) of the Designs Act, 2000. Section 19(1)(b) permits cancellation if a design has been published prior to registration, while Section 19(1)(c) allows cancellation if the design is not new or original. Aqualite cited seven instances of prior art, claiming that similar ridges were already present in footwear designs.
It contended that the ridges were common trade variants and not sufficiently distinctive to merit registration. Aqualite further argued that footwear designs inherently have limited scope for novelty due to functional constraints. It also submitted that Relaxo could not claim monopoly over colour combinations, as novelty was certified only in shape, configuration, and surface pattern.
Aqualite relied on the “instructed eye” test, asserting that validity and infringement should be assessed from the perspective of an eye aware of trade practices, as held in B. Chawla & Sons v. Bright Auto Industries, AIR 1981 Del 95. It also referred to Crocs Inc. v. Bata India Ltd., (2019) 78 PTC 1 (Del), (2019) 78 PTC 1, to argue the limited scope of novelty in footwear, and to Reckitt Benkiser India Ltd. v. Wyeth Ltd., AIR 2013 Del 101 (FB), to support its claim of prior publication. Finally, it invoked Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727, to argue that appellate courts should exercise restraint in interfering with discretionary orders.
Court’s Decision
The Division Bench dismissed Aqualite’s appeal and upheld the interim injunction granted by the Single Judge.
The Court clarified the scope of “design” under Section 2(d) of the Designs Act, noting that a design consists of features such as shape, configuration, pattern, ornament, or composition of lines or colours applied to an article, rather than the article itself. Since Relaxo’s certificates certified novelty only in shape, configuration, and surface pattern, colours were not part of the protected design.
Under Section 22(1), piracy occurs when a registered design or its fraudulent imitation is applied to articles without consent. The Court held that Aqualite’s replication of the side ridges constituted piracy. The ridges were distinct aesthetic features outside the normal shape of hawai slippers, and the prior arts cited by Aqualite did not negate their novelty.
Applying the “instructed eye” test from B. Chawla & Sons v. Bright Auto Industries, AIR 1981 Del 95, the Court concluded that Relaxo’s designs were substantially novel and not mere trade variants. It relied on Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657 and Reckitt Benkiser India Ltd. v. Wyeth Ltd., AIR 2013 Del 101 (FB) to emphasise that prior publication must be clear and tangible. The prior arts cited by Aqualite failed to meet this threshold.
The Court also referred to Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 and Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701, to reiterate that appellate courts should not interfere with discretionary interlocutory orders unless they are arbitrary or perverse.
Accordingly, the Division Bench held that Aqualite’s footwear was identical in shape and configuration to Relaxo’s registered designs. The designs were not prima facie liable for cancellation under Section 19. The interim injunction was therefore appropriate, and the appeal was dismissed with no order as to costs.
Conclusion
The judgment of the Delhi High Court states the protection of registered designs under the Designs Act, 2000. It affirms that novelty may reside in specific aesthetic features, even in articles such as footwear were functional constraints limit scope for innovation. The Court stated that replication of certified novel features constitutes piracy under Section 22(1), and that prior publication must be clear, tangible, and anterior in time to invalidate a design under Section 19.
By applying the “instructed eye” test, the Court stated that novelty is assessed from the perspective of trade knowledge rather than casual observation. The decision also underscores the principle of appellate restraint in interlocutory matters.
