In the matter of Vega Auto Accessories (P) Ltd. v S.K. Jain Bros. Helmet (I) Pvt. Ltd. [CS(COMM) 837/2017], the Plaintiff filed a suit before the High Court of Delhi alleging piracy-infringement of registered design of its Vega brand auto helmet.
The Defendant took the defenses that it’s own design is also registered, that the Plaintiff’s design is invalid for lacking novelty (in light of pre-published designs), and also that the Defendant’s design is dissimilar.
Taking as settled now that even a registered design is subject to an infringement claim by an earlier design, the Court confirmed its ad-interim injunction. It did so by treating the Defendant as estopped at this stage from challenging the validity of Plaintiff’s design registration for lack of novelty on account of it itself also having subsequently applied for and obtained design registration for its near similar design:
“…defendant having itself obtained registration of the impugned design; if the impugned design is found to infringe the design of the plaintiff…, is estopped from taking the plea of invalidity of registration in favour of plaintiff.”
Prima -facie similarity has been found by applying the side-by-side comparison test thus: “…sameness of the features does not necessarily mean that the two designs must be identical in all points and should differ on none – they have to be substantially the same.”