Design Infringement And Prior Publication

Brief Introductory Head Note: Aqualite Industries Private Limited Vs Relaxo Footwears Limited – Design Infringement Case

The case Aqualite Industries Private Limited v. Relaxo Footwears Limited, FAO(OS)(IPD) 1/2022, decided on 18 November 2025 by the High Court of Delhi, involved an important dispute under the Designs Act, 2000. The court examined whether Aqualite’s sale of Hawai slippers amounted to infringement of Relaxo’s registered product designs. The decision clarified how novelty, prior publication and prior art should be assessed at the interlocutory stage while determining design piracy. The ruling is significant for commercial design protection in India because it demonstrates how courts balance interim injunction principles with the statutory protection offered to registered design holders.

Factual Background

Relaxo Footwears Limited manufactures popular Hawai slippers, including models BHG 136 and BHG 137. These models incorporate distinctive vertical side ridges along the body of the slippers. Relaxo secured design registrations for both models under the Designs Act, vide Registration Nos. 325071 and 325074, dated 27 December 2019. The certificate of registration explicitly recognised novelty in the shape, configuration and surface pattern of the footwear, and in particular the side ridges.

In February 2021, Relaxo discovered that Aqualite Industries Private Limited had launched slippers that were visually similar and carried the same characteristic side ridges. Relaxo alleged that Aqualite had replicated the registered designs and sold replicas of BHG 136 and BHG 137 in the market. The alleged replication was supported with picture-to-picture comparison between Relaxo’s slippers and Aqualite’s products, showing substantial similarity in the placement and configuration of ridges.

Procedural Detail

Relaxo filed a commercial suit before the Intellectual Property Division of the Delhi High Court for permanent injunction against Aqualite on the basis of design infringement. Along with the suit, an application for interim injunction under Order XXXIX Rules 1 and 2 CPC was filed. On 8 October 2021, the learned Single Judge granted an interim injunction restraining Aqualite from manufacturing or selling footwear infringing Relaxo’s designs.

Aqualite challenged the injunction through an appeal before the Division Bench. Interestingly, before the Single Judge, summons in the suit had been issued only on the date when orders were reserved in the injunction application. Therefore, Aqualite had no opportunity to file a written statement, although it did file a reply to the injunction application and placed several documents on record, including photographs of footwear alleged to constitute prior art.

Core Dispute

The core legal controversy revolved around two issues:

• Whether Aqualite had infringed Relaxo’s registered designs by using identical side ridges on slippers.
• Whether Aqualite could avoid injunction by arguing that the registered designs lacked novelty and were liable to be cancelled under Section 22(3) of the Designs Act.

Relaxo’s case relied on Section 22(1) of the Designs Act which protects a registered design from piracy during the term of copyright in the design. Relaxo submitted that replication of the registered side ridges amounted to piracy.

Aqualite did not deny the similarity between the products, but defended itself under Section 22(3), claiming that the registered designs lacked novelty because prior art already contained similar ridge-patterned slippers. Aqualite also contended that the designs were not visually appealing and were liable to cancellation under Section 19(1)(b) and (c).

Detailed Reasoning

The Court examined the design registrations and product comparisons and found that the side ridges formed the central novel feature highlighted in the certificates. The Court reiterated that the comparison must occur between the registered designs and the defendant’s articles, rather than between the finished products sold in the market, as held consistently under the Designs Act.

The Court noted that Aqualite admitted the existence of identical side ridges in its slippers. Multiple pictures in the record showed that the ridges were replicated either for the full length or in the frontal arch area exactly as in Relaxo’s registered models. The Court concluded that design piracy under Section 22(1) had clearly occurred.

With respect to Aqualite’s defence under Section 22(3), the Court explained that although the Designs Act permits raising grounds of cancellation as a defence, such defences must be supported by adequate pleadings and evidence. Aqualite had indeed filed images of alleged prior art, but there were no pleadings supporting those images, nor was there proof regarding their dates of publication or market availability. The Division Bench observed that two alleged prior arts lacked any evidence regarding date of publication, which made them unreliable for establishing lack of novelty. Reliance was placed on Reckitt Benckiser v. Wyeth Ltd and Bharat Glass Tube Ltd v. Gopal Glass Works Ltd to explain the legal threshold of “prior publication” that is required to defeat novelty.

Since the defendant had not filed a written statement or comprehensive pleadings, the Court found that the prior-art argument rested on weak foundations at the interlocutory stage. Consequently, the defence did not neutralise Relaxo’s statutory rights arising from the registered designs. The Court also clarified that colour similarity of slippers had no effect on piracy because the design certificates protected only the shape, configuration and surface pattern, not colour combinations. The Court emphasised that when piracy is prima facie established, interim injunction becomes necessary because the very purpose of design registration would become futile if replicas are permitted to circulate in the market while litigation continues.

Decision

The High Court dismissed the appeal, upheld the order of the learned Single Judge and restored the injunction. Aqualite was restrained from manufacturing, selling or dealing in slippers that infringed Relaxo’s registered designs 325071 and 325074. The ruling reinforced that design owners must be protected from replicas during litigation where replication is admitted, especially when defences suggesting invalidity are unsubstantiated at the interim stage.

Concluding Note

This decision reiterates that design registration offers statutory protection which must be given practical effect through injunctions when piracy is prima facie established. Defendants cannot rely on speculative or weak allegations of prior art to escape liability at the interlocutory phase. The ruling emphasises that replication of visually distinctive structural elements of a registered design is sufficient to secure injunction, and courts will focus on comparing the registered design itself with the impugned article. The case strengthens design jurisprudence in India by reinforcing that novelty must be challenged through cogent evidence and that mere allegations of similarity with older products do not dilute the enforceability of a valid registered design.

Case Details

Disclaimer

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By

Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi