The Plaintiff namely Vikas Jain filed Suit seeking the
relief of inter-alia permanent injunction on the basis of their registered
Design under No.194631 dated 23.02.2004.
The Plaintiff obtained the said Design in relation to toy called as BOOM SCOOTY.
Grievance of the Plaintiff was that the Defendants were also manufacturing the
Scooty which was, according to the Plaintiff amounts to infringement of its
registered Design under No.194631 dated 23.02.2004.
Accordingly, the Plaintiff filed Suit against the Defendants before the Hon'ble
High Court of Delhi against the Defendants. Vide order dated 11.08.2005 , the
Hon'ble High Court of Delhi was pleased to grant ex-party injunction against the
Subsequently , the Defendants appeared and filed the written statement
challenging the validity of the impugned registered design inter alia on the
ground of prior publication.
However vide detailed order dated 04.07.2007 passed in the said Suit, ex-parte
injunction order passed in the suit was confirmed and the Defendants were
restrained from manufacturing the subject matter toy Scooty.
Subsequently issues were framed in the suit vide order dated 08.04.2008. The
Plaintiff and the Defendants both lead their evidence and for speedy trial even
Local Commissioner was appointed. After completion of the evidence, the Suit was
directed to be listed in the category of final hearing vide order dated
Relevant Provision of Design Act 2000 : For the purpose of better understanding
of this case, it is important to go through the relevant case laws governing the
tenure of existence of a Registered Design.
It is submitted that the Design Act 2000, provides 10 years time for subsistence
of the registered Design which may be further extended upon 5 more years.
Section 11 of the Design Act 2000, provide for the same. Section 11 of the
Design Act 2000 is reproduced as under:
11. Copyright on registration:
- When a design is registered, the registered proprietor of the design
shall, subject to the provisions of this Act, have copyright in the design
during ten years from the date of registration.
- If, before the expiration of the said ten years, application for the
extension of the period of copyright is made to the Controller in the
prescribed manner, the Controller shall, on payment of the prescribed
fee, extend the period of copyright for a second period of five years from
the expiration of the original period of ten years.
In view of the above, it is clear that in the maximum period of validity of
registered Design of the Plaintiff could have been 23.02.2019.
The Finding of Court: The Hon'ble Court observed that the as the Registered
Design of the Plaintiff has itself lapsed during the pendency of the suit
proceeding, the registered design of the Plaintiff has fallen in public domain.
Accordingly, the Hon'ble Court observed that the suit itself have become
infructuous. In view of the above, the injunction order which was continue to
operate from 2005 to 24.05.2022, when the subject matter order was passed , was
ordered not to be continued further. The Suit was disposed off being infructuos.
Design is the creation of statute. The right to sue on the basis of registered
design emanates from the provisions of Design Act 2000 only.
The moment validity of registered Design expires (which is after 15 years of its
registration), the right to sue on the basis of registered design also expires.
In case a registered design expires during the pendency of a suit proceeding,
the suit for infringement design becomes infructuous.
After expiry of validity of a registered design , no one can claim exclusivity
over the same as statutory protection granted under the Design Act 2000 no
Hence any body in public is entitled to use the registered Design after its
The Judgement Discussed:
Date of Judgement:25.05.2022 [CS(Comm) 384/2018]
Case Title: Vikas Jain Vs Aftab Ahmed and Ors
Court: Hon'ble High Court of Delhi[Ms. Justice Prathiba M Singh]
Issues Discussed: What is the effect of Suit for Infringement of Registered
Design, when Registered Design Expires during pendency of a Suit proceeding.
Written By: Ajay Amitabh Suman,
IPR Advocate, Hon'ble High Court of Delhi
Email: [email protected]
, Ph no: 9990389529