More Than A Slipper: Design Protection Under The Design Act

 Introduction

At first glance, a pair of hawaii slippers, the humble rubber flip-flop ubiquitous across Indian  households, seems an unlikely protagonist in a high-stakes intellectual property dispute. Yet it is  precisely in such ordinary, everyday objects that design law faces its most interesting test: can  novelty truly reside in something as commonplace as a slipper? And if it can, how does the law  protect it without strangling competition? The Delhi High Court’s Division Bench decision in  Aqualite Industries Pvt. Ltd. v. Relaxo Footwears Ltd.¹grapples with these questions head-on,  delivering a judgment that is both doctrinally precise and practically significant. Touching upon  the scope of design protection, the mechanics of the “instructed eye” test and the evidentiary  threshold for a prior art defence, this decision is essential reading for anyone navigating design  law in India.

Brief Facts

Relaxo Footwears Ltd. manufactures Hawaiian slippers, including models BHG 136 and BHG 137, whose designs were registered under the Designs Act, 2000². The registration certificates certified  novelty as residing in the shape, configuration and surface pattern of the footwear, specifically,  distinctive vertical ridges running along the side surfaces of the slippers, referred to throughout  the judgment as “side ridges”. In Design Registration 325071, the ridges covered the entire side  surface, while in Design Registration 325074, they appeared only along the front or upper portion  of the side.

In early 2021, Relaxo discovered that Aqualite Industries Pvt. Ltd. was manufacturing and selling  hawaii slippers that closely replicated these registered designs. Relaxo filed a civil suit before the  Intellectual Property Division of the Delhi High Court, alleging design piracy under Section 22(1)  of the Designs Act and simultaneously sought an interim injunction restraining Aqualite from  manufacturing or dealing in such footwear.

The Single Judge granted the interim injunction, finding a clear visual similarity between the  products and rejecting Aqualite’s prior art defence. Aqualite appealed to the Division Bench,  constituting the present proceedings before Justices C. Hari Shankar and Om Prakash Shukla.

Comparison of Relaxo’s product (left) and Aqualite’s product (right) as reproduced in the judgment

Legal Issues

The Division Bench was called upon to examine the following principal questions:

1. What constitutes the protectable “design” under the Designs Act and did Aqualite’s footwear amount to piracy under Section 22(1)?
2. Could Aqualite successfully invoke the Section 22(3) defence i.e., that the suit designs were liable to cancellation due to prior publication or lack of novelty under Section 19(1)(b) and  (c)?
3. Was the interim injunction granted by the Single Judge legally sustainable?

The Court’s Analysis and Ratio

Scope of Design Protection

The Court began by carefully delineating what a “design” encompasses under the Designs Act. It  emphasised that design protection attaches not to the article itself, but only to those specific  features viz. shape, configuration, surface pattern, ornamentation or composition of lines or  colours, in which novelty is certified. This is a crucial distinction: the registered design is not a monopoly over the hawaii slipper as a product, but only over the novel features identified in the  registration certificate.

Accordingly, since the registration certificates in question certified novelty only in shape,  configuration and surface pattern and not in colour, the Court held that Relaxo could not claim  design piracy based on colour similarities alone. The relevant enquiry was limited exclusively to  whether the side ridges had been replicated.

Design Piracy: Section 22(1)

On the question of infringement, the Court found the facts remarkably straightforward. Aqualite’s  own senior counsel did not contest that the impugned footwear bore identical side ridges. Both  parties had, in fact, conceded before the Single Judge that the dispute centred on the “teeth-like  design” on the sides of the slippers. The Division Bench held that this admission, made at the trial  stage, could not be resiled from on appeal.

Given that the side ridges fell squarely within the “shape, configuration and surface pattern” of the  registered design and given Aqualite’s implicit admission of replication, the Court held that design  piracy under Section 22(1)(a) was indisputably established.

The Prior Art Defence: Section 22(3)

The more contentious portion of the case concerned Aqualite’s defence that the suit designs had  been published prior to registration and lacked novelty, grounds that, under Section 22(3), would  justify cancellation under Section 19(1)(b) and (c) and negate the injunction. Aqualite relied on  seven prior art designs, labelled Prior Arts 1 to 7.

The Court upheld the Single Judge’s finding that two of the prior arts were inadmissible, as there  was no evidence of when those products entered the market. Other prior arts had been filed with  Aqualite’s reply and were properly on record. The remaining prior arts, though filed without  supportive pleadings, were nonetheless permitted to be considered given the procedural peculiarity  that Aqualite had never been served with summons in the main suit and therefore could not have  filed a formal written statement before the impugned order was passed.

The “Instructed Eye” Test

 To assess novelty vis-à-vis prior art, the Court applied the “instructed eye” test, drawing from  established precedent.³ Unlike trademark law, which uses the “average consumer of imperfect  recollection” standard or patent law, which invokes the “person skilled in the art”, design law asks  “how a person aware of existing prior art would perceive the design”. This person is capable of  detecting differences between the asserted design and prior art and of distinguishing genuine  novelty from mere trade variants.

The Court further drew upon the guidance of the Supreme Court in Bharat Glass Tube Ltd. v.  Gopal Glass Works Ltd.,⁴ which held that before pronouncing on a design infringement action or  examining validity vis-à-vis prior art, courts should, if possible, examine the actual articles to  which the designs are applied. Consistent with this, the Division Bench physically examined  samples of Prior Arts 1 and 2 and closely reviewed photographs of the remaining prior arts.

Having done so, the Court found that the ridges in the prior art footwear had a “saw-like” structure,  distinctly different from the rectangular, “crenellation-shaped” ridges present in Relax’s suit  designs. The difference, the Court held, was clear and stark to an instructed eye. It further noted  that Prior Arts 5 to 7 were not even hawaii slippers and that a cumulative comparison of shape,  configuration and surface pattern with the suit designs revealed no meaningful similarity  whatsoever.

The principles from B. Chawla & Sons v. Bright Auto Industries⁵ were also applied, which had  established that trivial changes do not render a design new or original, that ordinary trade variants  cannot confer novelty and that courts must strike a balance between protecting genuine novelty  and preserving the freedom of the trade to use common design knowledge.

Comparison of side ridges on the suit design (left) and Prior Art 5 (right) as reproduced in the judgment

Novelty in Footwear

The Court acknowledged the inherent difficulty of claiming novelty in footwear, referencing the  observation of S. Ravindra Bhat, J. in Crocs Inc. v. Bata India Ltd.⁶that footwear manufacturers  have limited creative “play” due to the functional constraint of accommodating the human foot.  Nevertheless, the Court reaffirmed that footwear remains registrable under the Designs Act (now  classified under Class 2 of the Locarno Classification) and that side ridges, being external to the  basic functional shape of a hawaii slipper, were capable of imparting genuine novelty. Unlike purely  functional elements, such ridges represent an aesthetic addition that appeals to the eye within the  meaning of the Act.

Aesthetic Appeal, Not a Pre-Condition

The Court also rejected Aqualite’s written submission that the designs were invalid for lack of  aesthetic appeal. It held, persuasively, that aesthetic appeal is an entirely subjective notion and that  the law does not require a design to be beautiful. All that is needed is a distinct visual appeal, which may be positive or negative. So long as the design features are not purely utilitarian or  functional, registration is permissible.

Decision

The Division Bench dismissed the appeal, affirming the interim injunction granted by the Single  Judge. It held that Aqualite’s footwear was identical in shape and configuration to the suit designs and that the suit designs were not prima facie liable to cancellation under Section 19 of the Designs  Act. The balance of convenience and irreparable injury both favoured Relaxo. 

Analysis

This judgment makes several noteworthy contributions to design law jurisprudence. Most  significantly, it reaffirms with precision that a registered design confers a monopoly not over the  article itself, but only over those specific features in which novelty is certified. This prevents  design registrations from being weaponised to stifle all competition in an article class, a concern  especially pressing in industries like footwear, where structural similarity between products is  almost structurally inevitable given the constraints of the human foot.

The Court’s procedural generosity in admitting the later-filed prior arts, despite the absence of  formal pleadings, also deserves appreciation. Given that Aqualite was never served summons  before the impugned order was passed, penalising it for procedural non-compliance would have been plainly inequitable. The Court’s approach here reflects a commendable sensitivity to the  realities of litigation procedure.

Most impressive, however, is the rigour of the instructed eye analysis. By physically examining  product samples and conducting a granular visual comparison, the Court drew a meaningful  distinction between the saw-like ridges in the prior art and the crenellation-shaped ridges of the  suit designs, a distinction a less careful court might have dismissed as inconsequential.

The one area of concern is the Single Judge’s failure to provide cogent reasoning on novelty,  effectively leaving that entire analytical exercise to the appellate court. Greater judicial articulation  at the trial stage remains essential, both for the integrity of the process and to reduce the burden on appellate courts to conduct what is, in effect, a fresh examination from scratch.

Footnotes

1. Aqualite Indus. Pvt. Ltd. v. Relaxo Footwears Ltd., 2025:DHC:10128-DB (Delhi H.C. Nov. 18, 2025) (India).

2. Designs Act, No. 16 of 2000 (India).

3. B. Chawla & Sons v. Bright Auto Indus., AIR 1981 Del 95 (India); T.T.K. Prestige Ltd. v. K.C.M. Appliances Pvt. Ltd., 2023:DHC:002494 (Delhi H.C. 2023) (India).

4. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 37 PTC 1 (S.C.) (India).

5. B. Chawla & Sons v. Bright Auto Indus., AIR 1981 Del 95 (India).

6. Crocs Inc. v. Bata India Ltd., (2019) 78 PTC 1 (Delhi H.C.) (India).

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