Publication

Registered design protection has emerged as an increasingly important intellectual property right in India, particularly for industries where product appearance significantly influences consumer choice. A valid design registration grants the proprietor a statutory monopoly over the visual features of an article and enables enforcement against competitors who adopt the same or an obvious imitation of the registered design. In recent years, the Delhi High Court has granted interim relief in appropriate design infringement cases. At the same time, the courts have equally shown that such protection will not survive where the design registration itself is vulnerable to challenge. The decision of the Delhi High Court in Novamax Industries LLP v. Prem Appliances & Anr. illustrates the importance of maintaining novelty prior to filing and clarifies the relationship between design infringement and passing off claims.

Facts of the Case

Novamax Industries LLP instituted a suit against Prem Appliances and another defendant alleging infringement and passing off in relation to its registered design bearing No. 322384-002 for air coolers. The plaintiff claimed to be the registered proprietor of several registered designs in Class 23-04 relating to coolers and alleged that the defendants were manufacturing, marketing and selling coolers bearing an identical design. The plaintiff further alleged that the defendants were marketing the products under the mark “AROKING” together with the sub-mark “NOVA”, which according to the plaintiff was the prominent part of its trade name and trademark.

The plaintiff had earlier obtained an ex-parte interim injunction on 16 April 2021 restraining the defendants from using the impugned design. However, the injunction was subsequently vacated by the Court through an order dated 16 January 2023.

Thereafter, Defendant No. 1 filed an application seeking summary dismissal of the suit on the ground that the plaintiff had no real prospect of success.

Core Issue Before the Court

The principal issue before the Court was whether the plaintiff could maintain an action for infringement of the registered design when the design had already been commercially exploited and publicly disclosed by the plaintiff itself before the filing of the design application.

The defendant relied on invoices produced by the plaintiff itself showing sales of coolers marketed under the name “ZEPHYR” before the filing date of the design application. The invoices demonstrated that coolers embodying the impugned design had been sold during 2019, well before the design application was filed on 19 October 2019.

The defendant also relied upon materials from the plaintiff’s own website showing that coolers embodying the suit design had been displayed and offered for sale on 24 March 2019, prior to the filing of the design application. The Court treated the website publication as evidence in the judgment.

The Court’s Analysis on Prior Publication

The Court noted that the plaintiff was unable to explain how the design could remain registrable when products embodying the same design had already been sold and publicly advertised before the filing date. The Court observed that both the invoices and the website publication were admissions originating from the plaintiff itself and clearly established prior publication of the design.

The Court referred to Section 19(1)(b) of the Designs Act, 2000, which permits cancellation of a registered design where the design has been published in India or elsewhere prior to the date of registration. Based on the invoices and website disclosures, the Court concluded that a credible challenge to the validity of the registration had been established and that the defence available under Section 22(3) of the Designs Act had substantial merit.

The Court found that the plaintiff’s own website had publicly displayed the cooler embodying the suit design before the filing date. The relevant screenshots reproduced in the judgment were relied upon as evidence of prior publication.

Court’s Decision on Design Infringement

In view of the admitted prior publication, the Court held that the plaintiff had no real prospect of succeeding in its claim for infringement of the registered design. The Court therefore allowed the summary judgment application to that extent and dismissed the suit insofar as it related to design infringement.

The Court specifically held that where a design has already been published and commercialised before filing, it becomes difficult to sustain the validity of the registration and consequently the infringement claim founded upon such registration.

Passing Off Claim: A Different Outcome

The Court, however, reached a different conclusion in relation to the passing off claim. The defendant had argued that the plaint lacked the necessary pleadings to sustain an action for passing off. After examining the plaint, the Court held that the plaintiff had pleaded facts relating to imitation, confusion, deception, use of similar shape and configuration, diversion of trade, and attempts by the defendants to pass off their goods as those of the plaintiff.

The Court observed that passing off is an evidence-driven claim requiring proof of goodwill, misrepresentation, and likelihood of confusion. It further noted that the defendant’s written statement did not adequately deny several passing off allegations pleaded by the plaintiff.

Relying extensively upon the Full Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. and the Division Bench decision in Crocs Inc. USA v. Bata India, the Court reiterated that a composite suit for design infringement and passing off is maintainable. More importantly, the Court reaffirmed that a passing off claim can survive even if the design infringement claim itself fails.

Accordingly, while dismissing the infringement component of the suit, the Court refused to summarily dismiss the passing off action and allowed the plaintiff to proceed to trial on that issue.

Significance of the Decision

The judgment serves as an important reminder that novelty is the foundation of design protection. A proprietor who sells, advertises, or publicly discloses a product embodying a design before filing the design application risks rendering the design vulnerable to cancellation on grounds of prior publication. The case also reinforces the principle that invalidity of a design registration does not automatically extinguish a passing off claim. Even where design rights fail, a claimant may still pursue common law remedies by proving goodwill, misrepresentation and resulting damage.

The decision therefore has dual significance, Firstly, it highlights the strict approach adopted towards prior publication in design law, while secondly, simultaneously reaffirming the independent and continuing nature of passing off actions in cases involving product shape, configuration and trade reputation.