Panasonic restrained from copying registered design of Havells’ Ceiling Fan
Havells India Limited (Havells) has approached the Delhi High Court alleging registered design infringement and passing off of their ceiling fan design and trade dress by Panasonic Life Solution India Pvt Ltd (Panasonic). Havells seeks to restrain Panasonic from using the designs and trade dress/get up for their Venice Prime ceiling fans which allegedly are identical/deceptively similar to Havell’s ENTICER series ceiling fans including ENTICER ART series variants. The designs of both parties are depicted below:
Havells, in support of their case, contended:
- Incorporated in 1983, they are a leading fast-moving electrical goods company with extensive production and distribution networks across India and internationally. They enjoy market dominance across a wide spectrum of products, including cables and wires, motors, fans, home appliances, electric water heaters, etc.
- They conceptualised the ENTICER ceiling fan in early 2014-15, which gained popularity amongst the trade and public on account of its superior quality and premium aesthetic features. They later introduced novel and unique ceiling fans by placing artistic work in the floral motif patterns and unique color schemes on the trims naming it ‘ENTICER ART Series.’ The designs are registered under numbers 280666′ since 2016 and ‘328605’ since 2020, respectively.
- In March 2022, Havells learned that Panasonic was launching its new fan series, namely VENICE PRIME, which was a blatant imitation of their ENTICER/ENTICER ART series, amounting to design infringement.
- Havells alleged that Panasonic had copied the design, get-up, layout, trade-dress, colour scheme, pattern, etc,. of their ceiling fan, which amounts to passing off.
- Panasonic’s contention that Havells’ design lacks novelty will not succeed as they have applied for registration of an identical design.
Panasonic countered the allegations relying on the following:
- Havells design is only a trade variant of prior designs and is liable to be cancelled. Havells registered design of the year 2020 is not similar to Panasonic’s VENICE PRIME. There are dissimilarities in packaging and overall trade dress of the products, and no case of passing off is made out.
- Havells has claimed trademark rights in a design, which is against the provision of the Designs Act. Therefore, the design is vulnerable to cancellation.
- A composite suit for infringement of registered designs and violation of trademark rights is not maintainable.
- The preliminary issue that requires consideration is the objection raised by Panasonic that Havells has alleged infringement of the designs under the Designs Act and asserted trademark rights in the registered designs. Further, Havells has invoked the common law remedy of passing off, which are self-destructive pleas making the designs vulnerable.
- Considering the legal position based on case laws and holistic reading of the same leads to a legal formulation that a registered design per se, if used as a trademark is liable for cancellation. However, when the elements of the design are not used as a trademark but a larger trade dress, get-up, etc., action for passing off would lie.
- In the instant case, Havells, apart from pleading the use of registered design as a trademark for ENTICER/ENTICER ART series, also alleges Panasonic is blatantly copying the essential and ingenious features of the designs in its ENTICER/ENTICER ART Series fans. Further, adopting the entire get-up, layout, colour scheme, motif patterns, shape, etc., amounts to passing off its products.
- With regard to the question of passing off, Havells has not been able to demonstrate that there is a claim in the larger trade dress etc., outside the registered design. The features relating to seamless and continuous body ring, shape, trade dress etc., do not fall outside the registered design since the registration is in the ‘shape and configuration’ in relation to its design of the year 2016. That said, on a comparison of the rival products and essential features, there is a similarity in the substantial features of the two designs, and thus, a case of infringement is made out in relation to the design of the year 2016.
- The contention regarding Havells’ design lacking novelty will not succeed. Panasonic is estopped from taking any objection to the novelty of Design of 2016 since it has applied for registration of the VENICE PRIME series in August 2021, and significantly with novelty claim in shape, configuration, and surface pattern.
- The unique features of Havells’ Design of 2016 include a) minimalistic rectangular ornamentation with metallic border on the blade, b) clean sloping edge, and the concave curve of rectangular ornamentation on the blade towards the motor, e) and seamless attachment of the motor with the blades. The Design of 2016 is new and original, and there are no prior publications with similar shapes and configurations.
- A review of the above images will show that the two competing designs are similar or strikingly similar to the eye. As the essential features of the designs ought to be considered, therefore, Havells has made out a prima facie case of infringement of Design 2016, against Panasonic.
- On comparing the above images, the court concluded that Havells has made out a case of infringement and passing off with respect to Design of 2020. It is prima facie evident from a mere visual comparison that every attempt has been made by Panasonic to come as close as possible to Havells’ fans.
- The court rejected the argument of Panasonic that the packaging of the fans is different and contains their name ‘Anchor by Panasonic’ on the ground that it is common knowledge that ceiling fans are displayed as installed on the ceilings of the shops or showrooms and/or sometimes kept on the tables, but without boxes. The court agreed with Havells that It is only after the customer has chosen a particular fan, a fresh piece packed in a box is given to the customer on payment.
- The court while holding that Panasonic has infringed the registered Design of Havells noted ‘imitation’ does not mean ‘duplication’ in the sense that the copy complained of need not be an exact replica.
In view of the above findings the court granted an injunction in favour of Havells restraining Panasonic from manufacturing, marketing, selling fans under the VENICE PRIME series or those which are identical or deceptively similar to former’s ENTICER and ENTICER Art series during the pendency of the suit.