Delhi HC: Prior Publication Fatal To Design Infringement Claim

The Delhi High Court has held that a design registered after its commercial publication is vulnerable to cancellation, thereby disentitling the proprietor from seeking infringement reliefs, though the common law remedy of passing off remains available for trial. Justice Tushar Rao Gedela, presiding over the matter, clarified that while statutory protection for designs is strictly contingent on the 'new or original' mandate, the right to sue for passing off resides in an independent common law space.

Invalidity of Registered Design due to Prior Publication

The Court scrutinized the validity of the plaintiff's registered design under the Designs Act, 2000. It was observed that the plaintiff had sold goods under the mark 'ZEPHYR' and advertised them on its website months before the date of the registration application. The bench noted that such prior disclosure constitutes a valid ground for cancellation under Section 19(1)(b) of the Designs Act, 2000.

The Court, in its reasoning, observed: "Clause (b) of Section 19 clearly provides that cancellation of registration is permissible in case the said design has been published in India or in any other country prior to the date of registration... Having regard to the fact that plaintiff is unable to deny prior publication in terms of (i) the invoices pre-dating the date of application... and; (ii) display/publication of the goods/cooler manufactured on the basis of the suit design on 24.03.2019 in its website... it is well nigh impossible for this Court to conclude that the plaintiff has any real prospect of succeeding on the claim of infringement of the suit design."

Passing Off Remains a Triable Issue

Despite dismissing the infringement claim, the Court refused to dismiss the suit in its entirety. It emphasized that passing off is a distinct common law remedy that depends on establishing goodwill and reputation through evidence, rather than mere registration. The Court relied on Carlsberg Breweries A/S vs. Som Distilleries and Breweries Ltd. ( "(2019) 256 DLT 1 (FB)": 2018 CaseBase(DEL) 1815) and Crocs Inc. USA vs. BATA India and Ors. to reiterate that a composite suit for infringement and passing off is maintainable, and the failure of one does not automatically result in the dismissal of the other.

Court's Rationale on Summary Judgment

The Court held that dismissal of a passing off claim under Order XIII-A of the Code of Civil Procedure, 1908 at a preliminary stage is improper when the pleadings contain sufficient material facts. The Court noted that the plaintiff had asserted rights over 'features of shape and configurations' and alleged 'fraudulent imitation' by the defendants, which are matters to be proved during trial.

The Court has the following directions:

"31. In view of the above, this Court is of the considered opinion that the suit of the plaintiff qua the infringement has no real prospect of succeeding and therefore, the suit, to that extent, is dismissed. 32. However, so far as the contention regarding dismissal of the suit even on the basis of claim of passing off has no real prospect of succeeding is concerned, this Court is unable to accede to such contentions... 44. Resultantly, the application insofar as the claim of the plaintiff in the suit qua the infringement of the suit design is allowed, while the objection in respect of the claim for passing off, is rejected. 45. The application is allowed in part and disposed of accordingly."

Background:

The plaintiff, Novamax Industries LLP, filed a suit alleging that Prem Appliances (Defendant No. 1) was infringing its registered cooler design (No. 322384-002) and passing off its goods as those of the plaintiff. An ex-parte injunction was initially granted but later vacated when the defendant produced evidence showing the plaintiff had sold the same coolers prior to the registration date of October 9, 2019.

Defendant No. 1 then moved an application for summary judgment under Order XIII-A of the Code of Civil Procedure, 1908, arguing that the registration was invalid due to prior publication under Section 19 of the Designs Act, 2000 and that the passing off claim lacked essential averments. The plaintiff contended that despite the registration issues, they were entitled to prove passing off through evidence of sales and market reputation. The Court partially allowed the defendant's application, striking out the infringement claim while keeping the passing off action alive for trial.

Case Details:
Case No.: CS(COMM) 177/2021
Case Title: NOVAMAX INDUSTRIES LLP v. PREM APPLIANCES & ANR.
Appearances:
For the Petitioner(s): Mr. Umesh Mishra, Mr. Satish Kumar, Ms. Yashodhara Raina and Mr. Aakash Bhambri, Advocates.
For the Respondent(s): Mr. Arnav Goyal, Advocate for D-1.

Source: 2026 CaseBase(DEL) 440