Novamax Industries  LLP  V  Prem Appliances  & ANR.

Introduction:- 

On 16^th January,2023 , the Hon’ble High Court Of Delhi annulled the injunction granted in the favour of the Plaintiff, when the defendant brought forward that the suit design was published before its application date . In Novamax Industries LLP V. Prem Appliances & ANR. , Novamax Industries LLP, who is the registered owner of the design of the air coolers out of which one design had been infringed by the defendant, Prem Appliances & ANR as claimed by the plaintiff. 

Facts of the case :-

1. In this case , the plaintiff is the registered owner of the design no. 322384-001, 322384-002, 323421-001,330044-044,330044-002 and 361964-001. Under these designs , the plaintiff manufactures and sells air coolers.
2. The suit is related to the design no. 322384-002, which was being permitted to the plaintiff on 9^th October, 2019
3. The plaintiff’s case was that the ‘NOVA’ range of coolers manufactured and sold by the defendant infringes the suit design because on these the plaintiff had a valid and subsisting registration.
4. On 16^th April , 2021, an ex parte and interim order was being passed in favour of the plaintiff and against the defendants.
5. After that, the defendant 1 had filed for the vacation of the said order.

Issues Raised:- 

1. Whether the subject matter design is to prior published or not ? 
2. Whether the coolers having the suit design were available online before the date of application by plaintiff for registration of design or not?

Legal Provisions:- 

1. Section 19(1)(b) of the Designs Act,2000 according to which any person may present a petition for the cancellation of the registration of a design at any time after the registration of the design to the controller on any of the following grounds:-
   1. The design has been previously published in India.
   2. The design has been published in India or in any other country before the date of registration.
   3. The design is not an original one .
2. Section 22(3) of the Designs Act ,2000 which states that in any suit for relief under sub section (2) every ground on the basis of which the registration of a design may be cancelled under section 19 shall be available as a ground of defence.

Contentions of the Appellant:- 

1. The plaintiff contended that the NOVA range of coolers of the defendant were similar to their own cooler design. On those coolers, the plaintiff had a valid and functional registration and they had shown the same through the visual comparison of coolers. 
2. Mr. Neeraj Malhotra, learned Senior Counsel for the plaintiff contended that the ZEPHYR brand of the plaintiff was not limited to the coolers bearing the suit design. 
3. He said that the brand name was not used solely for coolers bearing the suit design but also for coolers other than the suit design. 

Contentions of the Respondent:- 

1. Mr. Arnav Goyal, learned counsel for defendant 1 , contends that although the design of the NOVA range of air coolers manufactured by defendant us similar to the suit design, but he invokes section 22(3) of the Designs Act read with section 19(1)(b) of the Design Act and pleaded the prior publication of design as a ground to request that on account of prior publication, the suit design must be cancelled and therefore the plaintiff cannot proceed against defendant for infringement. 
2. The defendant’s counsel contended that the suit design was available online on the website of the defendant before the date of application. 
3. The counsel for defendant also stated that the plaintiff had produced the documents providing invoice that their ZEPHYR cooler bearing the suit design was infact  sold in the market even before 9^th October, 2019. 

Case Analysis:-  

In this case, the court observed that the brand name of the cooler was totally irrelevant in this particular case. The court had seen that the internet advertisement filed by the plaintiff indicates that the cooler of the plaintiff bearing the suit design was also available online.

The court looked at the advertisement of the plaintiff’s ZEPHYR cooler which was being submitted by Mr. Goyal. On  looking into that , the court had seen that there was a prior publication of the design within the meaning of section 19(1)(b) of the Designs Act. 

The court also puts attention to the invoices filed by the plaintiff from pages 103 to 111 in respect of ZEPHYR cooler and they were also prior in point of time to the date of application. 

The Court looked at the page 85 of the documents presented by the plaintiff which showed that the coolers bearing the suit design were put up on the plaintiff’s own website for sale even before the date of application. 

This amounts to prior publication within the meaning of section 19(1)(b) of the Designs Act.

The court observed that the defendant was able to make a huge challenge to the vulnerability of the suit design to the cancellation within the meaning of section 19(1)(b) of the Designs Act.

On looking into these things, the court directed the plaintiff to place the details regarding the other designs sold under the mark ZEPHYR.

Judgement:- 

The court did not contemplate the submission of the plaintiff as to the various designs under the brand name ZEPHYR. The Court ordered that the Para 13 clearly indicates that the cooler of the plaintiff was available online on the plaintiff’s own website before 24^th March, 2019 , the date of application. In it’s judgement, the court said that the documents of the plaintiff from the very first appearance were ruinous to the case of the plaintiff because it was a clear evidence of prior publication. The court said that the plaintiff cannot be said to have a prima facie case in its favour and the plaintiff was declined an interim injunction. 

Conclusion:- 

Thus, in this case , the Delhi High Court clarifies that the difference in the brand name cannot be a defence against prior publication of the suit design. Here, the court found a prior publication of the suit design as a valid defence by the defendant and hence dismissed the plea of the plaintiff relating to the design infringement. Thus, the injunction order was vacated in this case . 

References:- 

• https://indiankanoon.org/doc/66378322/
• https://markshield.in/prior-publication-a-valid-defense-in-design-infringement-suits/
• https://www.legalserviceindia.com/legal/article-10261-relevance-of-brand-name-in-a-suit-for-infringement-of-design.html
• https://spicyip.com/2023/01/spicyip-weekly-review-january-17-january-22.html

This article is written by Pakshita Sharma, student of The Law School University of Jammu, an intern at Legal Vidhiya.

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