Court’s Decision
The Bombay High Court dismissed an appeal filed by Atomberg Technologies challenging a Single Judge’s order which had refused to grant interim injunction against Luker Electric in a commercial IP suit concerning design infringement and passing off of ceiling fans. The Division Bench held that the suit fan design of Atomberg was prima facie already in the public domain prior to its registration, that the differences between rival products were sufficient, and that the Single Judge’s refusal to grant relief did not suffer from any perversity or misapplication of law.
“If material is available to indicate that [the design] was published prior to the date of its registration, the value of registration stands diluted.”
Facts
Atomberg Technologies claimed proprietary rights in its registered design for the ‘Atomberg Renesa Ceiling Fan,’ registered on 08.09.2018. It alleged that Luker Electric’s ceiling fans, marketed under names Size Zero Fan 1 and Size Zero Fan 2, infringed its registered design and amounted to passing off. Atomberg stated that it had introduced the Renesa design in 2018 and that the distinctive configuration had given it significant goodwill, with sales reaching ₹103 crore in FY 2021–22.
However, in September 2022, Atomberg discovered that Luker had obtained design registrations for similar fans. Believing this to be an infringement, Atomberg filed a commercial IP suit and sought an interim injunction to restrain Luker from manufacturing or selling the alleged infringing fans. The Single Judge rejected the application, prompting the present appeal.
Issues
- Whether the learned Single Judge erred in holding that Atomberg’s design was previously published and therefore not entitled to protection.
- Whether the alleged design infringements by Luker Electric were substantially similar to Atomberg’s registered design.
- Whether Atomberg’s design was a trade variant lacking novelty under the Designs Act, 2000.
- Whether Atomberg established a prima facie case of passing off.
- Whether the appellate court can interfere with the Single Judge’s discretion in denying interim relief.
Petitioner’s Arguments
Atomberg, represented by Senior Advocate Dr. Veerendra Tulzapurkar, argued that its Renesa design was distinctive, aesthetically novel, and covered by a valid registration. It contended that Luker’s impugned fan designs were slavish imitations and infringed Atomberg’s exclusive rights.
It was submitted that prior posts or references to earlier fans like “Gorilla Renesa” or “Renesa+” did not amount to publication of the suit design, and these earlier fans were demonstrably different in blade curvature and motor canopy. Atomberg produced a sample in court to demonstrate visual differences.
It further contended that the rival designs were deceptively similar, and that the failure to disclose every minor fan variant in the plaint did not imply suppression of material facts. It argued that refusal of relief would irreparably damage its market goodwill, and that the learned Single Judge erred in applying Section 4 and Section 19 of the Designs Act.
Respondent’s Arguments
Luker Electric, through Senior Advocate Ravi Kadam, contended that Atomberg’s design lacked novelty as it was published before its registration date through Atomberg’s own promotional material, delivery challans, and invoices.
It highlighted that fans branded “Gorilla Renesa” had been advertised and sold before 08.09.2018, the date of registration. Luker asserted that the suit fan was a mere trade variant of Atomberg’s own earlier fans. It emphasized that under Section 4(c) of the Designs Act, no design can be registered if it is not significantly distinguishable from known designs.
On passing off, Luker argued that Atomberg failed to show “something more” — a required legal threshold — since similarities in design alone are insufficient without false representation or confusion in trade.
Analysis of the Law
The Court analyzed Sections 2(d), 4, 19, and 22 of the Designs Act and reaffirmed that a registered design must be “new or original,” not previously published, and significantly distinguishable from known designs.
The Court held that the registration would be “diluted” if it was found that the design had been in the public domain before its registration. Evidence submitted by Luker — including delivery challans dated February 2018 and invoices prior to September 2018 — were sufficient to create a prima facie case of prior publication.
The Court found merit in Luker’s argument that Atomberg’s fan was a “trade variant” of earlier Renesa fans and not a novel creation. It also noted Atomberg’s failure to disclose prior marketing material in the plaint.
Precedent Analysis
- Wander Ltd. v. Antox India (1990 Supp SCC 727): Cited for limits on appellate interference with discretionary orders. The appellate court must not substitute its own opinion unless the lower court’s discretion was arbitrary or perverse.
- Ramakant Ambalal Choksi v. Harish Ambalal Choksi (2024 SCC OnLine SC 3538): Reiterated that appellate review is limited to correcting errors in law or findings unsupported by evidence.
- Frito-Lay v. Balaji Wafers (2020 SCC OnLine Bom 2375) and Whirlpool v. Videocon (2014): Cited by Atomberg on novelty and aesthetic appeal.
- Crocs Inc. v. Aqualite (2019 SCC OnLine Del 7409) and Selvel Industries v. Om Plast (2016): Used in support of arguments on functional features versus aesthetic appeal.
- Kemp & Co. v. Prima Plastics (1998 SCC OnLine Bom 437): Applied in discussing the test of passing off, requiring “something more” than mere similarity.
Court’s Reasoning
The Court concluded that Atomberg had failed to disclose that its fan was a variation of previously marketed models, weakening its claim of novelty. It held that “the stated stand taken in paragraph 8 of the plaint read with Exhibits Q, R and S, as also the delivery challans and invoices placed on record, do create an impression that the plaintiff’s design was already in public domain.”
On the issue of passing off, the Court emphasized that Atomberg failed to show false representation or likelihood of confusion beyond similarity in shape. Packaging, branding, and marketing channels showed sufficient dissimilarity.
Finally, applying the Wander principle, the Court held that the Single Judge had exercised discretion reasonably, and there was no case for appellate interference.
Conclusion
The appeal was dismissed, and the interim application was disposed of. The Court reiterated that where designs lack novelty due to prior publication or trade variance, courts are not bound to grant interim relief, even in commercial design infringement cases.
“The plaintiff has not been able to make out that ‘something more’… required under law to successfully claim interim relief.”
Implications
- Companies must be diligent in disclosing prior variants and marketing history when claiming design infringement.
- Prior publication, even by the plaintiff, can fatally undermine a design registration.
- Courts will apply strict standards of novelty, especially where designs are functional or aesthetic variants.
- The appellate jurisdiction in interim injunctions remains narrow — confined to correcting gross misapplication of law or procedure.
Cases Cited and Their Relevance
- Wander Ltd. v. Antox India – Guiding precedent on appellate scope in interim injunctions.
- Ramakant Choksi v. Harish Choksi – Reaffirmed limits on appellate interference in equitable reliefs.
- Whirlpool v. Videocon – On novelty and design registration.
- Faber-Castell v. Pikpen – Discussed public domain and aesthetic appeal.
- Crocs Inc. v. Aqualite – Functional features versus design novelty.
- Kemp & Co. v. Prima Plastics – Test for passing off; requires deception beyond similarity.
FAQs
Q1. What does prior publication mean under design law?
Prior publication refers to a design being already available in the public domain before its official registration. If proven, it may invalidate the design under Section 4 and Section 19 of the Designs Act, 2000.
Q2. Can design infringement claims be defeated by showing trade variants?
Yes, if the alleged novel design is merely a trade variant of an already existing product, and lacks distinctiveness, courts may reject protection claims.
Q3. What is the scope of appellate interference in denial of interim injunction?
Limited. The appellate court won’t interfere unless the lower court’s decision is arbitrary, perverse, or contrary to settled principles. The Wander Ltd. precedent governs this principle.