Selling Product Before Design Registration Can Defeat Infringement Claim, But Passing-Off Case Can Continue: Delhi High Court
Court Partly Allows Summary Judgment Application After Plaintiff’s Own Invoices and Website Showed Cooler Design Was Publicly Available Before Registration
The Delhi High Court has held that a registered-design infringement claim has no real prospect of succeeding where the plaintiff’s own documents establish that the design was publicly disclosed and commercially sold before the application for its registration.
At the same time, the Court clarified that the failure of a design infringement claim does not automatically defeat an independent action for passing off. Since passing off is a common-law remedy based on goodwill, misrepresentation and likelihood of damage, the plaintiff must ordinarily be given an opportunity to establish those ingredients through evidence at trial.
Justice Tushar Rao Gedela consequently partly allowed an application for summary judgment filed by Prem Appliances under Order XIII-A of the Code of Civil Procedure. The design infringement component of the suit filed by Novamax Industries LLP was dismissed, while the passing-off claim was permitted to continue.
Background
Novamax Industries LLP instituted the commercial suit alleging infringement and passing off of its registered cooler design bearing No. 322384-002.
The plaintiff claimed that it was engaged in manufacturing and selling electrical goods, including coolers, and had engaged a product-development company for creating unique designs. It subsequently secured registration for several cooler designs falling under Class 23-04.
According to Novamax, Prem Appliances was manufacturing and selling coolers bearing a design identical to or an obvious imitation of its registered design. The plaintiff also alleged that the defendant was selling the products under the mark “AROKING” with the sub-mark “NOVA,” which allegedly reproduced a prominent part of the plaintiff’s trade name.
The suit sought reliefs including injunction, damages, delivery-up and rendition of accounts.
An ex parte interim injunction was initially granted against the defendants in April 2021. However, the injunction was vacated in January 2023 after the Court found that the defendant had raised a credible challenge concerning prior publication of the registered design.
Prem Appliances thereafter sought summary judgment dismissing the entire suit. It also claimed ₹50 lakh as punitive damages for the alleged loss caused to its business and reputation during the period in which the ex parte injunction remained operative.
Defendant Relies on Plaintiff’s Own Documents
The defendant’s principal contention was that the registered cooler design was neither new nor original because the plaintiff itself had placed products incorporating the design in the market before applying for registration.
The defendant relied upon several invoices filed by Novamax showing sales of its “ZEPHYR” cooler during 2019. These invoices collectively recorded the sale of 209 coolers before the plaintiff’s application for registration of the suit design.
The defendant also relied on a screenshot from Novamax’s own website showing that the ZEPHYR cooler incorporating the disputed design had been displayed for sale by 24 March 2019.
According to the defendant, these documents conclusively established that the design had been published and made available to the public before the registration application. The registration was therefore vulnerable under Sections 19 and 22 of the Designs Act, 2000.
The defendant further argued that the suit did not contain the necessary pleadings to sustain an independent passing-off action. It contended that the plaint was fundamentally based on infringement of the registered design and did not separately identify the distinctive shape, configuration, trade dress, colour combination or packaging in which the plaintiff claimed goodwill.
Plaintiff Accepts Difficulty in Infringement Claim but Defends Passing Off
The plaintiff was unable to offer a substantial explanation regarding the earlier invoices and website publication.
It nevertheless argued that the passing-off claim was independently maintainable and could not be dismissed without trial.
Novamax submitted that the plaint contained allegations that the defendants were selling identical-looking coolers, targeting the plaintiff’s customers and attempting to represent their goods as those of the plaintiff. It argued that these averments were sufficient to constitute a cause of action for passing off.
The plaintiff relied on the Delhi High Court’s decisions in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. and Crocs Inc. USA v. Bata India to contend that a composite suit for design infringement and passing off is legally maintainable.
It further submitted that even where the registered-design claim fails, the plaintiff may still prove passing off by producing evidence of goodwill, deceptive similarity, misrepresentation and damage.
Plaintiff’s Prior Sales Made the Design Vulnerable
The Court noted that the plaintiff could neither deny the invoices nor explain how a design already commercially sold and publicly displayed could subsequently claim novelty for the purpose of registration.
Section 19(1)(b) of the Designs Act permits cancellation of a registered design where it was published in India or any other country before the date of registration.
In the present case, the plaintiff’s own documents demonstrated that coolers incorporating the disputed design had been sold before the registration application was filed. The plaintiff’s website also displayed the product in March 2019.
The Court observed that the brand name under which the product was sold was irrelevant to the question of prior publication. What mattered was whether the article incorporating the design had been publicly available before the registration application.
The invoices and website publication established precisely that.
The Court therefore found it impossible to conclude that the plaintiff had any real prospect of succeeding in its registered-design infringement claim.
It accordingly dismissed the suit to the extent that it alleged infringement of the registered design.
Importantly, the Court did not pass an order cancelling the registration itself. It held that prior publication provided the defendant with a valid defence under Section 22(3) and rendered the infringement claim incapable of succeeding in the present suit.
Passing Off Is Independent of Registration
The Court refused to dismiss the passing-off claim.
It explained that infringement and passing off are legally distinct causes of action.
A design infringement action is a statutory remedy arising from a valid registration. Passing off, on the other hand, is a common-law remedy intended to prevent a trader from misrepresenting its goods as those of another and thereby damaging the other trader’s goodwill.
The Court observed that a passing-off claim may survive even where the plaintiff cannot establish infringement of a registered design.
For passing off, the plaintiff must ordinarily prove:
- goodwill or reputation attached to its goods;
- misrepresentation by the defendant leading or likely to lead the public to believe that the defendant’s goods are those of the plaintiff; and
- actual or probable damage resulting from the misrepresentation.
These matters depend upon evidence concerning sales, advertisements, market recognition, consumer perception, product appearance and the likelihood of confusion. They cannot necessarily be conclusively determined merely by comparing the registration documents.
Pleadings Contained Sufficient Material Facts
The Court examined the plaint as a whole and found that Novamax had asserted more than mere statutory infringement.
The plaint alleged that the defendants had copied the shape and configuration of the plaintiff’s cooler, adopted an identical product appearance, targeted the plaintiff’s customers and attempted to pass off their goods as those of the plaintiff.
It also alleged that the defendants intended to trade upon the plaintiff’s reputation and cause confusion and diversion of business.
The Court held that these averments were sufficient at the pleading stage to constitute a passing-off claim.
Whether the plaintiff could ultimately prove goodwill, deception, likelihood of confusion and damage was a separate matter that could be determined only after the parties led evidence.
The Court also noted that the defendant’s written statement had not meaningfully traversed several substantive allegations concerning passing off. Its defence had primarily focused on territorial jurisdiction, denial of sales to the second defendant and invalidity of the registered design.
In these circumstances, the passing-off claim could not be rejected summarily.
Summary Judgment Cannot Replace Trial Where Evidence Is Required
Order XIII-A permits a commercial court to decide a claim without recording oral evidence where one party has no real prospect of succeeding and there is no compelling reason for a trial.
The Court found that this threshold was satisfied in relation to design infringement because the plaintiff’s own documents established prior publication.
The same conclusion could not be reached regarding passing off.
The existence and extent of goodwill, the defendant’s alleged misrepresentation and the likelihood of consumer confusion required evidence. Without providing the plaintiff an opportunity to establish these elements, the Court could not hold that the passing-off claim had no real prospect of succeeding.
Decision
The Delhi High Court partly allowed Prem Appliances’ summary judgment application.
The Court:
- dismissed Novamax’s claim for infringement of the registered cooler design;
- rejected the request to summarily dismiss the passing-off claim;
- permitted the passing-off action to proceed to trial; and
- did not award the ₹50 lakh punitive damages sought by the defendant.
The matter was directed to be listed for further proceedings on 17 September 2026.
Key Legal Principle
Prior publication of a design by the registered proprietor itself may defeat a subsequent infringement action because the design loses the essential requirement of novelty.
However, invalidity or failure of the registered-design claim does not automatically extinguish an independent passing-off action. Passing off exists outside the statutory design-registration framework and may survive where the plaintiff pleads and proves goodwill, misrepresentation and damage.
Why the Decision Matters
The decision highlights a crucial distinction for businesses seeking intellectual-property protection.
A manufacturer that publicly markets, sells or advertises a product before applying for design registration may seriously compromise the enforceability of that registration. The proprietor’s own invoices, catalogues, website listings and advertisements can later be relied upon as evidence of prior publication.
The ruling also protects the independent character of passing off. Even where statutory design rights fail, a trader may still establish that the overall appearance of its product has acquired market recognition and that a competitor’s conduct is likely to mislead customers.
The success of such a claim, however, will depend on properly pleaded facts and legally admissible evidence establishing goodwill, misrepresentation and actual or probable damage.
Case: Novamax Industries LLP v. Prem Appliances & Another
Court: High Court of Delhi
Case Number: CS(COMM) 177/2021
Application: I.A. 14299/2025 under Order XIII-A CPC
Judge: Justice Tushar Rao Gedela
Date: 19 June 2026
Result: Summary judgment application partly allowed; design infringement claim dismissed and passing-off claim retained for trial
