January 30, 2023
Court: Delhi High court
Case: NOVAMAX INDUSTRIES LLP VS PREM APPLIANCES & ANR.
On 16th January 2023, the Hon’ble High Court of Delhi vacated the injunction granted in the favour of the Plaintiff, when it was brought forward by the Defendant that the suit design was published prior to its application date.
Novamax Industries LLP, is the registered proprietor of the design of the air cooler range out of which one of the design as they claimed was being infringed upon by Defendant who had launched their own range of coolers. The application of the suit design was made on 24th March 2019 and the registration was granted to the plaintiff on 9th October 2019.
The plaintiff submitted that the NOVA range of coolers of the Defendant were identical to their own cooler design, for which they had a valid and active registration and they depicted the same through the visual comparison of the coolers. The court acknowledged the submissions made by the Plaintiff and issued an ex-parte ad interim order in favor of the plaintiff and against the defendants and restrained them from manufacturing, selling, or otherwise utilizing the allegedly infringing cooler design until the pendency of the suit.
Defendant moved the Application under Order 39 Rule 4 of CPC to vacate the injunction, relying on Section 19(1)(b) and 22(3) of the Designs Act. The Defendant stated that the impugned design is no doubt identical to the suit design but due to prior publication of the suit design, the same was vulnerable to cancellation as it was available via online purchase on their website prior to 24th March 2019 which was the application date. The Defendant also presented submitted that the Plaintiff themselves has through their documents produced invoice of prior date that the take of registration. The Plaintiff in this regard submitted that their “ZEPHYR” range included designs other than the suit design as well and the suit design was branded as “MIST”.
The court did not consider the submission of the Plaintiff as to various designs under the brand name “ZEPHYR” and stated that the document of internet advertisement available was prima facie fatal to the Plaintiff’s case as the same was a clear evidence of prior publication. The court also considered the fact that the counsel for the Plaintiff did not dispute the presence of the document that showed the presence of the suit design prior to the application date. It was further stated that the brand name of the subject design is of no relevance but the only question before the court now is if the subject design was published prior as per the provisions of section 19(1)(b) of the Act.
The court ultimately ruled that if the suit design was indeed vulnerable to cancellation, then the defendant’s plea of prior publication would be allowed as a defence against the infringement claim. The injunction order was vacated.
Leave a Reply