Design registration prior publication is one of the most self-inflicted wounds in Indian IP litigation, and a 2026 ruling from the Delhi High Court offers an instructive, if uncomfortable, lesson in why the sequence of commercialisation and registration matters enormously.<\/p>\n
Novamax Industries LLP (“Novamax”) was incorporated in July 2018 and entered the business of manufacturing and selling electrical goods, including air coolers and fans. Between August and December 2018, Novamax engaged an external company, Hongyi JIG Rapid Technologies, to design and develop distinctive product designs. On the strength of that work, Novamax applied for and became the registered proprietor of several designs in Class 23-04 covering coolers, including design registration nos. 322384-001, 322384-002, 323421-001, 330044-004, 330044-002, and 331964-001. The application for design no. 322384-002 was filed on 19 October 2019.<\/p>\n
In the third week of March 2021, Novamax discovered that Prem Appliances & Anr (“Prem Appliances”) was manufacturing and selling coolers bearing a design identical to registered design no. 322384-002. Novamax also alleged that Prem Appliances was selling these goods under the mark AROKING together with a sub-mark NOVA, the dominant element of Novamax’s own trade name. Novamax filed suit before the Delhi High Court in CS(COMM) 177\/2021, seeking relief for design infringement, passing off, and related reliefs including delivery up and rendition of accounts.<\/p>\n
The court granted an ex-parte ad-interim injunction on 16 April 2021. Prem Appliances moved to vacate that order, and on 16 January 2023 the court obliged, recording a finding that Prem Appliances had raised a credible challenge to the validity of the suit design on the ground of prior publication, and that the said ground was available as a defence under Section 22(3) of the Designs Act, 2000 (“Designs Act”). The second defendant settled during the pendency of the suit, and a consent decree was passed against it.<\/p>\n
Prem Appliances then filed a summary dismissal application, seeking a judgment in its favour on the ground that the suit, both on infringement and on passing off, had no real prospect of succeeding. It also sought punitive damages of Rs. 50 lakhs against Novamax.<\/p>\n
The court noted that the central question on infringement was a short one: could a design that the proprietor itself had published and sold before filing the registration application enjoy valid protection? The court found the answer was plainly no. Novamax’s own invoices showed that coolers manufactured using the suit design were sold under the ZEPHYR mark on dates preceding 19 October 2019. Beyond the invoices, the court observed that Novamax’s own website had displayed the cooler bearing the suit design for sale as early as 24 March 2019, nearly seven months before the application was filed.<\/p>\n
The court held that what mattered under Section 19(1)(b) of the Designs Act was whether the design itself had been published in India before the date of registration, not what name appeared on the product. The publication at novamaxindustries.com on 24 March 2019 and the pre-application invoices collectively constituted design registration prior publication within the meaning of the statute.<\/p>\n
Under Section 22(3) of the Designs Act, invalidity is expressly available as a defence in infringement proceedings, and Prem Appliances had properly raised it. The court concluded that the suit on design infringement had no real prospect of succeeding and allowed the summary dismissal application to that extent.<\/p>\n
The court’s reasoning on passing off was rooted in the distinction between statutory infringement and the common law right to restrain passing off. The court observed that passing off is a sui generis common law remedy aimed at protecting hard-earned goodwill and reputation. Unlike infringement, which turns on registration, passing off requires proof of goodwill, misrepresentation, and actual or likely damage, all of which must be established through evidence at trial.<\/p>\n
The court held that the plaint, read holistically, did contain sufficient material facts for a passing off action. Paragraphs 18 and 19 referred to features of shape and configuration, to the fraudulent imitation of the plaintiff’s design, and to the defendant’s adoption of the NOVA sub-mark to trade upon Novamax’s reputation. The court further observed that the defendant’s written statement had not traversed these specific averments on passing off.<\/p>\n
The court reasoned that dismissing the passing off claim at the summary stage without affording Novamax the opportunity to lead evidence would be improper. The Full Bench in Carlsberg Breweries A\/S vs. Som Distilleries<\/em>, (2019) 256 DLT 1 (FB), had held that a composite suit for design infringement and passing off is maintainable and that evidence to prove both claims may be common. The Division Bench in Crocs Inc. USA vs. BATA India and Ors.<\/em>, (2025) SCC Online Del 4626, reinforced this position, holding that even where a design infringement claim is not made out, the court can adjudicate the passing off claim on the same facts and grant relief if warranted.<\/p>\n The court further noted that a plaint is a pleading of facts, not itself proof. Whether those facts, once proved by evidence, disclose a case of passing off is for the trial court to determine after both sides have been heard. In a case where the written statement had not even denied the passing off averments in any substantive way, allowing a summary dismissal of that claim would cut off the inquiry prematurely.<\/p>\n In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:<\/p>\n <\/p>\nFindings<\/h2>\n
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