Registration Of Design Already In Public Domain Prima Facie Liable For Cancellation: Bombay HC Denies Interim Relief To Ceiling Fan Manufacturer

Justice Manish Pitale held that Atomberg failed to make a prima facie case for design infringement of its Renesa Ceiling Fan as the design was available in public domain before registration and thus may be cancelled under section 19(b) (cancellation due to prior publication) of the Designs Act, 2000.

“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 and published prior to the date of registration i.e. 8th September, 2018…This indicates that the registration of plaintiff’s design may itself be hit by Sections 4(b) and 19(b) of the Designs Act…”, the court held.

According to Atomberg’s plaint, its fan Atomberg Renesa Ceiling Fan is a registered design dated September 8, 2018. Atomberg alleged that on March 21, 2022, Luker fraudulently obtained design registration of two fans: Size Zero Fan 1 and Size Zero Fan 2. Thus, Atomberg filed a suit for design infringement and passing off and filed the present application for interim relief.

Luker claimed that Atomberg could not have registered the design as it is not novel or unique.

Relying on section 4 (prohibition of registration of certain designs) of the Designs Act, 2000, the court said that if a design is not new or original, or is in the public domain, or is indistinguishable from known designs, the registration itself cannot be granted. Further, any such registration, if granted, can be cancelled as per section 19 (cancellation of registration), the court noted.

Therefore, value of registration of design is diluted if material indicates that it was published before the registration date, the court remarked.

The court said that Atomberg’s design was prima facie prohibited from registration under section 4 of the Designs Act and prima facie liable to be cancelled under section 19.

The court considered social media posts showing pictures of Atomberg’s fan with its house-marks Gorilla and Atomberg. These posts were made before the date of registration and hence are publication prior to the registration of Atomberg’s design, the court said.

Luker submitted invoices showing that Atomberg Gorilla Renesa Ceiling Fans were sold in February 2018 i.e., before the date of registration of Atomberg’s design.

The court said that Atomberg did not disclose the social media posts and the invoices indicating that it is not entitled to interim reliefs.

The court noted that the ceiling fan in question was formerly known as Atomberg Gorilla Renesa Ceiling Fan. Hence, Luker is justified in contending that Atomberg Gorilla Renesa Ceiling Fan and Atomberg Renesa Ceiling Fan are interchangeable.

The court said that the design of the Atomberg Gorilla Renesa Ceiling Fan is prima facie similar to Atomberg’s registered design. Thus, the registration of Atomberg’s design may itself be hit by prohibition and cancellation; the court opined.

The court said that Atomberg’s registered design and the designs which were available in public domain before its registration are prima facie almost similar and any difference is light and trivial. Thus, Atomberg failed to make out a strong prima facie case about novelty and originality of its registered design, the court held.

Even if it is considered that Luker copied Atomberg’s design, Atomberg also had to show ‘something more’ i.e., that Luker was making a false representation, the court said.

“the table of comparison of the rival products placed on behalf of the defendant in the reply affidavit, assumes significance, for the reason that apart from showing certain differences pertaining to the canopy, rod, etc., the defendant has also shown how the boxes and packaging of the rival products is different. Therefore, this Court finds that the plaintiff has not been able to make out that ‘something more’, as required under law, to successfully claim interim reliefs against the defendants, even on the aspect of passing off”, the court held.

While the court disagreed with Luker’s contention that the relief of passing off cannot be granted in case of designs, it held that Atomberg has not made a prima facie case for passing off of the design.

Since Atomberg failed to make out a strong prima facie case against Luker, the factors of balance of convenience and irreparable loss to the plaintiff are insignificant, the court held.

Therefore, the court dismissed Atomberg’s application for interim relief.

Case no. – Commercial IP Suit (Lodging) No. 66 of 2023

Case Title – Atomberg Technologies Private Limited v. Luker Electric Technologies Private Limited

Citation: 2023 LiveLaw (Bom) 269

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