Full Judgment Text
Neutral Citation Number : 2023/DHC/000333
$~8
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 177/2021 & I.A. 5485/2021, I.A. 13748/2021, I.A.
7058/2022
NOVAMAX INDUSTRIES LLP ..... Plaintiff
Through: Mr. Neeraj Malhotra, Sr. Adv.
with Mr. Umesh Mishra, Mr. Vishal Patel
and Mr. Nimish, Advs.
versus
PREM APPLIANCES & ANR. ..... Defendants
Through: Mr. Arnav Goyal, Adv. for Mr.
G.D. Bansal, Adv. for D-1
Mr. B.S. Rajesh Agrajit, Ms. Priya Nagar,
Mr. Siddharth Goswami, Advs. for SHO
Jaipur
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
JUDGEMENT (ORAL)
% 16.01.2023
I.A. 5485/2021 (u/O. XXXIX Rules 1 and 2) & I.A. 7058/2022
(u/O. XXXIX Rule 4) in CS(COMM) 177/2021
1. The plaintiff is the registered proprietor of Design Nos. 322384-
001, 322384-002, 323421-001, 330044-004, 330044-002 and 331964-
001, under which design it manufactures and sells air coolers.
2. The present suit is concerned with Design No. 322384-002
(hereinafter referred to as ―the suit design‖), granted to the plaintiff on
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9 October 2019.
3. The plaintiff’s case is that the ―NOVA‖ range of coolers
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 1 of 9
Neutral Citation Number : 2023/DHC/000333
manufactured and sold by Defendant 1 infringes the suit design, in
which the plaintiff has a valid and subsisting registration.
4. A comparative representation of the coolers of the plaintiff and
Defendant 1 has been thus provided in para 21 of the plaint, in order to
indicate that they are identical:
Manner of use/presentation by
the plaintiff
Manner of use/presentation by
the defendant
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5. On 16 April 2021, while issuing notice on IA 5485/2021, this
Court had granted an ex parte ad interim order in favour of the
plaintiff and against the defendants.
6. Defendant 1 has, thereafter, filed IA 7058/2022, for vacation of
the said order.
7. I have heard Mr Neeraj Malhotra, learned Senior Counsel for
the plaintiff and Mr Arnav Goyal, learned Counsel for the defendant
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 2 of 9
Neutral Citation Number : 2023/DHC/000333
on these applications and proceed to dispose of them by this
judgement.
8. Mr. Arnav Goyal, learned Counsel for Defendant 1, quite
candidly, acknowledged that the design of the NOVA range of air
coolers manufactured by Defendant 1 is, in fact, identical to the suit
1
design. He, however, invokes Section 22(3) of the Designs Act read
with Section 19(1)(b) of the Designs Act to plead prior publication of
the design as a ground to urge that, on account of prior publication, the
suit design is vulnerable to cancelation, and that, therefore, the
plaintiff cannot proceed against Defendant 1 alleging infringement.
9. There can be no manner of doubt that, if, indeed, the suit design
is vulnerable to cancellation under Section 19(1)(b), Section 22(3)
allows the said pleas to be urged as a ground of defence against the
allegation of infringement levelled by the plaintiff against the
defendants.
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22. Piracy of registered design . –
(1) During the existence of copyright in any design it shall not be lawful for any person—
(a) for the purpose of sale to apply or cause to be applied to any article in any class
of articles in which the design is registered, the design or any fraudulent or obvious
imitation thereof, except with the licence or written consent of the registered proprietor,
or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered
proprietor, any article belonging to the class in which the design has been registered, and
having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been
applied to any article in any class of articles in which the design is registered without the
consent of the registered proprietor, to publish or expose or cause to be published or
exposed for sale that article.
(2) If any person acts in contravention of this section, he shall be liable for every
contravention –
(a) to pay to the registered proprietor of the design a sum not exceeding twenty-
five thousand rupees recoverable as a contract debt, or
(b) if the proprietor elects to bring a suit for the recovery of damages for any such
contravention, and for an injunction against the repetition thereof, to pay such damages as
may be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design under
clause (a) shall not exceed fifty thousand rupees:
Provided further that no suit or any other proceeding for relief under this sub-
section shall be instituted in any court below the court of District Judge.
(3) In any suit or any other proceeding for relief under sub-section (2), every ground on
which the registration of a design may be cancelled under Section 19 shall be available as a ground
of defence.
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 3 of 9
Neutral Citation Number : 2023/DHC/000333
10. This Court is, therefore, required to assess, prima facie , whether
a case of vulnerability to cancellation of the suit design is, or is not,
made out in terms of Section 19(1)(b) of the Designs Act.
11. To substantiate his contention, Mr. Arnav Goyal has placed
reliance on a document filed by the plaintiff itself with the suit and
figuring at page 85 of the documents filed with the plaint. I may note,
here, that the documents from pages 85 to 90 of the documents filed
with the plaint have been parenthesized, in the index of documents, as
―online business status of plaintiff’s firm‖. The said pages have been
taken form the plaintiff’s website ― http://novamaxindustries.com ‖.
They, therefore, admitted pertain to the plaintiff and the sale of its
products. The internet ID of the page on which Mr. Arnav Goyal
places reliance is ―novamaxindustries.com/product/zephyr/cooler/‖.
12. A screen shot of page 85 of the plaintiff’s documents, on which
Mr. Goyal places reliance, may be reproduced thus:
13. Mr. Goyal submits that the ZEPHYR cooler shown at page 85
of the plaintiff’s documents is the cooler having the suit design, for
which purposes he has compared the said picture with the picture of
the suit design in page 21 of the plaint, which already stands
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 4 of 9
Neutral Citation Number : 2023/DHC/000333
reproduced in para 4 supra.
14. Mr. Goyal proceeds to show that, lower on the same page of the
plaintiff’s website, one finds the caption ―admin-March 24, 2019‖,
which appears thus:
15. As such, submits Mr. Goyal, the aforenoted advertisement of
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the plaintiff’s ZEPHYR cooler was clearly prior to 24 March 2019.
Ergo, he submits, the plaintiff’s ZEPHYR cooler, having the suit
design, was available online for purchase, as per the documents filed
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by the plaintiff itself, prior to 24 March 2019. This, he submits,
constitutes prior publication of the design within the meaning of
Section 19(1)(b) of the Designs Act.
16. Mr. Goyal has also invited my attention to invoices filed by the
plaintiff at pages 103 to 111 of the plaintiff’s document, which are
also in respect of ZEPHYR cooler and which are prior in point of time
to the date of application for registration of the suit design by the
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plaintiff, which is 9 October 2019. These invoices, submits Mr.
Goyal, also serve to indicate that the ZEPHYR cooler of the plaintiff,
bearing the suit design, was in fact even being sold in the market prior
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to 9 October 2019.
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 5 of 9
Neutral Citation Number : 2023/DHC/000333
17. Addressing these submissions of Mr. Goyal, Mr. Neeraj
Malhotra, learned Senior Counsel for the plaintiff, has invited my
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attention to order dated 8 July 2022 passed by this Court in the
present proceedings. The said order records the contention of the
plaintiff that the ZEPHYR brand, of the plaintiff, was not limited to
coolers bearing the suit design. This Court had, in view of the said
contention, directed the plaintiff to place, on record, the details
regarding the other designs of the plaintiff which were sold under the
mark ―ZEPHYR‖.
18. In purported compliance therewith, the plaintiff has placed on
record certain documents with an additional affidavit, under an index
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dated 13 December 2022. Given the fact that this is a suit under the
Code of Civil Procedure, 1908, as amended by the Commercial Courts
Act, 2015, additional documents of the plaintiff would have to be filed
under Order XI Rule 1(5) and by the defendants under Order XI Rule
1(10). Nonetheless, for the purposes of satisfying myself about the
issue in controversy, I have allowed Mr. Malhotra to take me through
the said documents.
19. Mr. Malhotra has invited my attention to the following three
pages, from the additional documents filed by the plaintiff:
Pages 17 and 18:
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 6 of 9
Neutral Citation Number : 2023/DHC/000333
Page 19:
20. Mr. Malhotra points out, from the images contained in the
afore-extracted pages from the plaintiff’s brochure, that the brand
name ZEPHYR was not being used by the plaintiff solely for coolers
bearing the suit design. The ZEPHYR cooler shown in the page 18 as
extracted, he points out, does not bear the suit design. Thus, the
ZEPHYR brand was also being used for coolers with designs other
than the suit design. On the other hand, he points out that the cooler
bearing the suit design, in the above images, is shown under the brand
name MIST.
21. Having seen the aforesaid pages and examined the contentions
of Mr. Malhotra, I fail to understand how they can help the case of the
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 7 of 9
Neutral Citation Number : 2023/DHC/000333
plaintiff in any way, insofar as Mr. Goyal’s contention, based on the
document filed by the plaintiff at page 85, is concerned. Page 85 is, in
my opinion, prima facie fatal to the plaintiff’s case.
22. The question is not whether the plaintiff is, or is not, selling
coolers of different designs under the brand name ZEPHYR. That
issue is entirely tangential to the controversy at hand. The fact of the
matter remains that the internet advertisement filed by the plaintiff
itself at page 85 and reproduced in para 13 supra , indicates that the
cooler of the plaintiff, bearing the suit design , was available online for
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sale, on the plaintiff’s own website, prior to 24 March 2019.
23. I may note, here, that Mr. Malhotra, very fairly, did not seek to
dispute the fact that the design of the cooler advertised for sale at the
afore-extracted page 85 from the documents filed by the plaintiff was
in fact the suit design.
24. The brand name of the cooler is, in fact, really irrelevant. What
has to be seen is whether the coolers bearing the suit design were
available online prior to the date of application, by the plaintiff, for
registration of the design. Whether the design was being sold under
the brand ―ZEPHYR‖ or the brand ―MIST‖, or, for that matter, any
other brand, makes no difference to the controversy. Page 85 of the
documents filed by the plaintiff clearly indicates that, on the plaintiff’s
own website, coolers bearing the suit design were actually put up for
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sale prior to 24 March 2019. That itself amounts to prior publication
within the meaning of Section 19(1)(b) of the Designs Act.
25. In that view of the matter, it is not necessary for me to enter into
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 8 of 9
Neutral Citation Number : 2023/DHC/000333
other aspects of the controversy. At the very least, Defendant 1 has
been able to make out a credible challenge to the vulnerability of the
suit design to cancellation within the meaning of Section 19(1)(b) of
the Designs Act. The said ground is, therefore, validly available as a
ground of defence to Defendant 1 by way of Section 22(3) of the
Designs Act and, prima facie, has merit.
26. The plaintiff cannot, therefore, be said, on the face of the
material on record, to have a prima facie case in its favour, as would
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justify continuance of the ad interim order dated 16 April 2021 any
further.
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27. Accordingly, the order dated 16 April 2021 stands vacated.
28. IA 5485/2021 stands dismissed.
29. IA 7058/2022, filed by Defendant 1, stands allowed.
I.A. 13748/2021 in CS(COMM) 177/2021
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30. List on 14 February 2023.
C. HARI SHANKAR, J.
JANUARY 16, 2023
dsn
Signature Not Verified
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:17.01.2023
16:13:27
CS(COMM) 177/2021 Page 9 of 9