Atomberg Technologies Private Limited vs Stove Kraft Limited
- Court
- Bombay High Court
CNR No : HCBM020149412026
2026:BHC-OS:22933-DB
Digitally
signed by
MANALI
PRASANNA
TILAK
Date:
2026.10.22
21:41:22
+0530
MANALI
PRASANNA
TILAK
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL APPELLATE DIVISION
COMMERCIAL APPEAL NO. (L) 14941 OF 2026
IN
INTERIM APPLICATION NO. 88 OF 2026
IN
COMMERCIAL (IP) SUIT NO. 710 OF 2025
Atomberg Technologies Private Limited
rd
Having its corporate office at 3 Floor,
Tower B, 247 Embassy Park, LBS Marg,
Vikhroli West, Mumbai 400083.
Maharashtra.
.. Appellant/ Original
plaintiff
Versus
Stove Kraft Limited
Having its registered office at 81/1,
Medamarana Halli Village Harohalli
Hobli, Kanakapura Taluk, Ramanagar
Dist, Karnataka - 562112 and Corporate
office at #30, 2nd Cross, CSI
Compound, Mission Road, Bengaluru –
560027
.. ... Respondent
(Original
defendant)
----
Dr. Birendra Saraf, Sr. Advocate with Mr. Hiren Kamod, Mr.
Nishad Nadkarni, Mr. Aasif Navodia, Ms. Khushboo
Jhunjhunwala, Ms. Rakshita Singh, Mr. Rohan Lopes and
Nihala Naiyyira i/b Khaitan & Co. for the appellant.
Mr. Venkatesh Dhond, Sr. Advocate with Mr. Akshay Patil, Mr.
Akshay Kamble, Ms. Neha Patil, Ms. Trupti Poojary, Ms. Reshma
Rajagopal and Mr. Prateek Pansare i/b Vivaka Partners for the
respondent.
Mr. B.V. Baravkar, Court Receiver, present.
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----------------------------------------------------
CORAM : BHARATI DANGRE &
MANJUSHA DESHPANDE, JJ.
th
RESERVED ON : 27 JULY, 2026
th
PRONOUNCED ON : 16 OCTOBER, 2026
JUDGMENT (PER: BHARATI DANGRE, J.)
1. The present Commercial Appeal is filed by the Appellant -
Atomberg Technologies Private Limited, Mumbai,(hereinafter
referred to as ‘Atomberg’) being aggrieved by the impugned
judgment and order passed by the learned Single Judge on
17/4/2026, thereby refusing the interim relief sought for in
Interim Application No. 88/2026 in Commercial (IP) Suit
No.710/2025, filed for damages and injunction, alleging
infringement of its design registered on 1/1/2020 in Class 23-
04 for ‘Ceiling fan’ and for passing off of its products i.e the
said fan.
By the Interim Application, the Applicant sought a
temporary injunction along with appointment of a Court
Receiver. Though vide order dated 24/7/2025, an ex-parte ad-
interim relief, restraining the defendant from manufacturing,
using, selling, exhibiting or advertising the impugned fan,
imitating or resembling the suit fan was granted, and the Court
Receiver was appointed to conduct a search with directions to
seize and take possession, custody and control of the impugned
fan, by the judgment delivered on 17/4/2026, the learned
Single Judge discharged the Receiver and dismissed the
interim application on recording a finding, that the plaintiff
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failed to make out a prima facie case, or establish balance of
convenience and demonstrate irreparable loss that may be
suffered in the absence of interim relief. As the Court Receiver
was discharged, the goods seized by him were directed to be
released forthwith.
2. The present appeal and the challenge to the judgment,
refusing the interim relief deserve appreciation in the backdrop
of the claim staked by Atomberg in Commercial (IP) Suit
instituted by it, with a specific pleading that it is the registered
proprietor of, Copyright subsisting in the design of ‘Atomberg
Renesa Alpha’ Ceiling fan bearing Registration No. 325322-001
in Class 23-04. It pleaded that the registration being secured in
the year 2020, and in the wake of its commercial success, it was
decided to sell the fan with minor variation in the blade
connector, in addition to Atomberg Renesa Alpha under the
trade marks/brands - Atomberg Renesa Prime, Atomberg
Renesa Prime Regulator, Atomberg Renesa Zen, Atomberg
Renesa Enzel and Atomberg Renesa Prime Remote.
According to the plaintiff, in or about the first week of
June, 2025, its representative learned about the impugned fan
of Stove Kraft Limited (hereinafter referred to as ‘Stove Kraft’)
having shape, configuration, design and aesthetic appeal that is
identical with and/or a fraudulent imitation and/or obvious
imitation of the shape, configuration, design of the plaintiff's
fan for which it had secured registration. The representative of
the plaintiff thereafter purchased the impugned fan under the
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name "Pigeon fan-tastic BLDC Ceiling fan" from the defendant's
dealer/retailer in Dadar, Mumbai.
Followed by this revelation, it also conducted a search on
the internet to unravel that Stove Kraft, has a website —
www.stovekraft.com, on which, the impugned fan bearing the
impugned design/shape was promoted and advertised. It was
also learned that the impugned fan bearing the impugned
design/shape could also be purchased from www.amazon.in,
www.indiamart.com and www.jiomart.com.
3. Upon this information being collected, it was noted that
Stove Kraft was trying to take advantage of the plaintiff's fan
bearing the registered design, which had gained immense
popularity owing to its design, aesthetic look combined with its
superior quality and durability, and which was purchased by
people at large from different strata of society, including
illiterate and semi-illiterate consumers as well as customers
belonging to affluent and non-affluent backgrounds, residing in
urban or semi-urban areas. Pleading that the plaintiff had
acquired statutory and common law rights in the shape and
configuration of the fan manufactured by applying the design
which was registered and was entitled to the exclusive use of
the same to the exclusion of other manufacturers and/or
traders, the plaintiff was of the view that it was entitled to for
relief in respect of infringement/piracy of the shape,
configuration, design of the fan, to which it was applied and
also for the act of passing off, in the manner provided by law.
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According to the plaintiff, its design has novelty, which
reside in the shape and configuration along with its peculiar
features viz. (i) the unique shape of the blades with a petal-
inspired curve; (ii) each blade featuring asymmetric tapering,
with one side tapering more than the other; (iii) uniquely
shaped blades with a subtle V-bend along their length; the body
being curved, narrowing at the top and gradually widening
towards the bottom, creating a sleek and balanced silhouette
along with the canopies having a slanted top edge, matching
the fan's diameter for a smooth and continuous look.
The plaintiff claim that the design of its fan with the
above-mentioned features was ‘New and Original’, and it had
acquired tremendous goodwill and reputation and that is how
it became one of the largest selling fan.
4. Upon Atomberg coming across the attempt of the
defendant in infringing its registered design, by blatantly
copying, creating a replica and/or reproducing the overall
design, shape, configuration, get-up and even the specific
features of the plaintiff's fan, it was of the opinion that its
design was deliberately copied by Stove Kraft so as to derive
undue, unlawful and illicit gains and the design applied to the
fan is definitely not a matter of coincidence.
According to the plaintiff the shape, configuration and
design adopted by the defendant, is a fraudulent/obvious
imitation and/or closely and deceptively similar to the shape,
configuration and design of the plaintiff's fan. Pleading that the
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members of the trade and public/informed users having
instructed eye, upon coming across the impugned fan bearing a
similar/identical shape, configuration, design and aesthetic
appeal as that of the plaintiff's fan, are bound to be put in a
state of wonderment and are likely to be confused and/or
deceived into believing that the fan offered by the defendant
are those of the plaintiff and/or are originating from the
plaintiff and/or are connected in the course of the trade with
the plaintiff.
By this act, it was pleaded that the defendant was passing
off its impugned fan/goods as and for the plaintiff's well-known
fan/goods and this act would result into irreparable loss to its
trade and reputation on account of the aforesaid act of
piracy/infringement of plaintiff's registered design and passing
off.
Atomberg, therefore, sought a relief of perpetual order of
injunction by filing the suit against Stove Kraft Limited by itself,
its Directors, Dealers, Stockists, Distributors, Servants, Agents
and all persons claiming under or through it, from
infringing/pirating the plaintiff's design of the fan with
registration number 325322-001 in Class 23-04, by its use in
the impugned fan or any other fan which is a fraudulent or
obvious or slavish imitation or resembling with the plaintiff's
said fan.
Plaintiff also sought a decree against the defendant in a
sum of Rs. 110 Crores as and by way of damages for the act of
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infringement of its registered design and passing off or in the
alternative, prayed that the defendant be ordered to render a
true and faithful account of the profits earned by it by
using/selling the impugned fan and it shall be further ordered
and decreed to pay to the plaintiff such amount as may be
found due on such account being taken.
5. It is in this suit with the aforesaid relief, the plaintiff,
Atomberg, took out an interim application praying for a
temporary order of injunction against the defendant so as to
restrain it from infringing/pirating the plaintiff's design of the
fan being registered in Class 23-04 by use of the impugned fan
or any other fan, during the course of hearing and till final
disposal of the suit.
An interim injunction was also sought against the
defendant from manufacturing and/or selling and/or marketing
and/or retailing and/or exporting and/or distributing and/or
trading and/or exhibiting for sale and/or advertising and/or
otherwise dealing in fan bearing the shape, configuration,
design of the impugned fan which is identical with and/or
deceptively similar to the shape, configuration, design of the
plaintiff's said fan so as to pass off or enable others to pass off
the defendant's fan/goods as and for the plaintiff's well-known
fan/goods or in any other manner whatsoever.
The application also sought appointment of Court
Receiver, High Court, Bombay under Order XL, Rule 1 of the
Civil Procedure Code, 1908 as a Receiver of the defendant's
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impugned fan, with all incidental powers.
6. The above Interim Application was strongly contested by
the defendant by alleging that the ex-parte ad-interim
protection was secured, based on a misleading comparative
table by incorporating the features of the subsequent models of
the product and in fact, these designs were mere trade variants
and lacked any novelty or originality. It was specifically urged
that the defendant's fan is to be compared with the suit design
registration as the ‘Other Renesa fan’, differ from the plaintiff's
registered design.
Heavy reliance was placed upon the comparative charts,
drawing a comparison of the defendant's fan with the original
models and the subsequent models lodged by Atomberg to
distinguish that it’s registered design was in no way alleged to
be adopted.
The distinction was drawn by submitting that the ‘Z’
shaped integration, clearly and obviously visible in Atomberg’s
suit design was absent in Stove Kraft’s fan, apart from the
distinction in the blade position, canopy design, housing surface
pattern, rivet quantity and positions, blade edge profile, motor
housing lid, blade interface with motor housing, capacitor,
shank profile and floral petal-like pattern. A stand was adopted
that there was no novelty in the plaintiff's suit fan, when
compared to the existing ceiling fan in the market and there is
no technical or functional advancement and therefore, under
the provisions of The Designs Act, 2000, if a design does not
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appear to be ‘New’ or ‘Original’ and is not significantly
distinguishable from the known designs or a combination of the
known designs, the registration of the design is liable to be
cancelled.
The authoritative pronouncements were relied by the
rival parties before the learned Single Judge, who, on perusal of
the plaint as well as the affidavit in reply filed, made extensive
reference to the table incorporated therein, showing
comparison of the products, which according to the learned
Single Judge, lead to an inference that the product comparison
made by the plaintiff in the plaint, is not between the plaintiff's
ceiling fan for which it actually obtained a design registration,
as it had claimed design registration for one model and has
compared the impugned fan its different variants/models to
allege that the impugned fan is similar to the suit fan.
A prima facie finding is also recorded in the impugned
order to the following effect :-
“32. Prima facie, no unique or novel feature is seen in
the suit fan that can be said to be obviously different from that
of a usual ceiling fan. For example, any ceiling fan will have
basic features, such as blades, a shank, a canopy, or even a
motor housing lid. Therefore, the basic structure of any ceiling
fan is bound to be the same. The overall basic functional
appearance of a ceiling fan cannot be compared to identify
similarities for the purpose of alleging infringement of a
registered design in the absence of any novelty. Some unique
feature, pattern, configuration, or even an ornamental
appearance may constitute a valid registered design of a ceiling
fan that would stand out from the usual ceiling fan. However,
the basic features of a fan that would make it a ceiling fan
cannot be considered novel.”
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7. The learned Single Judge, by applying the well settled
criteria/test being, the similarity to be judged solely by the eye,
on comparison of the differences between the blade design,
motor housing lid, shank profile, rivet quantity and canopy
noted that this test is not satisfied.
By applying the test laid down in the various authoritative
pronouncements which were relied upon, it was expressed that
the Court has to see whether the essential parts or the basis of
the claim for novelty form part of the impugned article and in
the present case, it was noted that when the fan designs of the
rival parties are minutely observed, the impugned fan is
substantially different from the suit fan, as the unique features
claimed by Atomberg in the suit fan i.e. the bottom view, left
side view and right side view are not similarly placed in the
impugned fan. On the other hand, the Court found substance
in the submission advanced on behalf of Stove Kraft, to the
effect that the alleged similarities with the impugned fan, as
indicated in the second table to the plaint had drawn a
comparison between the pictures of variants/models and not
the impugned fan i.e. the registered design.
8. Recording that the plaintiff had introduced various
models and actually what deserves comparison was its
registered design and not the variants, the trial Judge did not
find prima facie case in favour of the plaintiff for the following
reasons :-
“34 In the present case, as seen from the plaintiff's pleadings
and the comparative first table in the plaint, the plaintiff claims
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that the suit fan has an obviously different bottom view, and the
side view, which is similar to that of the impugned fan. Such an
obvious and usual appearance would be of any ceiling fan.
However, if the plaintiff's claim of having a unique design of the
blade, shank, canopy and motor housing lid is compared with the
impugned fan, no obvious similarity is seen when judged through
the purchaser’s eye that would make a purchaser believe that the
impugned fan is the suit fan. The different shape of the blade
with a curve and the “Z” shape shank design of the suit fan is not
seen in the impugned fan. Even otherwise, there are differences
between the image of the suit fan and the impugned fan. When
the suit fan and the impugned fan were produced before this
court at the time of the hearing, no similarity was visible that
would constitute piracy to seek any relief on the allegation of
infringement of the plaintiff's registered design.
35. Therefore, apart from the valid grounds raised in defence to
challenge the plaintiff's registered design, no similarity is seen in
the impugned fan when compared with the plaintiff's registered
design, i.e the suit fan, that would prima facie show any
infringement of the registered design as alleged by the plaintiff.
The plaintiff has also not made out a prima facie case to establish
goodwill and distinctiveness in a particular getup, which would
show something more than mere similarity, providing a cause of
action on the aspect of passing off. Learned senior counsel for the
defendant is right in pointing out that the CA’s certificate relied
upon by the plaintiff for claiming goodwill is based on the six
model/ brands as pleaded by the plaintiff in the plaint and is not
based only on the suit fan. Therefore, by applying the well-
established legal principles, as discussed in the above paragraphs,
the plaintiff has failed to make out a prima facie case as required
under the law to successfully claim interim relief against the
defendant.”
In light of the above, by recording that the plaintiff had
failed to satisfy the triple test for grant of interim injunction,
the application was dismissed and the Court Receiver being
discharged, was directed to release the goods forthwith.
It is this impugned order which is the subject matter of
challenge before us.
9. We have heard Dr. Birendra Saraf for the
plaintiff/appellant, who would invite our attention to the
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provisions of the Designs Act, 2000 and his emphasis is on the
definition of the term ‘Design’ and according to him, the design
is something which is indicative of shape, configuration,
pattern, etc. in any article and it should have an appeal which
can be judged solely by the eye. He would invoke the principle
laid down by the Apex Court in Bharat Glass Tube Limited V/s.
1
Gopal Glass Works Limited which has clearly highlighted that
the concept of Design is a particular figure conceived by its
designer in his mind and it is reproduced in some identifiable
manner and sought to be applied to an article, whenever it is
presented for registration and it is this characteristic which
would deserve credence. He would also invoke the definition of
the term ‘Original’ as defined in Section 2(g) in relation to a
design originating from author of such design and include the
cases which though in themselves, are new in their application.
Our attention is invited to the relevant portion of the Law
Report where reliance was placed upon the relevant paragraph
reproduced from law of Copyright and Industrial design by P.
Narayanan (fourth Edition) where design is defined to be a
conception, suggestion or idea and not an article which is the
thing capable of being registered.
10. As regards the factual aspects are concerned, according to
Dr. Saraf, Atomberg, somewhere in the year 2018, introduced a
ceiling fan under brand name ‘Atomberg Renesa’ which is not
the subject matter of the proceedings and therefore, he chose to
refer it to ‘Other Renesa fan’. However, in December 2019, the
1 (2008) 10 SCC 657
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plaintiff conceptualized and developed a completely new and
original design for a ceiling fan distinct from any other fan
under a distinctive, original and novel design, and according to
the learned senior counsel, the plaintiff claimed novelty in
shape and configuration only.
Giving the details of the said design, as being created in
house by Mr. Aman Sadana and Mr. Utkarsh Gautam, during
the course of the employment in terms of the specific
instructions imparted as to shape and configuration under a
contract of service, the design of this fan was developed and the
registration was secured under the Designs Act, 2000 on
1/1/2020 in Class 23-04, vide registration No. 325322-001.
It is on the basis of this registration that Atomberg staked
the claim of being the registered proprietor of the Copyright
subsisting in the said ‘design’, which entitled it to possess the
exclusive right to use and/or reproduce the shape and
configuration of the design and use of its design or any obvious
or fraudulent imitation thereof would amount to
piracy/infringement. Dr. Saraf would submit that due to
commercial success of its products bearing the said design,
Atomberg came out with other fan, with minor non-aesthetic
variation under six trademarks/brands, in distinct time zones
and according to him, when a reference is made to ‘said fan’ it
includes the fan sold by the appellants under six brands/trade
marks.
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11. According to Dr. Saraf, the novelty of the said fan lies in
its shape and configuration and, the following features
combined together were relied upon before the learned Single
Judge, to establish its exclusive right to use and reproduce the
shape and configuration, the plaintiff being the registered
proprietor of the Copyright subsisting in the said design and it
included the following :-
“(i) the blades are uniquely shaped with a petal inspired
curve. The surface flows in a smooth, continuous
curvature from root to tip;
(ii) each blade features asymmetric tapering, with one
side tapering more than the other.
(iii) where the blade narrows at the edge, a rounded
junction (fillet) creates a smooth transition;
(iv) the blades are uniquely shaped with a subtle V-bend
along their length;
(v) the body is curved, narrowing at the top and
gradually widening towards the bottom, creating a
sleek and balanced silhouette;
(vi) the canopies have a slanted top edge, matching the
fan’s diameter for a smooth, continuous look;
(vii) the bottom circular plastic base of the fan features a
cut away edge that creates a dip, that helps to
reduce visual bulk.”
12. It is a specific contention advanced by Dr. Saraf that the
aesthetic look and design along with the features of the said fan
i.e ‘Atomberg Renesa Alpha’ have never been used in the
aforesaid combination for any fan and therefore, is novel. He
would submit that Atomberg do not claim monopoly in any
independent feature as mentioned above but the
novelty/monopoly is claimed in all the above features taken
together as a part of the design & novelty resides in the shape,
configuration and overall aesthetic appeal created by the same
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as would be visible to the consumer, when put to use.
Relying upon the well settled position in law
demonstrated through various pronouncements, he would
submit that the dominant aspect of the plaintiff's fan is the
aesthetic appeal created by all the above features combined
together and when it adopted the said fan, with the aforesaid
design, there was not a single fan which had the above
mentioned feature and the aesthetic appeal, which was applied
to the said product.
13. According to Dr. Saraf, the goodwill and reputation
achieved by Atomberg qua the said fan, was apparently evident
from the annual sale figures which were relied upon from
November 2020 to April-May 2025, which was the relevant
criteria to take into consideration the relief of passing off.
As against the said fan, according to Dr. Saraf, the fan of
Stove Kraft styled as “Pigeon fan-tastic BLDC Ceiling fan”, has
blatantly copied and reproduced the overall design, comprising
of shape and design of the plaintiff's fan, for which it has
secured registration in Class 23-04. According to him,
Atomberg in its plaint clearly brought out a case that the design
of the impugned fan is nothing but a fraudulent and/or obvious
imitation of its registered design and the adoption and/or use
thereof cannot be a matter of coincidence and/or honest
adoption.
According to him, the deliberate imitation of the design of
its fan by Stove Kraft amounts to infringement of its registered
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design and to compare the features of rival fan, Dr. Saraf has
physically placed before us the plaintiff's fan as well as the
impugned fan, and also relevant photographs of the fan taken
from different angles are also relied upon.
14. In support of his contention to prove infringement and
the test to be applied, Dr. Saraf would rely upon the decisions
in cases of:-
2
(i) Whirlpool India Ltd V/s. Videocon Industries Ltd.
3
(ii) Videocon Industries Ltd V/s. Whirlpool India. Ltd
4
(iii) Cello Household Products and Anr V/s. Modware India
(iv) Asian Rubber Industries, New Delhi and ors V/s. Jasco
Rubbers
5
Calicut and ors
(v) Faber-Castell Aktiengesellschaft and ors V/s. Cello Pens Pvt.
6
Ltd
In addition, he would also rely upon the decision of Delhi
7
High Court in TTK Prestige Ltd V/s. KCM Appliances Pvt. Ltd .
15. The submissions advanced on behalf of Atomberg
received strong opposition from the learned senior counsel Mr.
Dhond representing Stove Kraft, as according to him, the
impugned order dated 17/4/2026 has rightly analysed the
submissions and a conclusion is drawn that plaintiff is not
entitled for an injunction on the ground raised that the
defendant was allegedly infringing the plaintiff's registered
design in respect of ‘Atomberg Renesa Alpha’ and passing off the
defendant's fan as that of plaintiff's.
2 2014 SCC Online Bom 565
3 2012 SCC Online Bom 1171
4 2017 SCC Online Bom 394
5
5 2012(5) Mh.L.J. 48
6 2015 SCC Online Bom 6410
7 2023 SCC Online Del 2129
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At the outset, Mr. Dhond would rely upon the principle
well settled by the Apex Court, as regards scope of interference
in an Appeal and according to him, the scope of interference is
minimal and the appellant has not made out any case for
interference, particularly when the order challenged is an
interlocutory order.
It is urged before us that an order granting or refusing to
grant an injunction passed by the learned Single Judge is in
exercise of discretion and the only scope of interference in
exercise of the appellate power is if the learned Single Judge
has exercised the discretion arbitrarily, capriciously, perversely
and when the settled principles of law were ignored.
Heavy reliance is placed upon the test laid down by the
8.
Apex Court in Wander Ltd and anr V/s. Antox India P. Limited
16. The learned senior counsel Mr. Dhond would also invoke
the principle of law laid down by the Apex Court in Bharat
Glass Tube Limited (supra), which has expressed as to what
would amount to a ‘Design’ and it is urged that design is a
conception, suggestion or idea applied to an article and the
Apex Court has declared the concept of design, being a
particular figure conceived by its designer in his mind, and
reproduced in an identifiable manner and sought to be applied
through an article.
Submitting that design is an extension of Copyright, Mr.
Dhond would submit that design is not a source identifier and it
is rather an extension of Copyright. He would compare
8 1990 (Supp) SCC 727
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provisions of Section 11 and 22 of the Designs Act, to
demonstrate that Design is closer to Copyright, than to a
trademark, as unlike trademark, the design is not a source
identifier and trademarks are to be judged by their broad
features and overall impression assessed by a consumer having
average intelligence and imperfect recollection. According to
him, under the Designs Act, the settled principles for testing
infringement are distinct than the one which are applied for
determining whether there is trademark infringement and the
test of a consumer with average intelligence with imperfect
recollection is not applicable in case of Design.
According to Mr. Dhond, as far as design is concerned, the
applicable test is of an “informed user” having an instructed eye
though such a person is not a person skilled in the art, but he
definitely is not an average consumer but he is a person who;
(i) have experience of other similar articles (ii) is reasonable
and discriminatory and (iii) is able to appreciate enough detail
to recite if a design creates an overall impression which has
individual character and whether an alleged infringement
produces a different overall impression.
Reliance is placed by Mr. Dhond upon the decision of
Delhi High Court in case of M/s. B. Chawla and Sons V/s. M/s.
9
Bright Auto Industries , when the Division Bench held that in
final analysis, the matter would boil down to whether addition
of further curve on either side of the ‘mirror’ which received
9 1980 SCC Online Del 320
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registration and whether it would make the variation a striking
one or substantial, so as to constitute a novelty, meriting for
registration and it was held that the learned Single Judge had
correctly used his eye for discerning if there was infact a
novelty and found none.
Reliance is also placed upon the decision of the learned
Single Judge in case of Carlsberg Breweries A/S V/s. Som
10
Distilleries and Breweries Ltd, when the article involved was a
unique and distinctive bottle which was used in respect of its
product i.e. Beer under the brand ‘Tuborg’, design which
received registration under the Designs Act. The novelty of the
registered design was claimed to be in the shape and
configuration of the bottle. The grant of injunction as claimed
by Carlsberg Breweries was considered by ascertaining whether
there is sufficient resemblance between the alleged infringing
copy and the plaintiff's registered design leading to an action
for infringement u/s.22 of the Designs Act.
It was held that, not every resemblance in respect of the
same article would be actionable at the instance of the
registered proprietor of the design but the Court is required to
see, in particular, as to whether the essential part of the basis of
the plaintiff's claim for novelty forms part of the allegedly
infringing copy and it was specifically ruled that the task of the
Court is to judge the similarity or difference through, eye alone
and where the article in respect of which the design is applied
10 2017 SCC Online Del 8125
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is itself the object of purchase than through the eye of the
purchaser.
In addition to the aforesaid decisions, Mr. Dhond would
also invoke that the principle of law laid down the following
three decisions from the Delhi High Court :-
(i) Diageo Brands B.V & Anr. Vs Alcobrew Distilleries
11
India Pvt Ltd,
12
(ii) TTK Prestige Ltd V/s. KCM Appliances Pvt Ltd,
(iii) Trodat GmbH & Anr vs Addprint India Enterprises
13
Pvt Ltd & Anr,
17. By relying upon the aforesaid pronouncements, according
to Mr. Dhond, the test to be applied is that of an informed user
having an instructed eye, which can discern if the product is
pirated/infringing the copy of the registered design.
According to him, the test to be applied in meeting the
claim of infringement is comparing the two products side by
side, by an informed man, and it is his specific contention that
this comparison should be made with the original designs
(registered work) and not with the variants.
Coming to the facts of the case, it is the contention of Mr.
Dhond that Atomberg’s fan which received registration was the
only one which deserve comparison with its product which is
alleged to be infringing the design. According to him, in the
original (registered design) the novelty is the Z Shape shaft but
this is conspicuously absent in the other variants. According to
the learned counsel, if the concept of design as defined under
11 2022 SCC Online Del 4499
12 2023 SCC Online Del 2129
13 2025 SCC Online Del 4342
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the Designs Act, revolve around shape, configuration, pattern,
which must be judged by an eye, the design registration
secured by Atomberg in the registration certificate itself would
reveal that the novelty was claimed on the basis of shape and
configuration. The whole view of the article/product (front/
bottom/down) has laid its emphasis on shape/configuration
and it is the contention advanced that in the registration
granted to the plaintiff's product, no where the shaft is part of
the novelty projected. According to him, the novelty was the Z
pattern, but that was not staked as a novelty while the
registration was sought and therefore, it was not even
mentioned by the Controller, but it is open for the Court to
discern as to what is ‘novel’ and according to Mr. Dhond,
though the plaintiff did not claim it nor has the Controller
recognised it.
However, in the subsequent fan of the plaintiff, according
to Mr. Dhond, the ‘Z’ shaft is missing. It is this feature which
the learned Single Judge found to be unique, as the plaintiff
staked a claim upon it by stating that it was a novelty.
However, according to Mr. Dhond, Atomberg cleverly migrated
to its new designs and now seek a comparison with this
modified design which have never received registration where,
the ‘Z’ shape, the unique feature of the ‘registered fan’ was
absent.
Since the test to be applied under the Designs Act, is of an
eye which is instructed and under Section 22, it is imperative to
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establish “fraudulent or obvious imitation”, according to Mr.
Dhond, mere resemblance is not sufficient and what is required
to be established is an imitation, where some efforts are put in,
and has the involvement of mens rea. Definitely under section
22, it is only when during the existence of copy right and
design, any party for the purpose of sale, apply or cause to
apply to any article in which design is registered, the design or
any fraudulent or obvious imitation thereof, where it is
prohibited, though by securing necessary licence or written
consent of the registered proprietor, he may be allowed to do
so.
18. Mr. Dhond would distinguish the decision in case of
Whirlpool (supra) as according to him, the fraudulent intention
can be garnered, only by applying the eye test and comparison
of the product side by side with emphasis on the essential
features. Reliance on variants of Atomberg’s fan with no Z
shaft, would not amount to infringement as they are not the
registered product according to Mr. Dhond.
19. In response to the aforesaid submissions advanced by Mr.
Dhond, Dr. Saraf would rejoin by submitting that the defendant
is not coming with any explanation as to why it chose this
particular design, and particularly, since no prior art was
brought by him on record and it appears to be Stove Kraft’s first
fan brought in the market. According to Dr. Saraf, it was
imperative for the defendant to explain as to how it
conceptualised this particular design. Dr. Saraf is very clear in
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stressing on the plaintiff's stand that the registration sought by
Atomberg was not qua a specific design, but it was on the
whole get-up of the product and that is what the certificate of
registration mentions.
Dr. Saraf would also draw our attention to the dividing
line between the decisions of Delhi High Court and that of the
Bombay High Court, which has applied the test of a common
man/average buyer, whereas the Delhi High Court has applied
the test of an Instructed eye, which is competent enough to pick
up the novelty. According to Dr. Saraf, if the average consumer
is the first step in the claim for infringement and if he is to be
accepted as an instructed eye, ultimately, there must be a
novelty which is noticed, but according to him, Atomberg do
not claim novelty in Z shaft per se. It is his specific contention
that if the defendant has applied the design in case of five other
variants, to its product, it is the case of fraudulent imitation and
the learned Single Judge has failed to apply the correct test and
therefore, the Appellate Court must apply the test of
ascertaining infringement by applying the test of a common
man and not that of an instructed eye.
20. The question that fall for consideration before us is
whether Stove Kraft’s fan is infringing the registered design of
Atomberg applied to the Ceiling fan, for which it has sought
registration, when the claim was staked in regards to its shape,
configuration and pattern, which appealed to and can be
judged solely by the eye.
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Before we proceed to determine the same, it is necessary
to refer to the provisions of Designs Act, 2000, which has been
enacted to protect New and Original designs and visual
appearances of such designs being applied to an article. The
sole purpose of the enactment of 2000 is protection of
intellectual property right of original design for a period of 10
years or whatever further period the protection is extended.
The underlying object in conferring such protection, is to
benefit the person for his research and labour put in by him in
evolving a new and original design and since much thought
process, time and expense may be invested in its
conceptualisation, the design, on being applied to a product,
will enhance its value and appeal. As per the Hon’ble Apex
Court in Bharat Glass Tube Ltd. (supra), the object of design
registration is to see that the originator of the profitable design
is not deprived of the reward by others copying it, by applying
it to its goods.
21. The Designs Act, 2000 defines two important terms viz.
‘Design’ and ‘Original’, as below :-
“2(d) "design" means only the features of shape, configuration,
pattern, ornament or composition of lines or colours applied to any
article whether in two dimensional or three dimensional or in both
forms, by any industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye; but does
not include any mode or principle of construction or anything which
is in substance a mere mechanical device, and does not include any
trade mark as defined in clause (v) of sub-section (1) of section 2 of
the Trade and Merchandise Marks Act, 1958 (43 of 1958) or
property mark as defined in section 479 of the Indian Penal Code
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(45 of 1860) or any artistic work as defined in clause (c) of section
2 of the Copyright Act, 1957 (14 of 1957).
2(g) "original", in relation to a design, means originating from the
author of such design and includes the cases which though old in
themselves yet are new in their application.”
22. The term ‘design’ is thus confined to the features in form
of shape, configuration, pattern, ornament or composition of
lines or colours applied to any article by an industrial process
or means and in the finished article it create a distinct appeal,
which can be judged solely by the eye. The definition
specifically excludes; (a)any mode or principle of construction;
(b) anything which is, in substance, a mere mechanical devise;
(c) a trade mark; (d) a property mark; and (e) an artistic work
as defined under the Copyright Act, 1957.
Thus, the statutory inquiry under the Act is confined to
the features of shape, configuration, pattern etc. in the finished
article, which is capable of an appeal and judged solely by the
eye.
23. Under the scheme of Designs Act, 2000 it is open for the
person claiming to be the proprietor of any new or original
design, not universely published in any country, to make an
application to the Controller for it’s registration and Section 4
of the Act prescribe the threshold parameter for registering it.
A design cannot be registered if, (a) It is not new or original or
(b) It has been disclosed to the public anywhere in India or any
other country by prior publication, use or advise or (c) It is not
significantly distinguishable from known designs or
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combination of known designs or (d) It comprises or contains
scandalous or obscene matter.
It is worth to note that Section 4 of the Act do not require
every individual feature of a design to be new or original, as a
‘Design’ can be new or original in the combination of its
features and the overall visual impression created by it.
Upon registration being granted, the Controller under
Section 7 is duty bound to cause publication of the prescribed
particulars of the design as prescribed, and thereafter, the
design shall be opened for public inspection. Once the design
finds its way in the ‘Register of Designs’ along with the name
and address of its Proprietor, it shall be prima facie evidence of
any matter under the Designs Act, 2000, directed or
authorized to be entered therein.
24. Upon a design being registered, the registered proprietor
of the design, subject to the provisions of the Act, enjoy the
Copyright in the design during 10 years from the date of
registration, which is extended by a further period of 5 years,
upon compliance with the prescribed requirements.
Such Copyright being conferred for the design gives the
proprietor the exclusive right, during its subsistence and in
terms of Section 22, it shall not be lawful for any person to
apply or cause to apply the said design and any fraudulent or
obvious imitation thereof, except with the licence or written
consent of the registered proprietor, shall amount to piracy.
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Section 22 of the Designs Act, 2000 prescribe the
substantive remedy against piracy of a registered design, the
requirement being; (a) It is a fraudulent or obvious imitation of
the registered design; (b) There is import for sale of any article
bearing the registered design or fraudulent or obvious
imitation; or (c) Publication or exposure for sale of such an
article with knowledge that it is fraudulent or obvious
imitation of an article to which design has been applied.
25. A peculiar provision in form of sub-section(3) of Section
22 prescribe that, in any suit or any other proceeding for relief
available upon an action of piracy of registered design, every
ground on which registration of design may be canceled under
Section 19, shall be available as a ground of defence. It is also
relevant to note that Section 19 permit the person interested to
present a petition for cancellation of registration of design any
time after its registration and such application shall be made to
the Controller on the following grounds :-
“(a)That the design has been previously registered in
India; or
(b)That it has been published in India or in any other
country prior to the date of registration; or
(c) That the design is not a new or original design; or
(d)That the design is not registrable under this Act; or
(e)That it is not a design as defined under clause (d) of
section 2.”
26. With this statutory background, we must note the facts
presented before us.
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Atomberg, the plaintiff, began to sell its fan online in
2016 and it introduced a ceiling fan styled as ‘Atomberg
Renesa’ in or about 2018, for which no registration was ever
sought.
In December, 2019, a design was created in house by two
of its employees in the course of their employment, which was
unique and the plaintiff claimed novelty in its shape and
configuration only and it was so designed as per the
instructions given under the Contract of Service.
An application was preferred for registration and on
01/01/2020 the registration was secured for the said design
under the Designs Act bearing Registration No. 325322-001.
We must take note of the said registration, as when
pertinently the plaintiff claimed novelty only in ‘shape and
configuration’ by combining several features and the Certificate
of Registration of Designs certify that design, for which a copy
was annexed has been registered in respect of the application of
such design to ‘Ceiling fan’ in the name of Atomberg
Technologies Pvt. Ltd. in pursuance of the provisions of the Act
of 2000 and the Rules of 2001.
The design accompanying the said Certificate, reflected
the perspective/ front/ rear/ left/ right/ top/ bottom view of
the design applied to the article. It claimed novelty in shape
and configuration of ceiling fan as illustrated. Dr. Saraf has
asserted before us that novelty was claimed only in the shape
and configuration, which combined several features together.
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27. It is the claim of the plaintiff that the aesthetic look and
design along with the aforesaid features of the fan were never
used in combination for any form and there lies its novelty. The
design for which the registration is sought being applied to
the said fan, according to the plaintiff, is distinct than the
design which was applied in its old versions.
Very clearly, the plaintiff stake its claim that it do not
enjoy any monopoly in any independent feature, but the
novelty is claimed in all the features taken together in the
design and, therefore, ultimately it reside in the shape,
configuration and overall aesthetic appeal created by the same,
which would be visible to the consumer, when put on display.
Thus, the plaintiff by combining qualities of earlier
design and by modifying certain features, like shape of the
blade, the body, the canopies and the bottom circular base has
created a new design and this design came to be registered,
conferring the Copyright in the design, which as on date, is
valid and subsisting.
Based upon the registration of the design, Atomberg
claims to have exclusive right to use and/or reproduce the
shape and configuration of the design, and is entitled to protect
the use and application of the said design or prevent any
fraudulent or obvious imitation thereof, in accordance with
Section 22 of the Act.
28. Atomberg, thereafter, decided to use the said design with
slight variation and came up with 5 different models, which are
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still sold in the market and the plaint is accompanied with the
design of all the 6 fan viz. Atomberg Renesa Alpha, Atomberg
Renesa Prime, Atomberg Renesa Prime Regulator, Atomberg
Renesa Zen, Atomberg Renesa Enzel, Atomberg Renesa Prime
Remote with a slight variation , but applying the design which
involved the uniquely shaped blades with a petal-inscribed
curve and each of the blade featuring a symmetric taper, with
one side tapering more than the other.
According to the plaintiff, all the above six brands(s)/
trade mark(s) have been used exclusively in respect of the fan
forming the subject matter of the Suit and it has never been
used in respect of any other fan of the plaintiff, and, therefore,
according to it the reference to the ‘said fan’ include ‘fan’ sold
by the plaintiff under the above six brand(s)/trade mark(s).
The novelty in the design is claimed in it’s shape and
configuration by combining features stated above, with a
specific declaration that the aesthetic look and design
alongwith the said features of the fan had never been
combinely used for any fan and the dominant aspect of the
plaintiff's fan is the aesthetic appeal created by all the features
combined together, and there is no other single fan with the
combination of the aforesaid features and aesthetic appeal.
The claim of infringement was set out in the backdrop of
the fact that Atomberg acquired the statutory and common law
rights in the shape and configuration of the fan and was
entitled to the exclusive use of the same, to the exclusion of
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other manufacturers and/or traders and entitled to protect it
against infringement/piracy and for action of passing off.
29. The defendant's fan ‘Pigeon fan-tastic BLDC Ceiling fan
which which sold on its website www.sto v eKraft.com as well as
other sites like www.amazon.in .; www.indiamart.com .;
www.jiomart.com according to the plaintiff is nothing but an
imitation of its registered design and it was so obvious that
even an informed user having instructed eye would find it
difficult to distinguish the two products.
A comparison of features between the fan of Atomberg
and Stove Kraft as set out in the Plaint deserve reproduction:-
plaintiff's said fan defendant's impugned fan
The plaintiffs said fan has a unique The defendant's impugned fan has an
shape and configuration identical/similar shape and
configuration as that of the said fan
The blades are uniquely shaped with a
petal-inspired curve. The surface flows
in a smooth, continuous flow,
curvature from root to tip
The blades are also of a similar petal-
like curvature and continuous surface
imitating the overall form
Each blade features asymmetric
tapering, with one side tapering more
than the other
Each blade is more rounded with slight
asymmetric tapering.
Where the blade narrows at the edge a
rounded junction (fillet) creates a
smooth transition
The blades show a similar rounded
junction at the taper-trailing edge for
creating a smooth transition.
The blades are uniquely shaped with a The blade also display a similar V-bend
subtle V-bend along their length along their length.
The body is curved, narrowing at the
top and gradually widening towards
the bottom, creating a sleek and
balanced silhouette.
The fan body or the silhouette shares a
similar shape, narrowing at the top and
widening towards the base.
The canopies have a slanted top edge,
matching the fan’s diameter for a
smooth, continuous look
The canopy is also slanted at the top
and aligns with the fan’s diameter.
The bottom circular plastic base of the The bottom base is also circular and
fan features a cut away edge that has similar cut away edge with dip(s).
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creates a dip, that helps to reduce
visual bulk.
30. In the suit filed, the plaintiff staked its claim that the use
of the shape, configuration, design of the impugned fan by
Stove Kraft is detrimental to the distinctive character and
repute of Atomberg fan, as it caused confusion, deception,
customers, informed users and average purchasers and
knowingly and deliberately it has adopted the shape,
configuration, design of Atomberg’s registered design to trade
upon its goodwill.
What is strenuously urged before us by Dr. Saraf is that no
explanation is coming forward from Stove kraft as to how it
invented this particular design, which it applied to its fan and
the adoption and/or use of the very same design which
received registration in favour of Atomberg is not a matter
coincidence.
31. For determining as to whether the product of Stove Kraft
is the imitation of Atomberg’s product/fan particularly as to
whether it has copied the design, which is registered, will be
ultimately tested on the well established Parameters.
As the term ‘design’ has a specific connotation under the
Designs Act, 2000, it is indicative of a particular figure/image
conceived by a Designer in his mind and then reproduced in
some identifiable manner. With the requirement of registration,
the person by whom or in whose favour the figure was
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conceived is entitled for protection and once the design is
registered, a right is conferred on the registered proprietor to
use it and reproduce it on any any article to the exclusion of others.
A design is ultimately an idea or conception as a feature
or shape, configuration, pattern or ornament applied to an
Article. Although the idea, while still in the Author’s/Creator’s
head, may be potentially capable of registration, but in fact it
must be reduced to visible form to be identifiable and until it is
so done, it is not capable of registration and in order to secure
the benefit under the Designs Act, it must be necessarily
placed on a piece of paper in a way that the shape or other
features, drawn are visible to the eye.
Design is thus synonymous to a conception, suggestion or
idea, and it is not an Article or thing, which is capable of being
registered, but the design when made applicable to any article,
whether for the pattern, the shape/configuration or
ornamenting of a feature thereof, or for any two or more of
such purposes, then it receive identity.
32. Keeping in mind the provisions of Section 22 of the Act,
which permit institution of a Suit for infringement by a
registered Proprietor against any person who has committed
the piracy of his registered design, we have to consider whether
in a case before us infringement is made out.
The learned Single Judge of Bombay High Court, Justice
S.J. Kathawalla (as His Lordship then was) in Whirlpool India
Ltd. V/s. Videocon Industries Ltd (supra) answered the said
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question by applying the test in this regard and by invoking
several judicial pronouncements setting out a clear test.
Reliance was placed upon the decision in case of Castrol
14
India Limited V/s. Tide Water Oil Co. (I) Ltd & M/S Kemp & Co.
15
V/s. Prima Plastics Limited , from where a proposition emerged
which constituted the test to decide whether there is obvious
imitation and/or piracy of a registered design, the test being
laid thus :-
“(i) The word 'imitation' does not mean 'duplication' in the sense
that the copy complained of need not be an exact replica.
(ii) The Court is required to see in particular as to whether the
essential part or the basis of the plaintiff's claim for novelty forms
part of the infringing copy.
(iii) The similarity or difference is to be judged through the eye
alone and where the article in respect of which the design is applied
is itself the object of purchase, through the eye of the purchaser.
(iv) The Court must address its mind as to whether the design
adopted by the defendant was substantially different from the
design which was registered. The Court ought to consider the rival
designs as a whole to see whether the impugned design is
substantially different from the design sought to be enforced.
(v) 'Obvious' means something which, as soon as one looks at it,
strikes one as being so like the original design/the registered
design, as to be almost unmistakable.”
In Kemp & Co. the following test evolved :-
“(i) If the visual features of shape, configuration pattern designs are
similar or strikingly similar to the eye, it is not necessary that the
two designs must be exactly identical and same. The matter must be
looked at as one of substance and essential features of the designs
ought to be considered.
(ii) In a given case, where the registered design is made up of a
pattern which has no one striking feature in it, but it appeals to the
eye as a whole, it may very well be that another design may be an
imitation of it which makes the same appeal to the eye
notwithstanding that there are many differences in the details. (The
opinion of Farwell J. in Dunlop Rubber Co. Ltd. v. Golf Ball
14 (1996)16 PTC 202
15 1998 SCC Online Bom 437
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Developments Ltd. was cited with approval).
(iii) In comparing rival designs the Court is required to see whether
the impugned design/product is substantially different to the design
which is sought to be enforced.”
33. The Jurisdiction of the learned Single Judge was invoked
by Whirlpool Corporation, claiming to be the world’s leading
manufacturer of home appliances globally and a pioneer in the
manufacture and sale of washing machines, who obtained two
design registrations and while they were valid, subsisting and in
force, it came across the washing machine manufactured and
marketed by Videocon Industries Ltd, under the brand name
‘Videocon Pebble’. It was alleged that it had virtually the same
and/or similar design and features of shape and configuration
as that of the plaintiff's product and the design registered by
it.
Whirlpool pleaded that a bare look at the product of
Videocon made it absolutely evident that it is a complete copy
of its product and the shape and/or configuration was almost
identical to its own machine. It also pleaded a case that not
only the individual features and/or components were copied,
but even the combination thereof was replicated as even the
distinctive colour scheme and/or two tone combination which
was employed by the plaintiff was also copied, making two
products, indistinguishable on an initial look.
Videocon, however, staked a claim that its registered
design was substantially different from the registered design of
Whirlpool’s washing machine and the learned Single Judge
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deemed it appropriate to apply the well recognized test of
‘Judged solely by the eye’.
On examining the products of the rival companies, being
physically produced before it, Justice Kathawalla (as His
Lordship then was) arrived at a conclusion that the machine of
Videocon was almost total replica of the Whirlpool’s design,
barring one or two minor variations, like the control panel
instead of three nobs and one outlet point. However, on a
physical comparison of the two products, a conclusion was
derived that the slight variation did not detract from the
overall identity of the two, and in fact, the defendant's product
is substantial reproduction and/or imitation of the plaintiff's
design.
Videocon adopted a specific defence that it has been
manufacturing large number of washing machines with diverse
shapes and designs and, therefore, it had no intention to
replicate, but J. Kathawalla arrived at a conclusion that the
offending design has been devised with an intention of copying
the plaintiff's design and had Videocon genuinely wished to
adopt different design, many other options were available to it
without replicating whirlpool’s design and/or products.
Referring to the figures pressed into service by the
plaintiff in regards to its sales and the fact that its machine
had become immensely popular within a period of two years,
the reason for defendant replicating the plaintiff's product
became evidently clear to the learned Single Judge and the
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contention of the plaintiff that once the explanation offered by
the defendant in regards to its product was found to be
unbelievable and specious, the Court did not hesitate in
deriving a conclusion that Videocon had copied the plaintiff's
design.
34. As far as functionality aspect is concerned, the learned
Single Judge laid down a proposition of law which has been
subsequently followed in various authoritative pronouncements
by the Bombay High Court, and we deem it appropriate to
reproduce the relevant observations :
“46. The defence attributing features of the plaintiff's design to functional
requirements also cannot be accepted. This is evident from a bare perusal
of the plaintiff's registered designs. As correctly submitted on behalf of the
plaintiff, the plaintiff has not sought any monopoly in any functional
feature and/or element. As is evident from the plaintiff's registered
design, the novelty that is claimed by the plaintiff is in the shape and
configuration of the washing machine as illustrated i.e. the shape and
configuration of the machine as a whole. The functional elements of a
washing machine are inside the washing machine viz. the drums and/or
apparatus which is used for washing and drying clothes. The shape of the
outer receptacle inside which the washer and dryer units are contained is
governed by aesthetic considerations since this appeals purely to the eye.
Every semi auto washing machine has a washer and a dryer and a set of
buttons or knobs which operate both dryer as well as washer. Despite this,
the outward appearance of different washing machines is different. The
defendant itself has any number of models of semi automatic washing
machines which have/had a washer, dryer and knobs and/or controls.
These look completely different from the impugned product. Also besides
a mere argument of functionality, no material whatsoever had been
produced to show that the outside receptacle or outer body and/or control
panel of the machine could not have been different and owe their present
form solely to functional considerations. For a defence of functionality to
succeed, it is not enough to say that the form has some relevance to the
function. If a particular function can be achieved through a number of
different forms, then a defence of functionality must fail. For the defence
of functionality to succeed, it is essential for the defendant to establish
that the design applied for is the only mode/option which was possible
considering the functional requirements of the products. Even otherwise,
as submitted by the plaintiff assuming that the shape also performs a
certain function, that by itself is not determinative of the fact that the
design is functional if that is not the only shape in which the function
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could be performed. In the case of Cow (P.B.) and Coy Ltd. v. Cannon
Rubber Manufacturers Ltd. (cited at page 75 of the majority judgment of
the Delhi High Court), the court held that there may be cases where the
design while fulfilling the text of being appealing to the eye is also
functional. In such cases, the conundrum of functionality is resolved by
taking note of the fact that it would make no impact on the articles
functionality, if the function could be performed by the use of another
shape as well. The fact that there are umpteen number of shapes in which
washing machines are sold clearly shows that the external shape has
nothing to do with the function sought to be performed. In the present
case, it surely cannot be argued that the constraints of functionality were
such that the plaintiff's design was the only design which could have been
devised. Since the external shape of the plaintiff's washing machine has
nothing to do with the function it performs and since the plaintiff in the
present case is seeking enforcement of its entire design and not an
individual component thereof, the case law cited by the defendant in
support of its defence attributing features of the plaintiff's design to
functional requirements, has no bearing on the present case.”
35. Dealing with the defence raised to the plaintiff's
registration that it lacked novelty as there was no new, novel or
original shape in the plaintiff's design, and rather it was the
combination of known designs, it was held that the plaintiff's
product had a design and/or shape which was distinctive and it
was a novel combination of a distinctive circular shaped wash
area, an equally distinctive rectangular shape dry area and the
uniquely placed and/or designed panel. By placing reliance
upon the decision of the Division Bench in Asian Rubber
16
Industries Limited V/s. Jasco Rubbers, it was held that the
defendant cannot be heard to urge lack of novelty in the
plaintiff's design, as the defendant themselves claimed to be
registered proprietors of the design, and therefore, even this
contention of the defendant came to be rejected.
16 2012(5) Mh.L.J. 548
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36. In determining the claim of passing off, since Videocon’s
product was found to be almost in identical in shape and
configuration pattern as that of Whirlpool and rather they were
found almost identical, as the learned Judge had an
opportunity to see both the products as they were brought to
the Court, the test applied was, whether the similarity was so
striking that the two appear to be deceptively similar. The
Judge also applied the test as to what appeal to the eye of the
Judge on the first impression, and this impression, according to
the learned Single Judge had to be of a person with average
intelligence and/or imperfect recollection.
By applying the test of the potential customer for a
washing machine, it was held that a customer who had visited
somebody’s house and had seen or heard the reports about the
plaintiff's product and who had its fleeting glimpse, but have
received positive reports about the machine, without naming
the brand, and if such a person come across the defendant's
washing machine, he/she would immediately believe that this
is exactly the same machine which was seen at the residence of
someone or in the photographs or advertisements, and would
assume that it is the plaintiff's product or was associated with
the plaintiff and therefore, an action for passing off was made
out.
37. The view expressed by the learned Single Judge is
consistent with the view of the Division Bench and the
judgment authored by Justice N.M. Jamdar (as His Lordship
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then was), also applied the test of judging through eye alone.
The Division Bench which was hearing an Appeal from the
interim order passed, affirmed a finding of the learned Single
Judge, by taking note of the shape and configuration of the two
machines, since Whirlpool claimed novelty in its shape which
had certain appeal to the eye.
Noting that it is this shape which had created value in the
product, which may not be relatable to improved functionality
but may be desirable, the Bench found that the trial Judge was
right in holding that Videocon has infringed the design
registered by Whirlpool and rightly the test applied was judging
solely by the eye alone and his conclusion that both the
machines are similar cannot be faulted, and therefore, the case
was made out under section 22(1)(a) of the Designs Act.
As far as the action of passing off is concerned, when
reliance was placed on the judgment of U.K. Court of Appeal in
17
Lancer Trade Mark, when the Court was considering the
infringement of trademark of an automobile Lancia by the mark
‘Lancer’ and it was observed that by the nature of the goods
(i.e. Automobiles), which is not to be equated with everyday
purchase over shop counter, risk of confusion between the
products of misrepresentation was ruled out.
38. An argument was canvassed before the Division Bench
that washing machines are sold in large shops often with other
machines and all washing machines have their brand names
prominently written on them and the consumer of these
17 1987 R.P.C. 303
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machines is normally educated class and therefore, there is no
question of any confusion, as the consumer makes conscious
choice and there is no passing off. The Division Bench found
that the test indicated in Lancer Trade Mark (supra) which was
a case of automobiles, is not applicable to washing machines as
the class of buyers for automobiles is different and definitely
exhibit high degree of brand consciousness.
Commenting upon the argument canvassed about the
functionality, the Division Bench found that the novelty lied in
the design, which desired to make the article/product more
attractive and was not intended to add functionality to the
product and what Whirlpool by applying the design to its
machine did, was to make its washing machine otherwise a
piece of machinery to make it look more artistic and appealing
to aesthetic sense. Very pertinently, the Division Bench
observed :-
“The design seeks to appeal to the heart rather than to the
head, to use in common parlance. Once the consumer likes
such a design, then the choice is made on aesthetic values
rather than solely on functionality.”
In addition, the claim of Videocon for adopting this
particular design, in absence of any specific reasons being
placed on record, did not warrant any consideration from the
Division Bench, which expressed a clear view that Videocon
attempted to take advantage of the popularity of the design of
Whirlpool washing machine.
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39. Applying the principle laid down in the case of Whirlpool
by the learned Single Judge as well as the Division Bench, what
is strikingly noted by us is the test applied to find a similarity of
the two products and this test being ‘judging through eye alone’
and the eye is of the consumer of average intelligence.
18
In Benchairs Limited V/s. Chair Center Limited, where
the design was applied to a chair, it was held that in judging the
articles solely by the eye, the Court must see whether the
defendant''s version is an obvious or a fraudulent imitation.
Russell L.J in facts placed before him observed thus :-
“As we see it, our task is to look at these two chairs, to observe
their similarities and differences, to see them together and
separately, and to bear in mind that in the end the question
whether or not the design of the defendant''s chair is substantially
different from that of the plaintiff is to be answered by
consideration of the respective design as a whole: and apparently,
though we do not think it affects our present decision, viewed as
though through the eyes of a consumer or customer.”
40. Atomberg has claimed novelty in its shape and
configuration, which according to it, is a result of combination
of several features involving the blades which were uniquely
shaped, the curved body narrowing at the top and gradually
widening towards the bottom, creating a sleek and balanced
silhouette with the canopies slanted at the top edge, matching
the fan’s diameter for a smooth, continuous look coupled with
the bottom circular plastic base of the fan featuring a cut-away
edge that created a dip, helping to reduce the visual bulk. Very
pertinently, we have noted that the Z-shank on which emphasis
is placed by Stove Kraft to distinguish its product is not an
18 1974 RPC 429
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aspect of the design in which Atomberg claimed novelty, but
according to it, it is merely a mechanical feature/means of
connecting the blades of the fan to the motor assembly.
41. In the application which was preferred to the Controller
for Registration and which was granted, emphasis was laid on
the perspective/front/rear/left side/right/top view/bottom
view and novelty was claimed in the shape and configuration of
the ceiling fan and no claim was staked in respect of any
mechanical or other action of mechanism or in respect of any
other mode or principle of construction of the article.
42. Apart from the comparative table which form part of the
plaint and the compilation of photographs of the fan of the
plaintiff with the registered design applied in all six variants,
the competing fan were also produced before us during the
course of hearing, and we had an opportunity to examine the
design applied to the product of the plaintiff and defendant.
While advertising the product, Renesa Alpha, though
Atomberg highlighted its features, it also emphasized on its
sleek design and on the efficiency of the fan along with a tag
line “A range which suits the aesthetic of every home”.
A comparison of the two products is undertaken by us
keeping the fan side by side, and we have compared them with
reference to blade design, shank design, canopy design, motor
housing and housing lid.
On comparison, we note that the blade design with
reference to the angle of the blade is prima facie identical
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except that on the plaintiff's product, there are four rivets and
on the defendant's product, there are three rivets. As far as the
shank design is concerned, though much emphasis is laid
during the course of argument by Mr. Dhond upon the ‘Z type’
profile which is absent in the defendant's product, which has a
straight profile, we find that when actually the shank portion is
carefully examined, the only difference on close perusal is that
the plaintiff's shank design has a squarish profile as against the
defendant's product which has a radial profile, but obviously,
this is only when we consider it part by part. Similarly, the
canopy design of Renesa Alpha is a circular profile but that of
the defendant is not circular and as far as motor housing is
concerned, it appear to be identical as the machine is mounted
on a stack and a small triangular shape for housing the machine
on the defendant's product it not actually visible to the eye, so
as to draw a distinction.
Atomberg has staked a claim in the plaint as well as
before us that the novelty of its design is the Shape and
Configuration and it is on account of various features being
compiled together creating a visual appeal, and that is where
we need to compare Atomberg’s Renesa Alpha with its
variations and the defendant's ‘Pigeon fan-tastic’.
A very minor change is noticed in the positioning of the
blade or in that of a canopy with slight change in the number of
rivets resembling the corners of the rectangular/triangular
integrating shank/blade, is the only thin distinction, but when
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the two fan are compared when all the features being
combined, they appear to be similar and identical in its design
which is registered by Atomberg by claiming novelty in the
shape and configuration.
43. In the plaint, the plaintiff pleaded that its fan for which
registration was secured and the other five variants, based on
the said design, the novelty is in its shape and configuration,
and with the combination of distinct features, it being applied
to an article/product which bear an aesthetic look and design,
due to these features and the claim is that the said features
were never being combinedly used for any fan in the past.
The grant of registration in favour of Atomberg in class
23-04, is granted by taking into consideration the novelty which
resided in the shape and configuration on the design being
presented and examined from various perspectives i.e.
front/rear/left/right/top/bottom view. The design which
secured registration at the hands of the Controller bearing No.
325322-001 captured from distinct angles reflect thus :-
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44. The overall get-up of the plaintiff's product and captured
from different view is depicted thus :-
Appellant’s said fan with different views
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Appellant’s said fan with different views
45. When the subject fan and the infringing fan of Stove Kraft
was placed for our viewing, we have noticed that when the
ceiling fan is hanged from the ceiling, what immediately
catches one’s attention is the canopy which holds the blades
and the shape of the blades. The manner in which the blades
are fitted becomes irrelevant as the aesthetic appeal lies in the
petal shaped blades with the surface flowing in smooth,
continuous curvature from the canopy. The shank design and
in particular, ‘Z’ type profile which is highlighted by Mr. Dhond
as a feature/ novelty in the plaintiff's registered fan is not at all
visible unless and until a consumer decides to dissect its parts
separately/ individually.
What caught our eye was uniquely featured blades with
asymmetric tapering with one side tapering more than the
other and the blade narrowing at the edge with a subtle V-bend
along with its length. The shape of the blade noticed by us
clearly reflected its narrow shape at the juncture, where it was
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attached to the canopy and its gradual widening towards the
end with a slight roundish ending.
Thus, we could notice that the uniqueness and novelty
lied in the blade design and the shank design with the Z type
profile in the plaintiff's product actually was not evident to the
eye, as it gets submerged into the canopy where the motor is
placed. Though in the original design, the housing lid was
opaque, it was varied subsequently and in any case, merely
because it emits light, cannot be considered as a dissimilarity.
46. Further, the comparison of the two products from the top
and bottom view, would also reflect the striking similarity as the
two products placed before us are depicted as below :-
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47. The aesthetic value of the product, a ceiling fan ultimately
lies in the placement, length of its uniquely shaped blades and
shall not necessarily depend upon the shank design or the
number of rivets and what appeals to the eye are the blades
and what deserve comparison is the profile of the blade.
The two images which we have reproduced, reflecting the
top and bottom view, comparison of the suit fan and the
infringing fan would bring about the striking similarity between
the two products. In any case, the emphasis laid by Mr. Dhond
on the Z-shaped integration which, according to him, was the
novelty in Atomberg’s registered design, but which is not
subsequently adopted in respect of the other fan manufactured
by it i.e. Atomberg Renesa Prime, Renesa Prime Regulator,
Renesa Zen, Renesa Enzel and Renesa Prime Remote lack the
said uniqueness.
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On physical verification of the two articles/products
placed before us, the Z-shape attachment/shaft is not visible to
naked eye and the variations of the design which is registered
and applied in Atomberg Renesa Alpha, which has subsequently
been concealed in the further variants, is evidently clear. We
would also like to reproduce the six variants being the articles
on which the registered design has been applied.
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48. Atomberg’s case is very specific that it combined various
features with the emphasis on the unique shape of the blades,
the body of the fan featuring a curve, narrowing at the top and
widening towards the bottom along with canopies with slanted
top edge and the bottom circular plastic base of the fan,
creating a dip helping to reduce the visual bulk.
Atomberg does not claim any monopoly in its
independent features, but the monopoly is claimed in all the
features combined together resulting into a design which has
created an aesthetic appeal visible to the consumer, when put to
use.
49. The Designs Act focuses on the features of shape,
configuration, pattern ornament or composition of lines or
colours applied to the article, which in the finished article,
appeal to the eye.
In terms of the Designs Act, 2000, “original” in relation to
a design, means originating from the author of such design and
shall include cases where it is applied in a new form. In our
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view, a comparison between the two products for the purpose
of design, focus shall be on the aesthetic appeal created by the
features, when combined together and it is not the functional
aspect of such adoption which warrant any consideration, as it
is not relevant for asserting the alleged piracy or infringement
by the defendant.
Atomberg has not sought any monopoly on any functional
feature, as the novelty is claimed only in respect of the shape
and configuration. In any case, it is settled position that the
defence of functionality is not available while testing whether
there is an infringement of the design by the defendant, as it
has no relevance to the aesthetic appeal and if a particular
function can be achieved through a number of different forms,
then the defence or functionality must necessarily fail.
A ceiling fan involves blades, a canopy and since it is
ceiling fan, a hanging rod. Its uniqueness would lie in the
shape of its blades, including its length, breadth, placement,
unique shaping and it is this novelty of a design when put up
before the Controller receive recognition and was registered.
50. The defendant Stove Kraft, in its reply filed, opposing the
application for grant of interim injunction has specifically
pleaded that it is engaged in manufacturing and selling of
various products under its popularity, brand and trademark
“Pigeon” and this include the revolutionary “Pigeon BLDC fan”
which is designed with advanced dual-motion technology and it
delivers a refreshing, uniform breeze that transforms the space
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into a haven of cool and balanced air. Setting out it is
engineered to deliver smart, year-round comfort, emphasis is
laid on its unique dual motion capability as the fan can rotate
clock-wise to create a cool refreshing breeze during summer
and counter clock-wise to circulate warm air in the winter.
It is specifically pleaded in the reply that Stove Kraft
conceived and integrated the distinctive and novel features in
the overall shape, configuration and ornamentation of the fan
and recognising the commercial and intellectual value of the
unique design elements, it filed an application for design
registration before the Controller of Patents & Designs, Patent
office at Kolkata as early as on 21/2/2025 in Class 23-04 by
invoking the provisions of the Designs Act, 2000, its intention
being to protect its exclusive right over the visual appeal and
ornamental aspect of the fan, thus preventing its unauthorised
imitation or reproduction.
51. What is attempted to be seriously contested before us by
the defendant, is what is liable for comparison with its product
is only the fan which has applied the design registration
secured under No.325322-001 and therefore, the comparison
with other variants of Atomberg’s fan is irrelevant and this is
what the plaintiff is exactly attempting to do.
We do not approve of the said contention as we find that
when Atomberg sought registration from the Patent office for its
design, number 325322-001, the certificate issued by the
Controller General of Patents as certified as below :-
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“Certify that the design of which a copy is annexed hereto
has been registered as of the number and the date given
above in Class 23-04 in respect of the application of such
design to the ceiling fan in the name of Atomberg
Technologies Pvt. Ltd. Navi Mumbai, Maharashtra, India.”
52. The Certificate is accompanied with the application
comprising of seven sheets, highlighting the design with it’s
different view, and we must clarify that Atomberg secured
registration of it’s design, which combined various
features/pattern and it applied the said design to its various
models. It is worth to note that the design is not sought
against a particular model, but the design which is registered
was applied to various models of fan manufactured by it,
though its first application from November 2020 was to
Atomberg Renesa Alpha and for the subsequent periods, it was
also applied to other variations, as we find that with
advancement of time, the variations were made by applying the
said design, by adding feature of remote, light etc. The case of
the plaintiff seeking infringement is based on all the six
variations manufactured by it by applying the design
registration No. 325322-001.
53. A comparison of the variations of the fan of the plaintiff,
i.e. Atomberg Renesa would reveal to us that every variation
has added some additional functionality like the regulator,
remote, light, panel etc. but the design for which the
registration is secured is applied in all the six models, including
the first model Atomberg Renesa Alpha, and the plaintiff has
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specifically pleaded its case to the effect that all those six
brand(s)/trade mark(s) are the fan sold by it and the
comparison of the infringing fan of Stove Kraft is with ‘said fan’
which shall include the fan sold by Atomberg under the six
brand names.
In any case, since the functionality of a particular article
will not be determinative of its uniqueness, but the innovation
lie in its aesthetic appeal, as different products serving the same
purpose may be designed differently, it is the innovation in
achieving this object in form of shape and configuration deserve
registration. If a product is designed with the purpose of
making it more attractive to the buyer, by giving it a particular
pleasing shape, then the innovation lies in this aesthetic appeal.
54. When the rival designs are called for comparison, then
the test applied by which it is to be tested is of placing them
side by side and assessing the product/article as a whole.
In Cello Household Products & Anr. V/s. Modware India,
and anr, (supra) the learned Single Judge of this Court (G.S.
Patel, J, as His Lordship then was), while he was dealing with
an action in design infringement and passing off, the design in
question being of a plastic water bottle.
Cello Household, the plaintiff claimed to have designed a
unique water bottle, which had novelty and originality and the
claim was based on the shape, configuration and surface
ornamentation of the bottle.
Modware, the defendant brought a product into the
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market, which according to Cello was indistinguishable in
every respect, and hence, it brought an action for infringement
of and passing off. The plaintiff's bottle ‘PURO’ claimed
novelty in its shape, configuration and surface pattern making
the design aesthetically appealing and attractive and the
plaintiff combined various features to create a design, which
according to it, was novel. After drawing a comparison
between the features of the two products and they being placed
before the learned Single Judge, he questioned “Which is
whose?”. Taking note of the confusing and deceptive similarity
of Modware’s product to that of Cello, he deemed it
appropriate to grant the relief in its favour.
Dealing with the submissions advanced on behalf of
Modware, that “a bottle is a bottle, by whatever name called as
it is a container of a liquid, it is taller than wider, and then
there lies the distinction”, it was pleaded that there is neither
novelty nor originality in Cello’s claim as to ‘shape or
configuration’ as there are many bottles in the market which
are in form of tall cylinders with screw tops or flip top lids and,
therefore, Cello lacked originality.
55. The learned Single Judge dealt with the said submission
by applying the test laid down in Whirlpool (supra) and
observed thus :
“20. Section 22 of the Act thus gives the registered proprietor a right
to relief against “any person” who applies the design of the registered
proprietor to any article of the class of articles in which the design is
registered. The words” any person”, which are used without any words
of limitation, ordinarily must be given their plain and natural meaning -
namely, any person whosoever - unless the statute compels by reason of
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the context in which the words “any person” are used or by reason of the
other provisions of the Act to restrict the meaning of the words to “any
person other than a registered proprietor”.
22. It is necessary to understand what right is conferred on the
registrant of a design under the Act and then analyze the provisions of
Section 22 in the light of such right. Section 11 provides that the
registered proprietor of a design shall have Copyright in the design for
ten years commencing from the date of registration - meaning thereby,
the exclusive right to apply the design to any article in the class in which
the design is registered. But such exclusive right is, as noted above,
“subject to the provisions of the Act”. These provisions include Section
4 (which contains a prohibition for registration on certain grounds),
Section 6 (registration to be in respect of particular article) and Section
19 (cancellation of registration on certain grounds which include
grounds under Section 4). Section 22 itself is one of the provisions to
which such exclusive right is subject and this has distinct implications
for a registered proprietor - whether such proprietor be a plaintiff or a
defendant. From the plaintiff's point of view, the exclusive right which a
registered proprietor can claim against “any person” and on the strength
of which he can claim relief under Section 22 against such person, is
itself subject to the restriction contained in sub-section (3) of Section 22,
namely, the plaintiff - proprietor's registration should not be liable to be
cancelled under Section 19 of the Act. If it is held to be so liable, that is
a complete defence to the plaintiff - Proprietor's action for claiming
relief under Section 22. Equally would the provisions of Section 22 be a
restriction on the defendant - Proprietor's exclusive right to apply his
registered design to his articles. The defendant - proprietor would have
a complete defence to the plaintiff - Proprietor's action only if his (the
defendant's) registration is prior in point of time, since such prior
registration is a ground for cancellation of the plaintiff's registration. A
defendant proprietor, who holds a subsequent registration cannot plead
his subsequent registration in defence to an action under Section 22,
since a subsequent registration is no defence within the meaning of
Section 22(3) read with Section 19. That is an obvious consequence of
Section 22 from the defendant's point of view.”
With the above observation, the argument thus was
rejected.
56. On the aspect as to how the design was adopted by the
defendant and a defence being raised, based on Section 4(1)(c)
of the Designs Act that the plaintiff's bottle is not significantly
distinguishable from known designs or a combination of known
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designs, and the argument being advanced that ‘bottle is a
bottle’ and is always only a bottle, and only an expert can tell
the difference between one bottle and the other, even this
argument received a rejection, with the following observation :
“ 36 . A look at the above comparative charts along with the charts set
out/annexed to the Plaint and the affidavit in rejoinder of the plaintiff
giving a comparative analysis of the common features and similarities
of the defendant's product and the plaintiff's registered designs
establishes beyond any doubt that the defendant has
slavishly/brazenly copied/imitated the plaintiff's design which clearly
satisfies the test for infringement and/or piracy as laid down in the
judgments in Castrol (supra) and Kemp (supra). Therefore, by no
stretch of imagination, can it be said that the defendant's products are
substantially different from the plaintiff's registered design”
57. When we compared the rival designs of the competing
fan as a whole, by applying the principle laid down in Cello
(supra), that the Court must consider the visual impression and
visual appeal of the products rather than dissecting the designs
into individual features or treating isolated similarities and
differences as decisive, from the comparison of the two
products placed before us, and particularly when Atomberg
never claimed novelty in its Z-shaped shaft, and never sought
its registration as a part of the ‘design’, the emphasis on the said
feature can be no ground for bringing the distinctiveness.
For judging the similarity or difference between the two
products in question, to which the design is applied by
Atomberg, the test to be applied is judging through eye alone,
and it should be the purchaser of the said product who shall
judge the similarity or dissimilarity between the two products.
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Though we find that both the parties have placed
comparative charts in their pleadings, in our view, the
comparison on paper is not determinative, but what appeals to
one’s eye shall be the determinative factor to point out the
existing differences and the similarities in the two rival
products. We, therefore, had an opportunity to view the rival
products and have recorded our observations in the aforesaid
paragraphs.
58. We have reached the above conclusion, by comparing the
products by physically viewing them, when we look at it from
the point of an average consumer or purchaser of the goods,
and necessarily the test of an average consumer as laid down in
Whirlpool (supra) must apply.
We are guided in reaching the above conclusion by the
illustrations set out by Justice S.J.Kathawalla, (as His Lordship
then was), in Whirlpool about the potential consumer, who is
desirous of purchasing a washing machine and who had a
fleeting glimpse of this machine at someone else’s house or had
seen this machine in an advertisement or photograph that were
displayed, he was impressed by it’s distinctive shape and
appearance and that leads him to purchase a washing machine
with that image in his mind.
Applying the said test to a ceiling fan, a purchaser here is
an ordinary/common man, who is impressed by the novel
design of the fan manufactured by Atomberg, though he may
not recollect the name of the manufacturer, but what impressed
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him was its aesthetic appeal i.e. long blades with peculiar shape
and curvature. This common man with average intelligence and
imperfect recollection is often led to buying of a product of the
defendant, in the wake of the confusing similarity. As we have
already indicated that the Z-shaped shafts are not visible when
a ceiling fan is hanging from the ceiling, and what can only be
seen is its shape and configuration, which becomes unique on
account of the shape of its blades and therefore, the average
consumer would be misled to buy the product of the defendant,
which is strikingly similar to that manufactured by Atomberg.
59. The learned Single Judge of the Delhi High Court in TTK
Prestige Ltd (supra) has crystallised the law revolving around
“design” and has enumerated the principles emerging from
various decisions and amongst the various principles that have
been crystallised, what is relevant for our purpose is to take
note of the following take aways in paragraph no.134 of the
said decision :-
(i) The sole purpose of the Designs Act is protection of
novel and original designs, for the benefit of the person who has
expended time, research and labour in conceiving it.
(ii) While ocular appeal is the definitive test of a valid design,
what may appeal to one may appear bizarre to another. The
corollary would, therefore, be that the Court, while examining
the ocular appeal of a design, should not apply its own
subjective standards.
(vi) “Design” is defined, in clause (d) of Section 2 as
meaning only the features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any
article. A design cannot, therefore, be a mere concept or idea.
While it is true that the Designs Act protects the concept or idea,
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which is new or original, the right to such protection enures only
when the idea becomes a “design” under the Designs Act, which
requires its application to an article. Sans any article, therefore,
there can be no design. The design must be intended to produce
an article by industrial application, though the “design” is not
the article itself, but “the conceptual design containing the
features of a shape, configuration, pattern, composition of lines
etc”.
(vii) The burden to show that a design is not entitled to
registration for want of novelty or originality is on the person so
asserting. Novelty and originality necessarily predicate the
absence of any prior publication of the design, or of the design
having earlier been made known to the public.
(ix) Registration of a design amounts to facial satisfaction of
the existence of novelty and originality in the design, as well as
the absence of any prior publication thereof.
(xiv) A design which exists in the public domain, but the
application of which, to an article, is new, would be novel. It is
not necessary, therefore, that the design is “totally new”. An
existing design, apply to an article in a new manner, in which
manner it has not been earlier applied to any article, would also
be entitled to registration.
(xv) At the same time, the design, in order to be entitled to
registration, must be new vis-à-vis prior art. The novelty must be
substantial, not trivial or infinitesimal. Ultimately, it would be
for the Court to compare prior art and the asserted design to
determine whether the asserted design actually possesses
novelty vis-à-vis prior art, or is merely the prior art with mild,
trivial or trade variants.
(xvi) The test to assess whether the features of a design, which
are not present in prior art, actually impart novelty or are mere
trade variants, is the test enunciated in Phillips, which is that if it
is common practice to have, or not to have, spikes in the soles of
running shoes, a man does not make a new and original design
out of an old type of running shoes by putting spikes into the
soles.
(xix) Registration of a design is article specific. What is
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protected is, therefore, not the artistic effort solely in the form of
an idea, but as an embodiment in a commercially produced
artifact.
(xxii) While a purely functional design is not entitled to
registration, a design which has both functional and aesthetic
attributes, is so entitled.
(xxiii)While the perspective of the consumer, who views the suit
design with an instructed eye which is aware of prior art,
undoubtedly forms the definitive test to assess infringement, the
issue of whether the customer would purchase the product for
its aesthetic appeal for its utilitarian advantages is irrelevant.
Where the suit design possesses aesthetic value, and the novel
features that lend it such value are replicated in the defendant's
design, piracy has taken place.
60. The learned Single Judge in TTK Prestige (supra) applied
the aforesaid principles to the case before him which involved a
design registered in favour of the plaintiff in form of “Pressure
Cooker with Container and Lid Set for Household” and the
certificate of registration issued considering the front/back/
right/left/top/bottom and perspective view of the design and
each of the projection being accompanied with the following
note :-
“Novelty resides in the shape and configuration of the
PRESSURE COOKER WITH CONTAINER AND LID (SET) FOR
HOUSEHOLD as illustrated :-
No claim is made by virtue of the registration in respect of
any mechanical or other action of the mechanisms
whatsoever.
No claim made by virtue of the registration in respect of any
mode or principle of construction of the article.
No claim made by virtue of the registration in respect of
colour or colour combination.
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No claim made by virtue of the registration in respect of
words, letters, number or trademark.”
Applying the principles so crystallised, in determining the
aspect of piracy/infringement by the design of the Impex
Dripless pressure cooker, which was argued to be not infringing
the suit design in the wake of the significant differences, the
learned Single Judge expressed his disagreement.
While comparing the two products, the similarities were
noticed by recording a finding that the defendant's Impex
Dripless Pressure Cooker is similar in shape to the container of
the suit design and even the shape of the lid is also similar.
Barring superficial differences in shape, it was found that there
was no substantial difference between the two lids as the lid of
Impress Dripless pressure cooker also had a central depression
portion in which froth can be collected and evaporated.
Since no earlier design except the design of the Pressure
Cooker on You-tube video was brought to the notice of the
learned Judge, a following conclusion is recorded :-
“152. The differentiating features, as tabulated by the defendant
in para 19 of the written statement and reproduced in para 17
supra, are clearly merely trade variants, or functional differences
attributable to the different capacities of the pressure cookers. The
heights of the lid and of the container are obviously because of the
difference in capacity of the pressure cookers. If one compares the
shape and configuration of the lids of the 5 l and 8 l pressure
cookers, except for the height of the containers and lids, there is
no difference whatsoever. The same shape and configuration, but
for insignificant trade variations such as the “width” of the raised
wall of the lid, exist, between the suit design and the impugned
design of the Impex Dripless Pressure Cooker of the defendant. All
other differences, such as the “straight moulding of bakelite”,
minor change in the shape of the handle, shape of the base, etc.,
are insignificant in the light of the overall shape and configuration
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of the pressure cooker itself, and, vis-à-vis the shape and
configuration of the lid, which is the feature which mainly imparts
novelty to the suit design, are even more inconsequential.
153. Most significantly, the defendant has clearly borrowed the
idea of the central depressed portion of the lid for collection and
evaporation of froth, thereby resulting in spillage control, from the
idea devised by the plaintiff. No other source, from which the said
idea was adopted by the defendant, has been brought to my
notice. Prima facie, therefore, a clear case of piracy exists.
61. Mr. Dhond would rely upon the test of identification of
piracy as crystallised in TTK Prestige. He would also rely upon
another decision by the same learned Judge of Delhi High
Court in Diageo Brands B.V V/s. Alcobrew Distilleries India (P)
19
Ltd, .
The design for comparison before the learned Single
Judge was the one which was applied to a 180 ml bottle, a
“Hipster” in which the alcoholic beverages are packed and sold.
Examining the said design from its various views, it was found
that the plaintiff asserted proprietorial rights even in its
trademark. The certificate of registration granted in respect of
the said design certified that the novelty resided in each view
(aspect) of the registered design “in the shape and
configuration of the bottle” as illustrated.
Though registration did not allude to any particular
feature of the bottle as being specifically novel, novelty,
therefore, was claimed to be residing in its overall shape and
configuration.
62. The defendant is manufacturing and selling whiskey
under the trade name “Golfer’s shot” in a bottle/flask and it was
19 2022 SCC Online Del 4499
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alleged that this design infringed the suit design. The plaintiff
claimed that the suit design had become exclusively identifiable
with the plaintiff and its product and it emphasized on the
goodwill which the design had garnered over a period of time
by relying upon the upto date sale figures. It was alleged that
the defendant intended to take benefit of this goodwill and
therefore, imitated the design of the plaintiff, so as to confuse
purchasers of the plaintiff's product which was sold as “Pocket
Scotch”. It was alleged that all distinctive elements of the suit
design were replicated by the defendant in the impugned
design and the similarity between the two was so glaring that
the customer, would invariably associate the defendant's
product with that of the plaintiffs, especially when the products
would be placed next to each other on the shelf. As the
defendant's product was cheaper than the plaintiff, it was
pleaded that the defendant is eating – or rather drinking – into
the plaintiff's market.
A decree of permanent injunction was therefore, sought
against the defendant, restraining it from promoting or selling
its product, using its mark/tagline “Pocket Shot” or any other
mark/tagline deceptively similar to the plaintiff's mark “Pocket
Scotch” apart from delivery, rendition of accounts, damages
and costs.
63. The defendant adopted a stand that the suit design is
merely the design of a plain hip flask, which is a flask for
holding liquids, rectangular in shape (with a cap for fastening
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and cavities for pasting/affixing logos and labels of the
manufacturers. These common features, according to the
defendant, could not be allowed to be monopolised by the
plaintiffs and the suit design, vis-a-vis the design of an ordinary
hipflask, contained mere ordinary trade variants and therefore,
such incorporation of ordinary trade variants into an existing
design would not render the design new or original.
The written statement specifically emphasized on the
differences in the design of its bottle vis-a-vis the suit design by
comparing its overall shape and size, rounder edges, smaller
concave bottom i.e. part by part.
64. The rival contentions came to be noted and the counsel
for the defendant clearly conceded that he was not disputing
the validity of the suit design as it was already upheld in
20
Diageo Brands B.V V/s. Great Galleon Ventures Pvt. Ltd, but it
was canvassed that the sweep of infringement analysis has
necessarily to be equal to the sweep of analysis of novelty of the
suit design vis-a-vis prior art and the perspective on the basis of
which the aspect of imitation has to be decided, was not that of
an average customer, as in the case of trademarks, but of an
instructed eye i.e. an eye who is aware of the prior art. It was
assertively stated that the instructed eye decide both the aspect
of novelty and infringement.
A distinction was also drawn between the approach to be
adopted in Design Infringement cases vis-a-vis the one to be
adopted in trademark infringement cases, as unlike trademark
20 2022 SCC Online Del 2350
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infringement cases, which rely on the impression of a person of
average intelligence and imperfect recollection, it was urged
that design infringement shall be decided on the basis of bare
comparison of the two design, and therefore, there was no
scope of applying ‘imperfect recollection test’. As against this,
on behalf of the plaintiff, the contention that the test for
determining the infringement and the case of trademark and
design is different was strongly disputed, and it was urged that
while the novelty of the design has to be tested on the basis of
instructed eye, the aspect of infringement has to be examined
from the point of view of the average purchaser.
Reliance was placed upon the relevant portion to that
effect in the decision of Diageo Brands B.V V/s. Great Galleon
Ventures Pvt. Ltd (supra), which had referred to the earlier
decision in case of Steelbird Hi-Tech India Ltd. v. S.P.S.
21
Gambhir, when it was held thus :-
“ It is rightly held in the cases decided that in the matter of novelty the
eye is to be the ultimate test and the determination has to be on the
normal ocular impression. In order to know its newness or originality
it is necessary that a design identical with or even materially similar
to the relevant design should not have been published or registered
previously. A slight trivial or infinitesimal variation, from a pre-
existing design will not qualify it for registration. Taking into account
the nature of the article involved, the change introduced should be
substantial. It is not necessary to justify registration that the whole of
the design should be new, the newness may be confined to only a part
of it but that part must be a significant one and it should be potent
enough to impart to the whole design a distinct identity, unless
registration is sought for the said part alone.”
21 2014 (58) PTC 428 (Del).
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65. The appellant however, pressed into service the well
settled test for design infringement i.e. “obvious imitation and
fraudulent imitation” and it was urged that the test should be
perception of ‘an average purchaser’. Heavy reliance was
placed upon the decision in case of Videocon Industries (supra).
Justice Hari Shankar of the Delhi High Court analysed the
rival contentions with reference to the decision of Diageo
Brands B.V V/s. Great Galleon Ventures Pvt. Ltd (supra), as it
was the interlocutory order disposing the application under
Order XXXIX Rules 1 and 2; and by referring to the
authoritative pronouncements on the issue as to whether
interlocutory orders would operate as precedent, he recorded
thus :-
“ While, therefore, interlocutory injunctive orders, even in
intellectual property matters, are not binding precedents, if the
facts and issues are identical, Courts should strive to maintain
uniformity of approach so that, even at the interlocutory stage,
contrasting orders are not passed in identical facts.
With this observation it was noted that the co-ordinate
Bench while deciding the said issue identified certain features
of the suit design being distinctive and imparting novelty to it
and this included the long, lean and sleek design, curved
shoulders, ‘V' element on the neck, dimpled base, symmetrical
edges, etc.
66. Taking note of the fact that the Court while deciding the
said issue was aided by presentation of physical samples of the
two products and took note of the distinguishing features which
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were identified earlier, to note that there are several striking
differences between the design of defendant's bottle in the
earlier round as compared to the design of the defendant's
bottle in the present case.
Dealing with the issue of novelty and originality, the
Court preferred to proceed on a premise that the suit design
possessed novelty vis-as-vis, a prior art. After referring to the
precedents including the decision in case of Bharat Glass Tubes
Limited (supra), Carlsberg Breweries (supra), Mohan lal V/s.
Sona Paint and Hardwares, the principle laid down in Reckitt
22
Benckiser India Ltd V/s. Wyeth Ltd, was also invoked to
appreciate the aspect of novelty. The decision in Crocs Inc. V/s.
23
Batas India Limited, B. Chawla (supra) find a special mention.
67. As regards the submission as to whether the test in
identifying the infringement is the test of informed user
through ‘instructed eyes’, it came to be addressed, in the light of
the judgment of the Court of Appeal of U.K in Procter & Gamble
24
Co. V/s. Reckitt Benckiser, the ratio of which was reproduced
in Halsbury’s Laws of England, and it reads as below:-
“A design infringes the right given by registration if it does not
produce on the informed user a different overall impression. An
informed user is not the same as a person ‘skilled in the art’ of
patent law nor the average consumer of trade mark law. The
informed user is a user who has experience of other similar
articles and who will be reasonably discriminatory; he is able to
appreciate enough detail to decide whether a design creates an
overall impression which has individual character and whether
an alleged infringement produces a different overall
impression.”
22 2010 SCC Online Del 3582
23 2019 SCC Online Del 6808
24 (2007) EWCA Civ 936
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68. The learned Single Judge expressed disagreement of the
co-ordinate Bench in Diageo Brands B.V V/s. Great Galleon
Ventures Pvt. Ltd (supra) that design infringement has to be
seen by holding the product in hand or as assessed by a person
who sees them on a shelf eight to ten yards away and he
expressed that in B. Chawla (supra), it was held that the matter
has to be viewed from the perspective of instructed eye “who is
an informed person” and not an “average person” much less the
consumer of average intelligence and imperfect collection”who
straddles trademark infringement law.
Reproducing the principle laid down in Procter and
Gamble (supra), that had an overall impression is what strikes
the mind of the informed user when it is carefully viewed, not
what he may recollect afterwards, Justice Hari Shankar noted
that though Procter and Gamble was rendered in the context of
Registered Designs Act, 1949 in force in U.K, it has considerable
precedential value in the wake of the declaration by the
Supreme Court in Bharat Glass Works (supra) that provisions of
registered Designs Act are pari materia to the provisions of the
Designs Act, 2000.
69. The principle laid down in Carlsberg Breweries (supra)
was also invoked to note that there is a distinction between the
statutory provision relating to infringement in Trade Marks Act,
and those relating to Designs Act, as in the former, the test of
confusing and deceptive similarity between the rival trademarks
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would be applied and the intention to infringe is not necessary
under Section 29.
As against this, under Section 22, where there is no use of
the word ‘infringement’, but the word used is ‘piracy’, the
distinction must be kept in mind as ‘piracy’ of a registered
design, when the defendant's design is fraudulent or obvious
imitation of the design of the plaintiff.
Piracy, according to the said decision pre-supposes
imitation which may be obvious or fraudulent. It is in the
background of this appreciation of the facts and the law laid
down on the subject, he proceeded to examine the rival
contentions from the point of view of ‘instructed eye’ of a
person who is instructed with prior art, reasonably
discriminatory and able to appreciate the details as the test of
an average consumer who sees the bottle on a shelf, from a
distance, according to the learned Judge would not be an
appropriate test to apply.
The conclusion drawn in the background facts came to be
recorded thus :-
“207. The first point of difference between Mr. Sibal and Mr. Lall,
i.e. as to whether the test to be applied while examining the aspect
of validity of the suit design on the point of novelty and originality
vis-à vis prior published designs, and the test to be applied while
examining infringement, are different, is not really unconnected
with the second point of difference. The familiarity, of the
instructed eye, through whose iris the aspect of infringement has
to be examined, with prior art, itself factors in the aspect of
novelty and originality of the suit design, again vis-à-vis prior art.
This, it appears to me, should be plain and obvious. Novelty and
originality are prerequisites for registration of a design under the
Designs Act. A design which is not novel or original, vis-à-vis prior
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art cannot, therefore, be entitled to registration. In order to
establish its claim to registration, therefore, the suit design has to
be shown as being novel and original, vis-à-vis prior art.
Familiarity with prior art, of the instructed eye, therefore,
necessarily presages familiarity of the points on which the suit
design is novel and original vis-à-vis prior art. The aspect of
novelty and originality of the suit design vis-à-vis prior art,
therefore, becomes a relevant factor while examining the aspect of
infringement of the suit design by the impugned design.
208. An ignorant observer, who is uninformed of the state of prior
art and is merely comparing the design of the plaintiff with the
product of the defendant, cannot, therefore, be the person from
whose view point the aspect of infringement is examined.”
70. Based on the aforesaid reasoning, ultimately, the
conclusive finding is recorded thus :-
“216. Viewed from the point of view of the instructed eye, therefore,
it is not possible for me to hold that, prima facie, the design of the
bottle of the defendant was an obvious imitation or a fraudulent
imitation of the suit design. If it was, then the plaintiff's bottle would
also be an obvious imitation or a fraudulent imitation of prior art.
The difference in tests to be applied, while examining the aspect of
validity on the ground of novelty and originality, vis-à-vis
infringement analysis, as so persuasively urged by Mr. Sibal is,
therefore, actually a difference more of form than of substance.”
71. The Delhi High Court invoked the UK test of the ‘informed
user’ through whose ‘instructed eyes’ the aspect of
infringement is to be assessed, being laid down by the
Supreme Court in Procter & Gamble Co. V/s. Reckitt
Benckiser, (supra).
The test laid down is of an ‘instructed eye’ and this person
is neither ‘skilled in the art’ nor an ‘average consumer’, but
reliance upon this test, which received a meaningful
interpretation in Diageo V/s. Great Galleon (supra) by the co-
ordinate Bench of the Delhi High Court, did not find favour
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with Justice Hari Shankar while deciding Diageo Brands BV &
Anr. V/s. Alcobrew Distilleries Ind Pvt.Ltd. (supra) , as regards
the infringement of the registered design, which was also the
subject matter of earlier design infringement proceedings in
Diageo V/s. Great Galleon (supra) and the suit design was the
same as the suit design which came for consideration in Diageo
Brands BV (supra), the only difference being the product of the
defendant as in the earlier case i.e. Diageo V/s. Great
Galleon(supra), the defendant's product was a near identical
replica of the suit design, but while considering the said case in
the second round, the learned Single Judge found that the
impugned design is different from the suit design in several
respects, and this fact was not disputed.
Justice Hari Shankar, in the second round was unable to
subscribe to the view adopted earlier by the coordinate bench,
that the infringement has to be seen by holding products hand
in hand or as assessed by a person who sees them on a shelf 8
to 10 yards away. Invoking the test laid down in B. Chawla &
Sons (supra) to the effect that the matter has to be viewed
from the perspective of the ‘instructed eye’ which is an eye of
an ‘informed person’ and not of ‘average consumer’ much less
the consumer of ‘average intelligence and imperfect
recollection’.
Thus what emerges from a thoughtful deliberation was
the test of an ‘instructed eye’ and not a person with ‘average
intelligence’ in judging novelty. In the law applicable to the
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intellectual properties, when we compare it with the cases of
infringement of the trademark, the test to be applied is of an
average person with imperfect collection, as the statutory
framework under the Trademark Act is based upon the
source identifier/indicator, which is not applicable to a
Copyright and for this purpose, the test to be applied is of a
conscious eye. Design lies somewhere between a Trademark
and a Patent, which involves technical aspect as it is based on
invention.
72. In the Judgment of Justice Hari Shankar there is a
reference to the decision of Federal Circuit in Egyptian Goddess
25
Inc. V/s. VSM Swisa Inc. which, while holding that,
infringement would have to be analyzed from the point of view
of an ordinary observer, clarified that, the ordinary observer
would have to be a person who was conversant with prior art
and the Federal Circuit applied the test, ‘whether a purchaser
familiar to the prior art would be deceived by the similarity
between the claimed and accused designs, inducing him to
purchase one supposing it to be the other’.
Worth it to note that this test was not directly applied in
Diageo, but the instructed eye principle was followed, but this
was only restricted to ascertain the novelty, as a distinction is
made in comparing the design of the bottle of the defendant
with an obvious imitation or a fraudulent imitation of the suit
design. But while examining the aspect of validity on the
ground of novelty and originality vis-à-vis infringement
25 543 F.3D 665 (Fed. Cir. 2008)
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analysis, it was noted that it is actually a difference more of
form than of substance.
It is in the wake of the aforesaid finding, the learned
Single Judge noted that the plaintiff had failed to make out a
prima facie case of obvious imitation or fraudulent imitation by
the defendant of the suit design of the defendant's bottle, so as
to justify injunction.
73. Here, we must make reference to the decision of the
United States Court of Appeals, Federal Circuit in Egyptian
Goddess INC (supra).
Egyptian Goddess INC (EGI) brought an action alleging
that Swisa INC and Dror Swisa infringed its US Design Patent
No. 467, 389, and the patent claimed a design for a nail buffer,
consisting of a rectangular hollow tube, having a generally
square cross-section and featuring buffer surfaces on three of its
four sides, whereas Swisa’s product consisted of a rectangular,
hollow tube having a square section, but featuring buffer
surfaces on four of its sides.
While deciding the issue whether ‘point of novelty’ test
should continue to be used as a test for infringement of a
design patent, or whether the court should adopt the ‘non-
trivial advance test’ as a means of determining whether a
particular design feature qualifies as a point of novelty, and as
to how the point of novelty test should be administered,
particularly when numerous features of the design differ from
certain prior art designs, reference was made to the Supreme
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26
Court's decision in Gorham Co. V/s. White.
The case involved a design pattern for the handles of
tablespoons and forks and in the analysis of the claimed
infringement, the court stated that the test of identity of design
must be sameness of appearance and near difference of lines in
the drawings or sketch or slight variance in configuration will
not destroy the substantial identity. It explained ‘sameness of
effect upon the eye’ was a main test of substantial identity of
design, as the two will not be same ‘to the eye of an expert’,
because if that was the test, then there never could be piracy of
a patented potential design, since human ingenuity has never
yet produced a design, which in all its details, is exactly like
another, that even an expert would be unable to distinguish
them.
In light of a detailed discussion and considering the
findings rendered by the trial Judge, it was noted that the
general shape of the buffer is the same as that of a patented
buffer design, and the difference between the two is that the
accused buffer has raised buffing pads on all four sides, while
patented buffer has buffing pads only on three sides, but the
two closest prior art nail buffers had solid rectangular cross-
section with slightly raised buffers on all sides, and the another
one was a design of triangular shape and a hollow cross-section
with raised buffing pads located on all three sides.
74. When the question arose, as to what standard should be
applied, and whether it is to be an ordinary observer who is
26 81 US 511 (1871)
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familiar with the prior designs and who will be deceived into
believing that Swisa buffer is the same as the patented buffer.
Based upon the declaration of the expert witness, who reached
a conclusion that because of the substantially similar
appearance between the accused and the patented designs,
resulting into both designs having a hollow tube, square in
cross-section and rectangular in length, with multiple raised
rectangular pads mounted on the sides, which did not cover the
corners of the tube, and the opinion expressed an ordinary
observer and purchaser of nail buffers would notice the
presence of one more buffer pad altering the ornamental effect
and appearance of the whole design as compared to the
patented design, the Court observed thus :
“In light of the similarity of the prior art buffers to the accused buffer,
we conclude that no reasonable fact finder could find that EGI met its
burden of showing, by a preponderance of evidence, that an ordinary
observer, taking into account the prior art, would believe the accused
design to be the same as the patented design. In concluding that a
reasonable fact finder could not find infringement in this case, we reached
the same conclusion that the district court reached and for many of the
same reasons. Although we do so by using the ordinary observer test as
informed by the prior art, rather than by applying the point of novelty
test, our analysis largely tracks that of the district court. After analyzing
the nail patent and claimed design, as related to the accused design, the
district court concluded that ‘in the context of nail buffers, a fourth side
without a pad is not substantially the same as fourth side with a pad.”
While the trial court focused on the differences in the
particular feature and issue, rather than the effect of those
differences on the appearances of the design as a whole, it was
noted that the difference on which the court focused is
important, viewed in the context of the prior art.
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75. The test laid down in EGI is not formally applied by the
Indian Courts and not even by Justice Hari Shankar of the Delhi
High Court while deciding the issue too. However, he has
independently developed and applied an identical legal
principle that mirrors the outcome of Egyptian Goddesses,
namely that design infringement must be judged by the
‘instructed eye’ of an ordinary consumer viewing the product as
a whole rather than isolating an exact ‘point of novelty’.
In Cello Household Products (supra), when Cello sued
Modware, over the design of a distinctive water bottle and
Modware raised a defence that they had changed certain
geometric details and lines on the bottle surface, the Bombay
High Court held that the test for design infringement is the
visual impression in the eye of the customer. It is, held that a
design cannot be broken down piece by piece, to find minor
differences, and what is to be taken into consideration is the
‘visual appeal’ and if the overall shape and configuration create
an obvious imitation, then it is a case of infringement,
effectively mirroring the U.S. ‘ordinary observer test’.
In Whirlpool (supra), the test laid down by the single
judge of Bombay High Court was of the novelty being
appreciated by an average consumer in the shape and
configuration of the product by keeping aside its functionality
and this judgment is followed on several occasions as having
applied the right test in the Indian scenario.
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Indian Courts have consistently rejected the minor
modifications to evade the challenge of similarity and instead
they have looked at the core aesthetic appeal. A minor or trivial
distinction is ignored in applying the test of deceptive similarity.
Therefore, in our view, the test laid down by Whirlpool (supra)
still continue to hold the field, and we intend to apply the same
to the case in hand after going through various decisions cited
before us.
76. The test of ‘informed user’ or ‘instructed eye’ , as the one
who is aware of prior art and common trade knowledge for the
aspect of infringement of design in our view does not fit into
the facts of the case and cannot be applied to a product as
common as a fan and definitely, the product which is purchased
by a consumer, who will choose a particular design by keeping
in mind the image of a ‘fan’, which he had seen at someone’s
place and the comparison would be done through his eyes
alone. The design of a fan is appreciated by the common
consumer/purchaser as a whole and he need not be necessarily
an ‘informed user’ or an ‘instructed eye’ to remember or
recollect as to what was the previous design to find out whether
there is any novelty.
The learned Single Judge as well as the Division Bench of
Bombay in the context between Whirlpool (supra) physically
examined the rival washing machines and the learned Single
Judge ignoring the trivial differences asserted by the defendant,
recorded that if such minor differences are held to be sufficient
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enough to avoid a finding of infringement, then it will be
impossible for any plaintiff to succeed, since the skillful
defendant will knowingly make some cosmetic and minor
changes in its product. The test applied was of comparing the
two products by ignoring irrelevant features and a comparison
being drawn between its essential features. Similarly, the
Division Bench hearing the Appeal against the interim order,
applied the same test viz. judging through eye and observed
that, when the Court is to judge similarity or differences, it
should be done through the eye alone and when the article in
respect of which design is applied is the object of purchase,
then through the eye of the purchaser. In judging the articles
solely by eye, the court must see whether the defendant's
version is an obvious or fraudulent imitation.
Applying the aforesaid test, the Division Bench focused
upon the shape and configuration of the two machines and
though it was urged the machines marketed by Videocon are
different as it had a different colour scheme, ornamentation,
but recording that the novelty of the design registered by
Whirlpool, its rival company actually was in its shape which
had distinct appeal to the eye and it is this shape which created
a value in the product, completely distinct from adding to its
functionality, it was categorically held that merely by placing
certain ornamentation's, changing position of knobs or
adopting a different colour scheme, the rival company
Videocon has not been able to make any difference to its
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product to give a completely different look than the product of
Whirlpool.
77. It is a consistent approach adopted by this Court, when
it has been held that the Court must consider whether the
essential part or basis of the plaintiff's claim to novelty is found
in the impugned product and the similarity or difference is to
be judged through eye alone and in case of a marketed product
through the eye of the purchaser. The consistency which has
emerged through all the decisions cited before us is that the
rival designs are to be viewed as a whole to determine
whether the impugned design is substantially different.
The instructive test which implicitly has an element of
the purchaser, being aware of the prior art and common trade
knowledge may be relevant in examining validity of the design,
particularly to ascertain whether the novelty staked is merely
an ordinary trade variant, but it shall not replace the settled
test laid down of piracy under Section 22, which prohibit
application of registered design, to any article, in any class,
which would result into a fraudulent or obvious imitation
thereof. In testing the accusation of piracy/infringement, it
definitely call for an overall visual assessment of the registered
design and the impugned product through the eye of the
purchaser/common consumer. A prior art may be a relevant
circumstance in a properly constituted challenge to validity
under Section 22(3) read with Section 19, but in our view it
cannot be employed to undertake a microscopic dissection of
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the plaintiff's registered design and thereby dilute the statutory
protection available against piracy.
In our view, as far as the product in question i.e the
ceiling fan, the test to be applied is whether on visual
comparison of rival products through the eye of the
purchaser/common consumer, the impugned fan is substantially
different from the fan which has the application of registered
design. If the essential visual features which impart the
registered design a distinctive appearance based on shape and
configuration and if this ocular appeal has been substantially
applied by the defendant, with only minor differences in
individual features or some dimensions or material components
it cannot escape the accusations of obvious or fraudulent
imitation.
78. The test of ‘instructed eye’ as laid down by Delhi High
Court in Diageo Brands BV (supra), contemplates that the
‘instructed eye’ is one who is aware of prior art and has
compared the registered design with prior art, but we must
note that the learned Judge has clarified that the difference in
the test shall be applied while examining the aspect of validity
on the ground of novelty and originality vis-a-vis the
infringement analysis is actually different mode of a form than
a substance.
If the suit design is novel and original as compared to a
prior art with respect to certain aspects and the infringing
design of the defendant is similar to prior art in respect of
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these aspects, then Justice Hari Shankar has concluded that
the impugned defendant's design is novel and original vis-a-vis
the suit design qua the said aspects. However, if these aspects
of novelty and originality raised in the impugned design as
against the suit design, a question was posed whether it can be
said that the impugned design infringes the suit design merely
because if the two products are able to distinguish the two.
This according to him would do away with the ‘informed user’
test as also ability of such user to reasonably distinguish and
appreciate the details and according to him the question posed
had to be answered indesign the negative. However, we find
that when this test of ‘instructed eye’ was put forth in Cello
Household Products (supra) before the Bombay High Court,
while dealing with a plastic water bottle, which according to
the plaintiff possessed novelty and originality, the claim being
based upon its shape, configuration and surface
ornamentation, Justice G.S. Patel observed that if one has to
ascertain the similarity in the two products, for maintaining an
action of infringement and passing off with the test applied
often overlapping, it will have to be ascertained whether
Modware’s product was substantially and deceptively similar
to that of Cello’s registered design and if it is so then an
injunction should follow.
Applying it to the parameters set out in the Designs Act,
reference was made to the defences which were available
including that the design is known to the prior art, there is prior
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publication or that there is no novelty or originality in the
design, but it is an outcome of cobbling together several pre-
existing known designs or mosaicing.
Dismissing the contention that a bottle is a bottle, by
relying upon the decision in case of Whirlpool (supra) , laying
down the principle that the approach should not be in
identifying individual similarities or dis-similarities as they are
not dispositive, but the judicial assessment must be on
examination of rival products, actually made available if
possible and they should be examined as whole, from the
perspective of a common consumer. The emphasis was laid
upon the visual appeal and the task to be seen if the essentials
of that which make it visually appealing have been
substantially, but not necessarily exactly, copied, and the
arguments advanced that an expert view is only the test of
novelty and originality did not appeal to the Court as it was
sought to be suggested that Cello’s bottle was not significantly
distinguishable from known designs or combination of known
designs and at least this was not demonstrated. However, it
was noted that on comparing the bottles the differences could
be evidently observed as each one may have a unique shape
and configuration and in his inimitable style, Justice Patel
observed thus :-
“For some who claim familiarity with bottles – perhaps for
reasons unrelated to their design – the differences are
evident; many cylindrical liquid containers are instantly
recognized as unique and as indicative of their contents.
The expertise, usually borne of much experience, in such
cases has not so much to do with the design of a bottle as
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its contents. No “expert” can add much more than that
which is obvious to the “naked eye.”
79. In the case before us, Atomberg has placed on record
material to demonstrate that it ranked first in the market to
conceptualize/adopt the registered design in the year 2019,
and commercially used the same since November 2020, and
though it applied the very same design with little variations
comparable to its own registered design to other fan, but
definitely the conceptualized design was applied to the fan
much prior to that of Stove Kraft which was adopted only in
February, 2025. In any case, the defendant did not produce any
instance of prior art to demonstrate that the novelty features
claimed by Atomberg were a combination of those existing in
the market, and in fact, the emphasis of the defendant is only
on the distinction in relation to the shape of the shaft which
was found in the Atomberg Renesa Alpha, but according to us,
this feature was not claimed to be novel while the registration
was sought, and in fact the application for registration as well
as the registration certificate do not even make a mention of
the position of blade with Z shaft being a unique one.
When we actually compared the model of the said fan of
Atomberg as against Stove Kraft, its novelty according to us, lies
in the petal shape of the blades and/or configuration and/or
get up resulting into giving it an overall appearance which is
claimed to be the success of its product according to the
plaintiff. We find that the subsequent fan of Atomberg other
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than Renesa have the novelty of the registered design, and we
do not find any justification in the stance of Mr. Dhond for the
defendant that the comparison of the defendant's fan cannot be
made with its other variants. The novelty which is claimed in
the shape and configuration is sought to be justified with the
functionality and is capricious, in the sense that it is not purely
functional, but it is an aesthetic or artistic appeal. As explained
by the Bombay High Court in Faber-Castell Aktiengesellschaft
(supra) ‘capricious’ refer to a feature that is not purely
functional and which has an aesthetic or artistic appeal and
rather it denotes a design in which form predominates over
function.
In the fan belonging to Atomberg and especially Renesa
Alpha, the product to which the design was applied for the first
time, and thereafter, replicated in other models, the petal shape
blade configuration is capricious, as it is not a form dictated by
functional requirement of a ceiling fan, as this function of
circulating air can be achieved through numerous other blade
shapes and configurations. However, the petal shape
configuration in which uniqueness is claimed and adopted by
Atomberg has given its fan a distinctive and aesthetically
appealing visual identity.
80. It is this unusual and distinctive appearance of the
plaintiff's product which has acquired a goodwill and the
attempt on the part of the respondent in copying that
appearance is what is sought to be set at naught by seeking an
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injunction. In fact, Atomberg’s subsequent Renesa fan are
variants embodying the same essential and distinctive design
features and cover within the scope of its registered design and
the attempt of Stove Kraft to adopt an almost identical fan,
according to us, is not accidental, and more particularly, when
no explanation has been offered as to how the idea of the said
design was conceived.
81. The Appellant had placed before the learned Single Judge
the material to establish that its fan (“said fan) had acquired
substantial goodwill, reputation and recognition which was
owed to its distinctive appearance and the CA certificate,
representative invoices, promotional material were placed
alongwith the plaint. In addition, the annual sale figures were
also reproduced indicating thus :-
i November 2020 – March 2021 – 1.16 Cr.
ii April 2021 – March 2022 - 11.88 cr.
iii April 2022 – March 2023 – 27.27 Cr.
iv April 2023 – March 2024 – 46.97 Cr.
v April 2024 – March 2025 – 184.7 Cr.
vi April – 2025 – May 2025 - 57.71 Cr.
The above material thus demonstrate goodwill and
reputation earned by Atomberg, by applying the design which
was unique in its overall shape and configuration and its claim
that no other ceiling fan with similar or comparable shape
existed in the market prior to the introduction thereof, was in
any way contradicted.
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The novelty of the shape and configuration of its petals
giving rise to an overall appearance, became peculiar to its
product i.e. ceiling fan Renesa Alpha and its subsequent
variations and since the distinctive appearance of this fan has
been slavishly copied by the respondent and, in our view, a case
for passing off is clearly made out.
The fan of the rival parties i.e. Appellant and Respondent
are competing ceiling fan which are purchased by the same
class of consumers and possibly through overlapping trade
channels. The photographs placed before us, reflecting the
manner in which the fan are displayed physically, and on
Online Channels/Platforms, would clearly reveal to us that a
consumer who either visit the shop or surf the net on various
platforms, which sell the said fan is impressed by the distinctive
aesthetic appearance, which lies in its unique shape petal like
blades and its configuration, and may result in purchasing the
respondent’s impugned fan under the belief that it is the
product of Atomberg or it is a variant or it is commercially
associated with its fan. The possibility of such confusion
increases as the essential feature of Atomberg’s fan which
attract the consumers attention are its petal shape blade
configuration giving rise to an aesthetic appearance, which on
comparing the respondent’s product, according to us, has been
substantially copied.
The test which we are applying for comparing the ‘said
fan’ of Atomberg, as against the impugned fan of ‘Stove Kraft’,
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is the perspective of an average consumer who is likely to get
confused on account of identical design i.e. the shape and
configuration being applied to its impugned model.
In any case, we have noted that Atomberg is not claiming
novelty in the basic features of ceiling fan, but novelty and
uniqueness is claimed in the shape and configuration and this
can only be judged solely by the eye and for this purpose it
need not be an instructed eye, but as the product itself is a
common one, being a ceiling fan, purchased by an average
man, the test to be applied is his capability to compare and
whether he would get confused between the two fan and would
buy the impugned fan presuming it to be the fan of Atomberg
or associated with it. Being a product of normal use, as every
household will have a ceiling fan and particularly an average
consumer, for whom it is an essential feature of his house to
enjoy the comfort of his home, it is possible that the consumers
have encountered the fan of Atomberg at some other place
including the house/office of his friend orrelative or as
projected in advertisements or in photographs and what he
would retain by way of an impression, is the distinctive shape
and appearance of the product. Therefore, when he make his
decision to buy a ceiling fan and when the products are sold by
placing them side by side, he may mistake the respondent’s
substantially similar fan for the plaintiff's, and that is it may
suffer adversely. No comparable ceiling fan with the similar
shape and configuration existed in the market prior to the
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plaintiff's adoption of the design, and we find substance in its
claim that the shape and overall appearance of the fan had
acquired distinctiveness, and in fact when the respondent
adopted a substantially similar design, it reasonably would have
been aware of the presence of the appellant in the market with
its distinctive design.
In any case, in an action of passing off the actual
confusion need not be established and it is sufficient to
establish that there is likelihood of confusion.
82. It is in this background, we must briefly refer to the
findings rendered by the learned Single Judge, which according
to us call for interference by applying the test in Wander Ltd.
(supra), if the impugned order has ignored the settled principle
of law or did not apply the correct law.
The learned Single Judge proceeded on the footing that
there is no similarity in the rival fan, but has failed to note as
to how they differ. The focus was on isolated distinction like
the Z shape shaft as we have noticed that the Renesa Alpha
hanging from the ceiling do not reflect the Z shape shaft with a
distinction, but it merges with the canopy and definitely do not
form its distinctive feature.
In any case, even Atomberg while it secured registration
for its design did not claim the ‘Z’ shape shaft as its distinct or
unique feature. The learned Single Judge has compared the
product with the comparison set out in two tables, resulting in
product to product comparison, but in our view that is not the
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proper basis for comparison as to assess infringement; the test
to be applied is from the perspective of the eye of the Judge
and in case of a purchaser of the product from his eyes. The
comparison drawn by the learned Judge is based on features of
the model and not of the registered design and based on this,
it is held that Atomberg has attempted to compare, the
respondent’s impugned fan with its other models and there is
no clarity about ‘said fan’. It is to be noted that in the plaint,
Atomberg has set out the comparative table of the novelty
feature of its ‘said fan’ and the comparison was drawn with
the features that have been copied by the respondent in the
impugned fan. In fact it is the case pleaded even before the
trial Judge that the subsequent models applied the same design
and embodied all novelty features of the registered design, to
all the variant fan, and all being within the scope of its
registered design.
The impugned order in para 33 records that the test,
which is of similarity to be judged solely by the eye is not
satisfied, but the learned Judge had adopted the said test by
comparing photographs and tables, and here, according to us
she has grossly erred as the similarity is to be judged solely by
the eye and what is to be assessed is the overall similarity, but
the Judge ultimately landed in dissecting the rival designs into
separate integers, which is not the test to be applied under the
Designs Act. No doubt the similarity is to be judged on obvious
visuals, and overall appearance through the purchaser’s eye,
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but when an imitation of the said appearance is alleged and
that too, against a registered design, which may be less
apparent than obvious imitation, it will still amount to
infringement and this is what is observed in Whirlpool (supra),
where ‘obvious’ is stated to mean something, as soon as one
looks at it, strikes one as being so like the original design/the
registered design, as to be almost unmistakable.
The test laid down in Kemp & Co. (supra) was reiterated
in the following words :-
“Fraudulent imitation is an imitation that is deliberately based upon the
registered design and is an imitation which may be less apparent i.e. may
not be an obvious imitation that is to say one may have a settled
distinction between registered design and fraudulent imitation and yet the
fraudulent imitation, although it is different in some respect from the
original and in respect which tendered it not obviously an imitation may
yet be an imitation perceptible when the two designs are closely scanned
and accordingly amounts to infringement.”
83. The learned Single Judge, in our view, has failed to
appreciate the key test laid down, being that the two designs
need not be exactly identical and same, and the matter must be
looked at as one of substance and essential features of the
design ought to be considered.
By applying the aforesaid test, since the essential feature
of the design in which novelty claimed are the petal shape
elongated blades with its tapering at the end and its attachment
to the canopy, by applying the well settled test of the two
products being judged solely by the eye to assess whether the
essential features present, or whether the two substantially
differ. On examination of the two products, according to us,
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the test is satisfied and, therefore, we must record that the
findings rendered by the learned Judge, that Atomberg is not
able to make out a case for infringement of and passing off,
does not appeal to us and that justify our interference in the
impugned order passed by the learned Single Judge.
84. The respondent’s adoption of the impugned design and
applying it to its own fan is likely to divert the plaintiff's sale
and also erode its goodwill which has been sufficiently
established before us through sale figures and the fact that
plaintiff is using the suit design, openly and continuously in the
market. The plaintiff has demonstrated goodwill and reputation
in the shape and configuration for which it claimed registration,
and it being granted, as no other ceiling fan existed in the
market prior to its introduction, and it is that novelty in shape
and configuration/get up/overall appearance that is associated
with the said fan of plaintiff. The misrepresentation on part of
the respondent is evident and the same is causing irreparable
harm, loss and injury to the plaintiff and this has been ignored
by the learned Single Judge. The reputation and goodwill
owned by the plaintiff in the distinctive appearance of the said
fan, which has been slavishly copied by the respondent, and
therefore, in our view, a case of passing off is made out.
In an action for passing off, it is not necessary to establish
actual confusion, but the enquiry is limited to, whether a
purchaser is likely to be misled and the consumer may mistake
the respondent’s fan which is substantially similar to the
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plaintiff's fan, and in our view, it is not necessary to establish
“something more” as the product shape and configuration,
along with the overall visual similarity, has established requisite
representation and likelihood of deception finding that the
respondents act is dishonest as adopted the registered design
applied by the plaintiff to its “said fan” and with the registration
of the design, subsisting, Atomberg in our opinion is entitled to
enjoy the status of a registered proprietor and entitled for the
benefits flowing therefrom, and it is necessary to protect it from
infringement and passing off.
The primary test to determine novelty, originality and
infringement under the Designs Act, 2000, is the ‘eye’ test to
evaluate whether two designs are substantially identical or if an
imitation has occurred through visual comparison, then the
technical analysis or breaking it down into a minute or isolated
differences, is not permissible. This test, based on a holistic
impression involves what appear to the eyes alone i.e. judging
the comparative designs by ocular perception.
Another test which could be discerned from a line of
pronouncements including the decision of Delhi High Court in
Diageo (supra) is that of ‘instructed/informed eye’ which
involve comparing a product through eyes of a person who is
familiar with the prior art and who is capable of reasonably
discerning of appreciating the design details and definitely, as
laid down by Justice Harishankar, this test reject the casual
glance from a distance.
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85. With the conundrum as to which test should be applied,
though even the Delhi High Court has agreed that the eye test
shall be applied to ascertain infringement (piracy). The
question which requires consideration is whether this test shall
be applied only for infringement, or even in ascertaining the
novelty.
This, however, must be judged from the point whether the
design is capable of registration under the 2000 Act, which
requires it to be ‘New’ or ‘Original’. ‘New’ is not defined in the
Act, but in common parlance, it is something which is not
known. ‘Original’ is defined in section 2(g) and in relation to a
design, it means originating from the author of such design and
includes the cases which, though old in themselves, yet are new
in their application.
‘New’ is therefore something which comes in knowledge
of the public for the first time but, ‘Original’ may not be ‘New’,
but there is newness or originality in applying an existing
design to an article, which no one thought of before. Courts
have zealously guarded an old design applied to a new article,
to which it was never applied, and have protected this
adaptation. For e.g. Petal-shaped blades being applied to a
ceiling fan although petal shapes may be found elsewhere in
the Universe, or it being having applicability to various
products, but the originality lies in applying this shape to the
fan.
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For a design to be new or original; (i) it must not be
disclosed to public prior to the filing date. (ii) it must be
distinguishable from known design or combination of known
design.
‘New or Original’, must therefore exhibit significant
change or difference in the design as compared to the known
design, and trade variants may not meet the test under the
Designs Act. Therefore, to determine the similarity or
dissimilarity, the visual effect and its appeal require
appreciation.
86. The ‘eye test’, which is invoked in ascertaining whether a
case of infringement/piracy under section 22 has been made
out, involve examining the two products from their appearance,
by appreciating its aesthetic sense and who may do it better
than the one who is desirous of purchasing the product.
It is quite possible that when a person goes to the market,
he do not go searching for novelty or originality, but as
observed in Whirlpool, he had a glimpse of the product and
with this image of the product in mind, he visit the market so as
to own this product and here, he would appreciate the product
from what image he had in his mind, and may be misled if he
come across a product which is strikingly similar to the image
which he carried in his mind. It is only in exceptional
circumstances a consumer visits the market expecting a novelty,
or when he make up his mind that the product he want to
purchase must be a completely new one, and then he has the
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knowledge of the past variants of the product in the market,
and his motto is to have a product which is completely distinct,
different, and unique as against the products which are
available in the market and here, the test that will be applied is
that of ‘an instructed eye’ .
The instructed eye test expands the visual review by
adding contextual knowledge. Instead of a casual shopper, the
design is viewed through the eyes of an informed user —
someone who is not an engineering expert, but is highly
familiar with the specific industry, prior products, and common
trade variations. But here, we are talking of a consumer who is
interested in novelty and originality, as against a prior art.
This test surely is applicable in judging the novelty, and it
is a standard applied when a defendant tried to cancel a design
registration, by claiming that it isn't actually ‘new’. An
instructed eye knows what already exists in the market and
therefore what it shall look for is the past basic, unavoidable
industry, shapes, and then pinpoint whether the design features
truly introduced a visual novel visual impact, or it is just a
minor obvious trick.
87. In Diageo Brands B.V & Anr. Vs Alcobrew Distilleries India
Pvt Ltd (supra) , the test applied was of an informed user and
not the casual “look and feel” or a person with imperfect
collection, and while determining the said test, the emphasis
was upon the novelty, which can be stringently weighed by an
instructed eye against prior art to prevent companies from
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monopolising shapes.
Under the Designs Act, 2000, the protection is confined to
aesthetic features appealing to the eye, excluding purely
functional or mechanical ones. The balance between the two
aims at boosting creativity without monopolising utility. The
two tests differ in its applicability and as far as infringement is
concerned, in our view, it is the eye test (ocular impression),
which is the most suitable one which shall be applied as in
articles to which the design is applied and the claim for piracy
is staked, it is to be ascertained whether the infringing design is
a fraudulent or obvious imitation of the registered design and
because of this adaptation, whether the common consumer is
getting confused and ultimately result in buying the infringing
product on a mistaken belief that it is the product of the
registered designer.
Design law is a tool to incentivize production of novel and
original designs and ensure its protection by conferring the
right of having Copyright in the design, once it is registered.
Since there is a procedure prescribed for registration of a
design, and only when a novelty or originality is proven, and as
the statute itself prescribes prohibition of registration of certain
designs, like the one which is not new or original, or that it has
been disclosed to the public by publication prior to the filing
date, or that it is not significantly distinguishable from known
designs or combination of known designs, in such case, it shall
not be registered. It is only when the design is registered, it
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confers a right on the one who secures this registration, from
the date of its registration and thereupon, the registered design
possesses the potential of exclusivity, which extends to the
market power to exclude others. However, an average
consumer has no idea about this specific novelty vis-à-vis prior
art and therefore, expecting two designs to be infringing merely
due to their “look and feel”, or because they seem to be alike or
different by testing them through the naked eye, is a feature
which needs to be applied when it comes to testing of its
novelty. The ordinary observer for design infringement,
therefore, need not necessarily be the one who is familiar with
prior art, and for the average customer, the test to be applied
would be the likelihood of confusion, to be judged from the
products available in the market but while judging the novelty
or originality, definitely the test of the instructed eye shall be
applied. In any case, piracy of a design invites the consequences
as stipulated under sub-section (2) of Section 22, which may
involve payment of damages as specified, and a person who is
able to prove infringement is entitled to injunct the infringer.
88. In conclusion, we, therefore, set aside the impugned order
passed by the learned Single Judge, strictly by confining
ourselves to parameters laid down in Wander (supra) as the
learned Judge has failed to apply the correct test to the fan for
comparison.
89. As a consequence thereof, IA No.88/2026 is allowed in
terms of the prayer clauses (a) and (b) which reads thus :-
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“a) that pending the hearing and final disposal of the suit,
the defendant by itself, its directors, dealers, stockists,
distributors, servants, agents and all persons claiming under
or through it be restrained by a temporary order of
injunction of this Hon'ble Court from infringing/ pirating
the plaintiffs design of the said fan bearing registration no.
325322-001 in class 23 -04 by the use of the impugned fan
or any other fan which is a fraudulent or obvious or slavish
imitation or resembling with the plaintiffs said fan;
b) that pending the hearing and final disposal of the suit,
the defendant by itself, its directors, dealers, stockists,
distributors, servants, agents and all person claiming under
or through it be restrained by a temporary order of
injunction of this Hon'ble Court from manufacturing and/or
selling and/or marketing and/or retailing and/or exporting
and/or distributing and/or trading and/or exhibiting for
sale and/or advertising and/or otherwise dealing in fan
bearing the shape, configuration, design of the impugned
fan or any other fan bearing shape or design which is
identical with and/or deceptively similar to the shape,
configuration, design of the plaintiffs said fan, so as to pass
off or enable others to pass off the defendant's fan/goods as
and for the plaintiffs well-known fan/goods or in any other
manner whatsoever;”
The ad-interim order passed by the learned Single Judge
on 24/7/2025 appointing the Court Receiver, High Court,
Bombay, under Order XL Rule 1 of Code of Civil Procedure as
receiver of defendant's impugned fan, and to take them into
possession and control by exercising all necessary powers
conferred upon him is also restored.
(MANJUSHA DESHPANDE, J) (BHARATI DANGRE, J)
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