Design Infringement Claim Dismissed for Prior Publication; Passing Off Action Retained for Trial on Evidence

The Plaintiff, a manufacturer of electrical goods, filed a suit for infringement and passing off regarding its registered cooler design (No. 322384-002).

The Plaintiff claimed to have developed the design in late 2018 and registered it in October 2019.

Defendant No. 1 filed an application for summary judgment under Order XIII-A of the CPC, contending the suit should be dismissed because the design was published by the Plaintiff itself through sales and website displays prior to the application for registration.

While a previous interim order had been vacated on grounds of prior publication, the Plaintiff argued that its common law claim for passing off remained viable regardless of the design's registration status.

1. Whether the Plaintiff has any real prospect of succeeding on the claim of design infringement in light of evidence of prior publication under Section 19(1)(b) of the Designs Act, 2000.

2. Whether the lack of specific design-related terminology in the pleadings and the potential invalidity of the design registration necessitates the summary dismissal of the claim for passing off.

Section 19 of the Designs Act, 2000, which mandate that a design registration can be cancelled if it was published in India prior to the date of registration.

Order XIII-A of the CPC regarding summary judgments where a party has "no real prospect of succeeding".

The Full Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., which established that a composite suit for infringement and passing off is maintainable.

The "triple test" (goodwill, misrepresentation, and damage) for passing off as reiterated in Crocs Inc. USA v. BATA India and Ors. and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.

The court found that the Plaintiff’s own invoices and website screenshots proved the cooler design was in the public domain as early as March 2019, several months before the October 2019 registration application.

This constituted prior publication under Section 19(1)(b), rendering the infringement claim meritless and suitable for summary dismissal.

Regarding passing off, the court reasoned that it is a "sui generis common law remedy" independent of statutory registration.

The court noted that the Plaintiff had made sufficient averments regarding "features of shape," "imitation," and "deception" in the plaint.

Since passing off is a fact-intensive inquiry requiring proof of goodwill and reputation through evidence, the court held it could not be dismissed summarily without trial, even if the incidental design registration failed.

The court rejected the application regarding the claim for passing off, holding that the Plaintiff is entitled to an opportunity to establish its common law rights through trial and evidence, listing the suit for further proceedings on September 17, 2026.