The Bombay High Court declined to provide interim relief to Atomberg Technologies Pvt. Ltd. in their case against Luker Electric Technologies Pvt. Ltd., where Atomberg accused Luker of copying the design of one of its ceiling fans.
A single judge bench of Justice Manish Pitale observed that Atomberg did not present sufficient evidence for design infringement, as the design was already available to the public before registration. Therefore, the court suggested that the design registration itself could be subject to cancellation under section 19(b) of the Designs Act, 2000.
Brief Facts:
The applicant/plaintiff has filed the present suit and application for interim reliefs in the context of its registered design of ceiling fan named Atomberg Renesa Ceiling Fan. The registration is dated 8th September, 2018. According to the plaintiff, it was served with caveats filed by the defendant before this Court and the District Court at Ernakulam in Kerala, sometime in the last week of September, 2022, when it realized that the defendant had obtained registration for two ceiling fans: Size Zero Fan 1 and Size Zero Fan 2. According to the plaintiff, the said registrations were obtained on 21st March, 2022, by the defendant in a fraudulent manner, as the impugned designs and ceiling fans of the defendant infringe upon the registered design of the ceiling fan of the plaintiff.
Contentions of the Applicant:
Learned senior counsel appearing for the plaintiff submitted that as per settled law, in the context of the Designs Act and the claim of infringement of a registered design, as also the tort of passing off, the test of “look and feel” and “appeal to the eye” ought to be applied to examine as to whether the plaintiff has indeed made out a case in its favor. After referring to the pleadings and documents on record to show the registration of the plaintiff’s design of Atomberg Renesa Ceiling Fan and the goodwill earned in that context from the year 2018 onwards, the learned senior counsel appearing for the plaintiff prayed for a grant of interim reliefs in terms of prayer clauses (a) and (b) of the application. Reliance was specifically placed on the judgment of the learned Single Judge of this Court, in the case of Whirlpool of India Limited vs. Videocon Industries Limited.
Contentions of the Respondent:
Learned senior counsel appearing for the defendant relied upon the documents placed on record on behalf of the defendant to submit that the plaintiff’s design was already in the public domain prior to the grant of registration on 8th September 2018 and that therefore, the plaintiff is not entitled to rely upon the registration of such design for grant of interim reliefs.
The learned senior counsel relied upon Sections 2(d), 4(c), 19, and 22 of the Designs Act, to contend that since the material on record demonstrated that the design was already published prior to its registration and in any case, it was not significantly distinguishable from known designs or combination of known designs, it could not be said that the plaintiff had indeed made out a prima facie case in its favor. The learned senior counsel appearing for the defendant emphasized the fact that the defendant was not a fly-by-night operator and that it had established itself in the market of ceiling fans over a period of time. Emphasis was placed on the fact that the ceiling fans of the defendant, based on the impugned design, were priced higher than the ceiling fans of the plaintiff, which was a significant factor in the aspect of passing off.
Observations of the Court:
The court relied on section 4 of the Designs Act, 2000, which prohibits the registration of certain designs. If a design lacks novelty, or originality, or resembles existing designs, it cannot be registered. Section 19 allows for the cancellation of granted registrations. The court emphasized that if a design was published before registration, its value diminishes. Specifically, the court found Atomberg's design fell under the Section 4 prohibition and could be canceled under Section 19. Social media posts and invoices indicated public exposure before registration, weakening its claim. Atomberg's failure to disclose these posts and invoices rendered it ineligible for interim reliefs. The court recognized the interchangeability of Atomberg Gorilla Renesa Ceiling Fan and Atomberg Renesa Ceiling Fan, representing the same product.
The court found Atomberg's registered design almost identical to publicly available designs, lacking strong evidence of novelty and originality. Even if Luker had copied Atomberg's design, additional evidence of false representation was required. The court highlighted the significance of a comparison table provided by the defendant, showing differences in packaging and other aspects. As a result, Atomberg did not meet the legal threshold for claiming interim reliefs, including passing off. While the court disagreed with Luker's argument on passing off relief, it concluded that Atomberg had not established a prima facie case. Considering Atomberg's failure to establish a strong case against Luker, the court regarded convenience and irreparable loss to the plaintiff as insignificant factors.
The decision of the Court:
The Bombay High Court dismissed the application as no merit was present in the application.
Case Title: Atomberg Technologies Private Limited v. Luker Electric Technologies Private Limited
Coram: Hon’ble Justice M.S. Sonak and Justice Valmiki SA Menezes
Case no.: COMMERCIAL IP SUIT (LODGING) NO. 66 OF 2023
Advocate for the Applicant: Mr. Virag Tulzapurkar
Advocate for the Respondent: Mr. Ravi Kadam
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