While not leaving even an iota of doubt and without mincing any words whatsoever, the Delhi High Court has in a learned, laudable, landmark and latest judgment titled Havells India Limited v. Panasonic Life Solutions India Pvt Ltd & Anr. in CS(COMM) 261/2022 & I.A. 6259/2022, 7226/2022 and cited in 2022 LiveLaw (Del) 585 pronounced on May 31, 2022 has held that a plea of passing-off cannot be negated solely on the ground that the plaintiff had asserted trademark rights in the registered designs. A composite suit seeking action in respect of both design infringement and passing off is maintainable. A Single Judge Bench comprising of Hon’ble Ms Justice Jyoti Singh observed that while it is trite that asserting trademark rights in registered designs makes the designs vulnerable, however, where the elements of the design are used as a larger trade dress get-up, presentation through its packaging etc., the passing off claim shall lie.

I.A. 6258/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiff)

At the outset, this notable judgment authored by a Single Judge Bench of the Delhi High Court comprising of Hon’ble Ms Justice Jyoti Singh sets the ball rolling by first and foremost putting forth in para 1 that:
Present application has been filed on behalf of the Plaintiff seeking interim injunction inter alia restraining the Defendants and their agents etc., from manufacturing, marketing, selling (including on online platforms), using designs bearing Nos. 280666 and 328605, the VENICE PRIME series of ceiling fans or any other fan(s) series, which are identical or deceptively similar to Plaintiff’s ENTICER series including ENTICER ART variants or which are a colourable imitation or substantial reproduction of Plaintiff’s ENTICER/ENTICER ART series in their get-up, layout, trade-dress, colour scheme, pattern etc., in any manner, amounting to infringement, passing off, unfair competition etc.

To put things in perspective, the Bench then envisages in para 2 that:
It is averred in the plaint that Plaintiff was incorporated in the year 1983 and by itself and/or by its permitted user, engaged in the Electrical and Power Distribution Equipment business. Plaintiff is a Billion Dollar leading Fast Moving Electrical Goods Company having extensive production and distribution networks across India and internationally, providing a wide range of world-class industrial and consumer electrical products. Plaintiff enjoys an enviable market dominance across a wide spectrum of products, including cables and wires, motors, fans, home appliances, electric water heaters, power capacitors etc. It has expanded into personal grooming products, water purifiers, solar lighting solutions and its products can be accessed through their website https://www.havells.com/.

Adding more, the Bench then discloses in para 3 that:
Plaintiff is stated to be a market leader in manufacture and trading of various types of fans in India and has won industry accolades on the launch of India’s first energy efficient fan ES-50, indigenously designed by its R&D Department. Plaintiff’s twin plant for manufacturing fans located at Haridwar, is one of the finest automated plants in the country.

Still more, the Bench then reveals in para 4 that:
Plaintiff’s products are sold under some of the most prestigious global brands like Havells, Crabtree, Standard, Promptec and trademark Lloyd. Owing to the quality of products and quick and efficient service Plaintiff has minimum customer complaints and highest rate of customer satisfaction and has thus earned the distinction of being the preferred choice in electrical products for discerning individuals and industrial consumers, both in India and abroad. Plaintiff’s products are sold in India and also exported to several foreign countries. The widespread sales and advertisements through various publicity mediums have resulted in Plaintiff’s range of electrical and home appliances becoming highly popular, well-known and Plaintiff has become a household name in the country.

In hindsight, the Bench then points out in para 6 that:
It is stated that the ENTICER ceiling fan was indigenously conceptualised by the Plaintiff at its state-of-the-art Customer Experience and Design Centre in early 2014-15 by its employees during the course of their employment. Keeping in view the novel features of the ENTICER ceiling fan, a design application was filed by the Plaintiff on 19.02.2016, bearing design No. ‘280666’ and was registered. Registration is valid and subsisting. In March, 2016 Plaintiff launched its ENTICER fan and on account of its superior quality and premium aesthetic features, the fan gained huge popularity amongst the members of the trade and public, who recognize the fan to be originating from the Plaintiff and no one else. Garnering on the immense popularity of its ENTICER series, Plaintiff raised the bar by introducing novel and unique ceiling fans by placing artistic work on the trims of the ENTICER ceiling fan, using In-Mould Design Technology and the series was titled ‘ENTICERART’. First fan under the series named Enticer Art Limited Edition, was launched in early 2017 and received immense positive response.

As it turned out, the Bench then mentions in para 8 that:
It is pleaded that ENTICER ART is a ‘high-end art patterns’ fan to compliment house interiors and is inspired by nature. In the year 2020, Plaintiff launched a series ‘NATURE SERIES (NS)’ under the category of ENTICER ART Series, inspired from nature and the patterns include flowers, marble etc. and the fans under both the series are available in various colour combinations. It is averred that the unique features of the fans under the two series viz. novel overall shape, configuration and look, designs etc., enabled the Plaintiff to obtain various registrations for its designs under The Designs Act, 2000 (hereinafter referred to as the ‘Act’), including registration bearing No. ‘280666’ issued on 08.02.2017, with effect from 19.02.2016 and registration bearing No. ‘328605’ issued on 06.10.2020, with effect from 25.03.2020(hereinafter referred to as ‘Design 2016’ and ‘Design 2020’, respectively).

The key point to note is that the Bench then enunciates in para 9 that:
The cause of action, as averred in the plaint, arose in March, 2022 when the Plaintiff learnt that Defendant No.1 was launching its new series namely, VENICE PRIME and the fans thereunder were a blatant imitation of Plaintiff’s ENTICER/ENTICER ART series of fans, followed by the issue of catalogue by Defendant No.2 in April, 2022, indicating that Defendant No.1 was ready to launch its new series fans.

Briefly stated, the Bench then hastens to add in para 52 that:
The Division Bench noted in para 14 of the judgment that answering issue no. II, the majority in Mohan Lal (supra) held that a holder of a registered design can institute an action for passing off. It was further observed in para 17 that issue no. III considered by the FB in Mohan Lal (supra), constituted the subject matter of reference before the FJB in Carlsberg (supra), which was answered by the FJB in the affirmative by holding that a composite suit that joins two causes of action, one for infringement of a registered design and the other for passing off is maintainable.

Most forthrightly, the Bench then mandates in para 55 that:
In my view, learned Senior Counsel for Defendant No.1 is not correct in arguing that the pleas are self-destructive and therefore, no interim injunction should be granted till thePlaintiff amends the suit and elects one of the various reliefs claimed. It is a settled law that parties can raise alternate and inconsistent pleas but should not be permitted to raise pleas which are mutually destructive of each other, as held by the Supreme Court in Srinivas Ram Kumar v. Mahabir Prasad and Others, AIR 1951 SC 177. Therefore, even if the Plaintiff asserts a claim of trademark in a registered design, which makes a design vulnerable, it is open to the Plaintiff to plead that it has a goodwill and reputation and Defendant No.1, by misrepresentation is passing off its goods as that of the Plaintiff, thereby causing damage and injury and Defendant No.1 by fraudulent imitation of the article to which the registered design is applied is guilty of infringement of the said design.

Be it noted, the Bench then points out in para 58 that:
Read in entirety, what emerges from a plain reading of the plaint is that the Plaintiff, apart from pleading the use of registered design as a trademark for ENTICER/ENTICER ART series, also alleges that Defendant No.1 is blatantly copying the essential and ingenious features of the designs in its ENTICER/ENTICER ART fans as well as adopting the entire get-up, layout, colour scheme, motif patterns, trim, overall appearance, configuration, shape etc. amounting to passing off its products as that of the Plaintiff. Therefore, in my view, the plea of passing off cannot be negated only on the ground that the Plaintiff has asserted trademark rights in the registered designs and requires consideration on its own merits and the suit, in my prima facie is maintainable in its present form. I am also fortified in my view by the judgment in Dart Industries (supra) and before proceeding further, it would be useful to allude to the same in some detail.

It also ought to be mentioned that the Bench then notes in para 68 that, Insofar as the claim for infringement of the Design 2016 is concerned, to determine infringement under Section 22(1) of the Act, the test is to compare the rival designs and judge by the eye, if the essential features of the impugned design/product are substantially different from the registered design sought to be protected. There is no dispute between the parties that Plaintiff has registration in Design 2016. Therefore, all that is required to be judged is whether the essential features of Design 2016 are substantially similar or different from the VENICE PRIME design. Visual comparison of the two fans shows that: (a). overall appearance and shape are similar; (b). the inner border of the motor body is plain which is outlining the bulge and seamlessly joining with the trim while the outer border part is continuously running from the blade trims to the body ring giving an effect that the trims/ornamentation body ring and bottom cover are seamless and one single unit, in both the fans; and (c). both fans have filleted corners on the blade tips which give a symmetric appearance along with a depression that runs through the blades. As held in Castrol India Limited v. Tide Water Oil Co. (I) Ltd. 1994 SCC OnLine Cal 303, if the visual features of the two competing 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 has to be looked as one of substance and essential features of the designs ought to be considered. Judged from this perspective, in my prima facie view, there is similarity in the substantial features of the two designs. Therefore, Plaintiff has made out a prima facie case of infringement of Design 2016, against Defendant No.1.

Quite significantly, the Bench then observes in para 85 that:
Applying the aforesaid principles and comparing the design on the impugned products with the Plaintiff’s Design 2020, it is established that Defendant No.1 has slavishly copied and imitated the Plaintiff’s design, thereby satisfying the tests laid down in the judgments aforementioned and the provisions of Section 22 (1) of the Act. The essential features of Design 2020 have been substantially copied and as held in Whirlpool (supra), once the Court concludes that there has been copying, cosmetic differences and an involved inquiry is uncalled for and not required. Concept of substantiality is not required to be gone into once the Court concludes that one had copied from the other. This Court is satisfied that the impugned design has been created with a clear intent to copy the Design 2020 and as aforementioned Defendant No.1 had several other options and alternatives to adopt another design without applying a design which is substantially similar to that of Design 2020.

As a corollary, the Bench then holds in para 87 that:
For all the aforesaid reasons, I am of the view that Plaintiff has made out a prima facie case for grant of interim injunction. Balance of convenience also lies in favour of the Plaintiff applying the principles laid down in the case of Wander (supra) since even if the stand of Defendant No.1 is to be accepted that it has launched the products, admittedly it is only in February, 2022. In case, the interim injunction is not granted irreparable loss shall be caused to the Plaintiff as Defendant No.1 is infringing the design of the Plaintiff and passing off its goods as that of the Plaintiff, thereby deceiving the public.

Furthermore, the Bench then directs in para 88 that:
Accordingly, Defendant No.1, its C&F agents, dealers, retailers, representatives, assignees or anyone acting on its behalf are restrained from manufacturing, marketing, selling (including on the online platforms) the fans under the VENICE PRIME series or those which are identical or deceptively similar to them, using the designs of the Plaintiff and those which are colourable imitation or substantial reproduction of Plaintiff’s get-up, layout, trade dress, colour scheme, pattern, shape, configuration etc. in the ENTICER ART-NS Stone series as aforementioned, during the pendency of the suit.

For sake of clarity, the Bench then states in para 89 that:
It is made clear that the aforesaid observations and findings are only prima facie and shall have no bearing on the final adjudication of the suit.

Finally, the Bench then concludes by holding that:
List before the learned Joint Registrar on 02.08.2022.

In conclusion, we thus see that the Delhi High Court grants interim injunction in favour of the plaintiff. It also ought to be noted that the Court minced no words to hold that the defendant was infringing the design of the plaintiffs and passing off its goods as that of the plaintiff, thereby deceiving the public. The Court also made it amply clear that the plea of passing-off can’t be negated solely on ground that plaintiff had asserted trademarks rights in registered designs. So there should be not even a straw of doubt that a composite suit filed for seeking action in respect of both the design infringement and so also for passing off is maintainable.

Sanjeev Sirohi, Advocate,
s/o Col (Retd) BPS Sirohi, A 82, Defence Enclave,
Sardhana Road, Kankerkhera, Meerut – 250001, Uttar Pradesh