The Suit:
The Subject Matter Suit pertains to Infringement of Registered Design under No. 322384-002 dated 09.10.2019 in relation to Coolers.

Plaintiff's Products:
The Plaintiff has been selling the subject matter Design Products Cookers under the brand name ZRYPHR.

Defendant's Product:
The subject matter Suit was filed against the Defendant's cooler sold under the Trade Mark NOVA alleging to be Infringement of Plaintiff's registered Design.

Defendant's Argument:
The defendant did not dispute the similarity of both the products in question. However, Plaintiff's design was assailed on the ground of prior publication.

The Contention of the Defendant was that the Plaintiff himself had filed documents evidencing prior publication of the subject matter Design. A few invoices filed by the Plaintiff were referred to by the Defendant in this regard showing the brand name ZEPHYR.

Plaintiff's Rebuttal:
The Plaintiff sought to distinguish by stating that under the brand ZEPHYR , not only the subject matter registered design product of the Plaintiff was sold, but also the other design product.

The Judgement:
Plaintiff was declined an interim injunction as the Plaintiff itself displayed the subject matter Design on its web site prior to the relevant date of design registration.

The Observation Of The Hon'ble Court:

1. The brand name of the cooler is, in fact, really irrelevant in the case of design infringement. The relevant consideration is whether the subject matter design is to prior published or not?
    
2. What has to be seen is whether the coolers bearing the suit design were available online prior to the date of application, by the plaintiff, for registration of the design.
3. Whether the design was being sold under the brand ZEPHYR or the brand MIST, or, for that matter, any other brand, makes no difference to the controversy.
4. On the basis of an internet advertisement filed by the plaintiff, the Hon'ble Court reached to the conclusion that a cooler of the plaintiff, bearing the suit's design, was available online for sale, on the plaintiff's own website, prior to the relevant date of design registration, i.e. 24.03.2019.
5. In view of the above, the Hon'ble Court observed that Defendant 1 has been able to make out a credible challenge to the vulnerability of the suit design to cancellation within the meaning of Section 19(1)(b) of the Designs Act.

Important Finding Of The Hon'ble Court:
Brand Name is irrelevant for determination of Infringement of Design.

The Case Law Discussed:
Case Title: Novamax Industries LLP Vs Prem Appliances and Another
Judgment date:04.01.2023
Neutral Citation No. 2823/DHC/000333
Case No: CS Comm No.177 of 20211
Name of Court: High Court of Delhi
Name of Hon'ble Justice: C Hari Shankar, H.J.

Disclaimer:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Written By: Ajay Amitabh Suman, IPR Advocate - Hon'ble High Court of Delhi.
Email: [email protected], Ph No: 9990389539