The Bombay High Court has clarified that in an action for infringement of a registered design, the comparison must be between the registered design itself and the impugned article, and not between the impugned article and subsequent product variants of the plaintiff. The test is whether, judged solely by the eye and viewing the designs as a whole, the impugned article incorporates the essential parts or the basis of the claim for novelty in the registered design.
Thus, the Court held that where the alleged similarities are only in the basic functional appearance of the article and the visible differences are clear, no prima facie case of piracy or infringement is made out. Further, in a passing off claim arising alongside a design infringement dispute, mere similarity is insufficient; and the plaintiff must establish goodwill and distinctiveness in the particular get-up and show “something more” than mere resemblance.
Finding that the material relied upon does not pertain specifically to the suit product/design, the High Court refused the interim relief of injunction to Atomberg Technologies Private Limited.
A Single Judge Bench of Justice Gauri Godse found, prima facie, that the product-versus-product comparison made by the plaintiff in the plaint was not confined to the plaintiff’s registered design, but compared the defendant’s fan with other later models launched by the plaintiff. The Bench observed that the plaintiff had obtained design registration for one model but sought to demonstrate similarity by using different models in the comparative material.
The Bench further observed that no unique or novel feature was prima facie visible in the suit fan that could be said to be obviously different from a usual ceiling fan. It held that basic components such as blades, shank, canopy and motor housing lid are inherent features of any ceiling fan and cannot, by themselves, be treated as novel for purposes of design infringement.
Applying the settled visual test, the Bench held that the differences in blade design, motor housing lid, shank profile, rivet quantity and canopy were clearly visible. On viewing both designs as a whole, the Bench found that the impugned fan was substantially different from the suit fan and that the features claimed as novel by the plaintiff were not reflected in the defendant’s product. The Bench also accepted the defendant’s objection that the second comparative table in the plaint relied on photographs of the plaintiff’s later models and not strictly on the registered design.
On passing off, the Bench observed that the plaintiff had not established goodwill and distinctiveness in a particular get-up so as to show “something more” than mere similarity. The Chartered Accountant’s certificate relied upon by the plaintiff related to six models/brands and not only to the suit fan. Accordingly, the Bench held that the plaintiff failed to make out a prima facie case for passing off as well.
The Bench ultimately held that the plaintiff had failed to establish a prima facie case, balance of convenience or irreparable loss. Consequently, the interim application was dismissed, the Court Receiver was discharged, and the goods seized by the Court Receiver were directed to be released to the defendant forthwith.
Briefly, the plaintiff filed a commercial IP suit seeking damages and injunction for alleged infringement of its registered design dated January 01, 2020, bearing registration no. 325322-001 in Class 23-04 for a ceiling fan, and also alleged passing off by the defendant’s impugned fan. In the interim application, the plaintiff sought temporary injunction and appointment of a Court Receiver, and an ex parte ad interim order dated July 24, 2025 had restrained the defendant from manufacturing, selling, exhibiting or advertising the impugned fan and had directed seizure of the impugned goods and manufacturing material.
The plaintiff contended that the novelty of its registered design lay in the shape and configuration of the fan, including the blade’s petal-inspired curve, asymmetric tapering, rounded junction, subtle V-bend, curved body, slanted canopy edge, and bottom circular plastic base with a cut-away edge. The plaintiff also asserted that it had openly and extensively sold the suit fan since November 2020 and relied on photographs, invoices and a Chartered Accountant’s certificate to show use and goodwill.
The defendant opposed the application by contending that the plaintiff’s comparison was misleading because the plaint compared the defendant’s fan not only with the registered design but also with the plaintiff’s later models. The defendant argued that the registered design and the later models were materially different, including in the motor housing lid, shank profile, blade integration, canopy design, rivet placement and other visual features, and further contended that the plaintiff’s design lacked novelty and was only a trade variant.
Appearances:
Senior Advocate Dr. Veerendra Tulzapurkar, along with Advocates Hiren Kamod, Vaibhav Keni, Neha Iyer, Proutima Ray and Vishwajeet Jadhav, for the Plaintiff
Senior Advocate Venkatesh Dhond, along with Advocates Akshay Patil, Akshay Kamble, Neha Patil, Trupti Poojary, Prateek Pansare, and Reshma Rajgopalan, for the Defendant
