Court finds Novamax's design registration invalid due to prior publication; passing off claim requires further evidence.
In a recent judgment, the Delhi High Court dismissed the infringement suit brought by Novamax Industries LLP against Prem Appliances, citing that the design in question was invalid due to its prior publication. However, the court has allowed the passing off claim to proceed, recognizing the need for trial and evidence to establish goodwill, misrepresentation, and likelihood of confusion.
The case, titled Novamax Industries LLP v. Prem Appliances, was presided over by Justice Tushar Rao Gedela, who delivered the judgment on June 19, 2026. The plaintiff, Novamax Industries, had filed a suit alleging that Prem Appliances was infringing on its registered design and engaging in passing off. The design in question was registered under number 322384-002 and was used for manufacturing coolers.
During the proceedings, it was revealed that Novamax's design had been published and sold under the brand name "ZEPHYR" before the application for its registration was filed on October 19, 2019. The court noted that invoices provided by Novamax itself showed sales of coolers using the design prior to this date, rendering the registration invalid under Section 19(1)(b) of the Designs Act, 2000. Consequently, the infringement suit was dismissed.
Despite the dismissal of the infringement claim, the court allowed the passing off claim to continue. Justice Gedela emphasized that passing off is a common law remedy that requires evidence of goodwill, misrepresentation, and the likelihood of confusion. The court acknowledged that the plaintiff had made sufficient averments in the plaint to disclose a cause of action for passing off. Justice Gedela noted that the claim could not be dismissed prematurely under Order XIII-A of the Code of Civil Procedure, as evidence needs to be presented and assessed during the trial.
The court cited precedents, including the Full Bench judgment in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., to support the independent nature of passing off as a remedy. The judgment highlighted that passing off can be established through evidence, even if an infringement case is not made out.
The case will proceed to trial, where Novamax Industries will have the opportunity to prove its passing off claim against Prem Appliances. The court's decision underscores the importance of evidence in passing off cases and serves as a reminder of the distinct legal grounds for infringement and passing off under Indian law.
Bottom line:-
Designs Act, 2000 - Registration of a design is invalid if the design was published or sold prior to the application for registration. Plaintiff's suit for infringement dismissed due to prior publication, but passing off claim allowed to proceed as it requires evidence to establish goodwill, misrepresentation, and likelihood of confusion.
Statutory provision(s): Designs Act, 2000 Sections 19, 22, Code of Civil Procedure, 1908 Order XIII-A.
Novamax Industries LLP v. Prem Appliances, (Delhi) : Law Finder Doc id # 2926955
