Bombay High Court Denies Interim Relief to Atomberg: Design Published in Public Domain Before Registration Prima Facie Liable for Cancellation

Bombay High Court Denies Interim Relief to Atomberg: Design Published in Public Domain Before Registration Prima Facie Liable for Cancellation

The Bombay High Court refused to grant interim relief to Atomberg Technologies Pvt. Ltd., against Luker Electric Technologies Pvt. Ltd., for allegedly copying the design of one of its ceiling fans.

The single judge Justice Manish Pitale observed that the plaintiff- Atomberg Technologies Pvt. Ltd., had failed to make a prima facie case for design infringement of its Renesa Ceiling Fan as the design was available in public domain before registration and thus may be cancelled under section 19(b) (cancellation due to prior publication) of the Designs Act, 2000.

The brief background of the case is that applicant/plaintiff had 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 was obtained on 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, 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- Luker Electric Technologies Private Limited 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.

The defendant alleged that the plaintiff had indulged in suppression of material facts, particularly the fact that the design of the plaintiff, in question, was already published in the public domain by the plaintiff itself, thereby indicating that the registration of design of the plaintiff was, at the prima facie stage itself, unsustainable and that it could not be relied upon.

The Court while referring to Section 4 (prohibition of registration of certain designs) of the Designs Act, 2000, observed that if a design is not new or original, or is in the public domain, or is indistinguishable from known designs, the registration itself cannot be granted. Further, any such registration, if granted, can be cancelled as per section 19 (cancellation of registration).

The Court therefore remarked that, value of registration of design is diluted if material indicates that it was published before the registration date.

The judge further noted the social media posts which revealed pictures of Atomberg’s fan with its house-marks Gorilla and Atomberg. These posts were made before the date of registration Atomberg’s design.

It was further revealed before the Court that the design of the Atomberg Gorilla Renesa Ceiling Fan is prima facie similar to Atomberg’s registered design. Thus, the registration of Atomberg’s design may itself be hit by prohibition and cancellation; the Court opined.

“The stated stand taken in paragraph 8 of the plaint read with Exhibits Q, R and S, as also the delivery challans and invoices placed on record, do create an impression that the plaintiff’s design was already in public domain and published prior to the date of registration i.e., 8th September, 2018. A perusal of the designs of the fans shown at Exhibits Q, R and S prima facie shows that they are similar to the registered design of the plaintiff,” stated the judge.

The Court discerned that even if the rival products were to be compared as a whole, when the plaintiff claimed exclusive proprietary rights in the design, it had failed to make out a prima facie case in its favor in view of the design of the plaintiff being published and being in the public domain prior to the date of registration of its design.

Therefore, the Court avowed, “applying the position of law brought to the notice of this Court in the context of provisions of the Designs Act, particularly Sections 2(d), 4 and 19 thereof, this Court is of the opinion that the plaintiff has failed to make out a prima facie case in its favor for grant of interim reliefs. As the plaintiff has failed to make out a prima facie case in its favor, the aspects of balance of convenience and irreparable loss that the plaintiff may suffer in the absence of interim reliefs, pale into insignificance.”

Accordingly, the Court dismissed Atomberg’s application for interim relief.