An interim injunction for design infringement requires clear demonstrable novelty; mere similarity is insufficient, emphasizing the criteria of prior publication and trade variant in assessing design registration validity.

JUDGMENT :

M.S.KARNIK, J.

1. The appellant - Atomberg Technologies Private Limited (Atomberg for short) is the original plaintiff. Atomberg is aggrieved by the order passed by the learned Single Judge of this Court dated 05/06/2023 dismissing the interim application (‘IA’, short) in Commercial IP Suit filed by Atomberg thereby refusing to grant interim injunction against the respondent (Luker Electric for short) original defendant.

2. The facts pleaded in the plaint and the application for interim reliefs in the context of its registered design of ceiling fan ‘Atomberg Renesa Ceiling Fan’ need to be briefly stated.

3. The design in respect of the suit fan was registered on 08.09.2018. Atomberg has come out with a case that it was served with caveats filed by the Luker Electric before this Court and District Court at Ernakulam in Kerala, sometime in the last week of September 2022, when it was realised that Luker Electric had obtained registration for two ceiling fans : Size Zero Fan 1 and Size Zero Fan 2. It is Atomberg’s case that the said registration was obtained on 21.03.2022 by Luker Electric in a fraudulent manner as the impugned designs and ceiling fans of Luker Electric infringe upon the registered design of the ceiling fan of Atomberg. Atomberg says that further enquiry revealed that only the fan with impugned design Size Zero Fan 1 was introduced into the market and ceiling fan as per the impugned design Size Zero Fan 2 was yet to be introduced in the market. It is the case of the Atomberg that Luker Electric had committed the act of infringement as also the tort of passing off.

4. Shri Tulzapurkar, learned Senior Advocate for Atomberg while narrating the facts stated that Atomberg started its production of ceiling fans in the year 2015, selling the same online from the year 2016 and further that in the year 2018 Atomberg entered in retail market all over India. Atomberg has high profile clients and it has been given awards, details of which have been given in paragraph 4 of the plaint. Atomberg claims to have used two house-marks Atomberg and Gorilla. It is further stated that with passage of time, Atomberg gave up the use of its house-mark Gorilla. It is also stated in paragraph 8 of the plaint that any reference to Atomberg Renesa Ceiling Fan includes Atomberg Gorilla Renesa Ceiling Fan. In paragraph 9 of the plaint, it is stated that the design of the Atomberg Renesa Ceiling Fan was created in September 2018 by Directors of Atomberg and registration was secured under the DESIGNS ACT , 2000 (hereinafter referred to as ‘the DESIGNS ACT ’, for short) on 08.09.2018. The Directors gave permission to Atomberg to use the said registered design and subsequently, on 15.02.2021, they executed a deed of assignment in favour of Atomberg. On this basis, Atomberg claims proprietary rights in the said registered design bearing registration no. 309694 in class 23-04. The copy of the registration certificate is placed on record along with the plaint. Then in paragraph 10 of the plaint, Atomberg has stated in detail as to what, according to it, are the unique features of the said registered design. The appellant claims that such features give an aesthetic look to the aforesaid ceiling fan of Atomberg called Atomberg Renesa Ceiling Fan. Atomberg says that it has earned tremendous goodwill. To support this statement, Atomberg relied upon the sales turnover figures for the year 2021-2022 to the tun