21 Jun 2022

Havells India Limited vs Panasonic Life Solutions India Pvt Ltd & Anr.

FACTS:

The plaintiff has filed the present suit to seek an interim injunction against the defendant, restricting them from manufacturing and selling the VENIC PRIME series of fans, which are deceptively similar to the plaintiff’s ENTICER/ENTICER ART series of fans.

The unique features of fans under the aforementioned series have enabled the Plaintiff to acquire registrations of the designs bearing Application no. 280666 (hereinafter referred as Design 2016) in 2016 and 328605 (hereinafter referred as Design 2020) in 2020. The plaintiff alleged that the defendant’s VENIC PRIME series is a blatant imitation of the plaintiff’s ENTICER/ ENTICER ART series and therefore, instituted the present suit.

CONTENTIONS OF THE PLAINTIFF:

In the present suit, the plaintiff has not only alleged design infringement but also claimed trademark rights in their registered designs while invoking the common law remedy of passing off.

The plaintiff has alleged that the defendant’s VENICE PRIME series is a near replica of the plaintiff’s registered designs (Design 2016 and Design 2020) of the ENTICER/ENTICER ART series wherein the defendant has “wilfully copied the artistic motifs, patterns, placement of the said patterns on the trims and the edges of the encasement of the motor as well as the theme and colour scheme used for the said motifs”. The same would therefore be infringement of the plaintiff’s registered designs.

The plaintiff contends that defendant no. 1 is in the same field and is a competitor of the plaintiff. Therefore, trading of the impugned goods by the defendant would cause confusion as to their origin and be prejudicial to the plaintiff and lead to passing off the impugned goods as that of the plaintiff. 

CONTENTIONS OF DEFENDANT:

Defendant no.1 contended that the plaintiff has concealed material facts related to their registered design – Design 2016. The defendant further argued that the plaintiff’s design is invalid and liable to be cancelled under Section 19 of the Designs Act, 2000. Moreover, the design on the plaintiff’s fans is not new or original but merely a substitution of prior trade variants and is commonly used in the business.

The defendant argued that the plaintiff cannot raise the claim of infringement of a registered design and the common law remedy of passing off, simultaneously. Therefore, the suit cannot be continued in the present form without the plaintiff electing which claim would apply in the present suit.

JUDGEMENT:

The Hon’ble High Court, issued an interim injunction restraining the defendant and their representatives, agents, heirs, partners, etc. from using a design similar to that of the plaintiff’s registered designs and those which are colourable imitation or substantial reproduction of plaintiff’s get-up, layout, trade dress, colour scheme, pattern, shape, configuration etc” and observed the following:

1. If a registered design is used as a trademark, the same would be liable for cancellation. However, the claim of passing off of a trademark incudes and is wider than infringement and therefore, if the trade dress, presentation, or get up etc of the registered design is used, the action of passing off would be maintainable.

2. With respect to Design 2016:

a) There is not a prima facie case of passing off since the plaintiff has not been able to satisfy the condition of misrepresentation as no consumer of average intelligence and imperfect recollection would be confused or deceived into buying the defendant’s goods, believing that they were goods of the plaintiff.

b) There is prima facie case of infringement because the defendant’s design is strikingly similar to that of the plaintiff’s.

c) The concerned design is not visually similar to alleged prior publications and is therefore a new and original design.

3. The defendant’s plea of lack of novelty in the plaintiff’s design does not stand since the defendant’s design application is proof of the novelty of plaintiff’s design. Therefore, the defendant cannot approbate and reprobate in the same breath.

4. With respect to Design 2020,

a) There is a prima facie case of passing off since the plaintiff has satisfied the ‘classic trinity test’.

b) There is prima facie case of infringement because the defendant has substantially copied the essential feature of design of the plaintiff.