Delhi High Court Dismisses Novamax's Cooler Design Infringement Claim, Keeps Passing Off Suit Alive

The Delhi High court on Friday dismissed Novamax Industries LLP's claim that Prem Appliances infringed its registered cooler design after finding that Novamax's own invoices and website showed the design had been publicly sold and displayed before the design application was filed.

Justice Tushar Rao Gedela, however, declined to summarily reject Novamax's passing off claim, holding that the issue would require evidence at trial.

"It is well nigh impossible for this Court to conclude that the plaintiff has any real prospect of succeeding on the claim of infringement of the suit design," the court held.

Novamax had alleged that Prem Appliances was manufacturing and selling coolers bearing a design identical to one of its registered designs and marketing them under the mark "AROKING" along with the sub-mark "NOVA".

An ex parte interim injunction granted in April 2021 was vacated in January 2023 after invoices and website material placed on record indicated that coolers bearing the suit design had been sold and displayed before the design application was filed.

Prem Appliances argued that the design was not new or original because Novamax itself had publicly disclosed and sold goods manufactured on the basis of the suit design before applying for registration. It relied on invoices showing sales of "ZEPHYR" coolers from January 2019 onwards and material from Novamax's website displaying the design in March 2019.

The court noted that Novamax had been unable to explain how the design could remain registrable when invoices relating to goods manufactured on the basis of the suit design pre-dated the application filed in October 2019.

The court also observed that Novamax's website displayed the relevant cooler design on March 24, 2019, months before the application for registration.

"Thus, it is clear and admitted that the products were being sold even prior to the date of application seeking registration of the design," the court observed.

Holding that the material on record established prior publication of the design, the court concluded that the infringement claim had no real prospect of success and dismissed it.

On the passing-off claim, the court found that Novamax had pleaded sufficient material facts, including allegations that the rival products copied the "features of shape and configurations" of its coolers and were being passed off as its goods.

"In the opinion of this Court, the plaintiff has given sufficient material facts and necessary concomitants to constitute a suit for cause of action based on allegations of passing off," the court held.

The court therefore rejected the request for summary dismissal of the passing off claim, leaving that issue to be decided after evidence is led at trial.