By Vohra & Vohra

The Delhi High Court’s decision in Novamax Industries LLP v. Prem Appliances & Anr. (Order dated 19 June 2026) is an important addition to India’s evolving jurisprudence under the Designs Act, 2000. While the judgment undoubtedly reiterates the statutory consequences of prior publication of a registered design, its greater significance lies elsewhere. The Court emphatically reaffirmed that the failure of a statutory design infringement action does not automatically defeat an independent common law action for passing off.

The decision therefore strengthens the distinction between statutory intellectual property rights and common law protection of commercial goodwill. It also demonstrates that even where a registered design is vulnerable to invalidation, businesses may continue to protect the market reputation attached to the appearance of their products through an action for passing off.

Background of the Dispute

Novamax Industries LLP instituted a commercial suit alleging infringement of its registered design relating to air coolers. Besides seeking protection of its registered design, the plaintiff also pleaded passing off, damages, rendition of accounts and allied reliefs. The dispute arose after the plaintiff alleged that the defendants had manufactured and marketed coolers which were an obvious imitation of its registered design while also adopting branding likely to mislead consumers.

During the pendency of the suit, one of the defendants settled the dispute. The proceedings continued against Defendant No. 1, who filed an application under Order XIII-A of the Code of Civil Procedure seeking summary dismissal of the suit on the ground that the plaintiff’s registered design itself was invalid and incapable of enforcement.

Prior Publication: A Fatal Blow to the Design Registration

The principal defence was founded upon Section 19 of the Designs Act, 2000.

The defendant demonstrated that long before filing the application for registration of the impugned design, the plaintiff itself had already commercially marketed and publicly advertised coolers incorporating the same design under the brand “ZEPHYR”. Invoices predating the registration application, together with screenshots from the plaintiff’s own website displaying the products, were relied upon to establish prior publication.
The plaintiff was unable to satisfactorily explain how the design could still qualify as “new” or “original” after having already entered the public domain through its own commercial activities.

The Court therefore accepted that the registered design was prima facie vulnerable to cancellation under Section 19(1)(b) of the Designs Act, which permits cancellation where the design has been published before registration. Since the very foundation of the infringement claim rested upon a registration susceptible to invalidation, the Court concluded that the plaintiff had no real prospect of succeeding in its statutory infringement action.

Accordingly, the infringement claim was dismissed by way of summary judgment.

The Court Draws a Clear Distinction Between Infringement and Passing Off

Had the judgment concluded there, it would merely have reiterated settled principles governing prior publication under the Designs Act. However, the Court proceeded to address a far more important question.

Could the plaintiff nevertheless continue its action for passing off?

The defendant argued that since the registered design itself was unenforceable, the passing off claim necessarily had to fail as well. It further contended that the plaint did not sufficiently plead the essential ingredients required for maintaining a passing off action.

The Court declined to accept this submission. Instead, it carefully examined the pleadings and held that the plaintiff had specifically alleged imitation of the shape and configuration of the products, appropriation of its goodwill, likelihood of consumer confusion, and diversion of trade. These pleadings were sufficient to disclose a cause of action for passing off, even though the infringement claim itself lacked merit.

The Court emphasised that a plaint merely contains pleadings and not evidence. Whether those allegations are ultimately established can only be determined after a full trial.

Passing Off: A Common Law Remedy Independent of Statutory Registration

The judgment gains particular significance from its reliance upon the Full Bench decision in Carlsberg Breweries A/S v. Som Distilleries and the Division Bench decision in Crocs Inc. USA v. Bata India. The Court reaffirmed that a composite suit combining design infringement and passing off is legally maintainable. More importantly, it reiterated that the two causes of action arise from entirely different legal foundations.

Design infringement is a statutory remedy flowing from a valid registration. Passing off, on the other hand, is a common law action aimed at protecting commercial goodwill against misrepresentation. The latter survives independently of statutory registration and derives its legitimacy from the broader principle that no trader should misrepresent his goods as those of another.

This distinction assumes considerable importance because the invalidity of a registered design does not necessarily destroy the goodwill associated with the appearance of the product itself.

The Court therefore observed that even if the infringement action fails for want of a valid design registration, the same factual matrix may still support an independent claim for passing off if the plaintiff ultimately proves goodwill, misrepresentation and likelihood of deception.

Evidence Remains the Cornerstone of Passing Off

Another noteworthy aspect of the judgment is the Court’s emphasis upon the evidentiary nature of passing off actions.

Unlike infringement proceedings, where comparison of registered rights often determines the dispute, passing off requires proof of reputation, goodwill, consumer association, deception and resulting damage.

These questions cannot ordinarily be resolved merely on pleadings or through summary adjudication.

Recognising this distinction, the Court held that the plaintiff must be afforded an opportunity to lead evidence demonstrating the goodwill associated with its product configuration and establishing that consumers identify the appearance of the cooler with the plaintiff’s business. Only after appreciation of such evidence can the Court determine whether passing off has in fact occurred.

The refusal to summarily dismiss the passing off claim therefore reflects judicial caution against prematurely extinguishing common law rights without trial.

Practical Implications for Businesses

The judgment carries important lessons for businesses seeking protection of industrial designs.

First, applicants must exercise considerable caution before publicly disclosing or commercially exploiting a design prior to seeking registration. Premature publication may permanently undermine the validity of the registration itself.

Secondly, businesses should recognise that intellectual property strategy cannot depend exclusively upon statutory registrations. Long-term brand protection requires parallel development of commercial goodwill capable of sustaining independent common law remedies where statutory rights become vulnerable.

Finally, the decision highlights the importance of carefully drafted pleadings. Plaintiffs seeking relief for both infringement and passing off must clearly plead not only statutory rights but also the existence of goodwill, misrepresentation and likely deception.

Conclusion

The Delhi High Court’s decision in Novamax Industries LLP v. Prem Appliances & Anr. is far more than a routine application of the Designs Act. While the Court reaffirmed that prior publication is fatal to the validity of a registered design, it simultaneously preserved the autonomy of the common law action for passing off.
The ruling therefore reinforces a fundamental principle of intellectual property law: statutory rights and common law rights operate in parallel rather than in substitution of one another. A defective registration may defeat an infringement action, but it does not necessarily extinguish the goodwill painstakingly built by a business over time.

For litigants, practitioners and businesses alike, the judgment serves as an important reminder that while registration creates statutory exclusivity, it is reputation that ultimately sustains the broader protection afforded by the law of passing off.