1. The suit is filed for damages and an injunction, alleging infringement of the plaintiff's registered design dated 1st January 2020 in class 23-04 bearing registration no. 325322-001 for ceiling fans (“suit fan”) and passing off its products/goods/fans. The interim application seeks a temporary injunction and the appointment of a court receiver. This Court vide Order dated 24th July 2025, granted exparte ad interim relief restraining the defendant from manufacturing, using, selling, exhibiting or advertising the impugned fan which imitates or resembles the suit fan. This Court appointed the Court Receiver to conduct a search, with directions to seize and take possession, custody, and control of the impugned fans, including dyes, moulds, and other material used to manufacture them.

2. After service of notice, the defendant has appeared and filed an affidavit-in-reply. Hence, the interim application was taken up for hearing and final disposal.

SUBMISSIONS ON BEHALF OF THE PLAINTIFF:

3. Learned senior counsel for the plaintiff relied upon the comparative table of photographs showing the registered design and the impugned fan. He submitted that the novelty in the plaintiff’s registered design lies in the shape and configuration, and in the blade’s unique petal-inspired curve. The surface flows smoothly, with continuous curvature from root to tip, and each blade features asymmetric tapering. The blade in the suit fan tapers at the edge, with a rounded junction that creates a smooth transition. The blades are uniquely shaped, with a subtle V-bend along their length, and the body is curved, narrowing at the top and gradually widening towards the bottom, creating a sleek, balanced silhouette. The canopies of the suit fan have a slanted top edge that matches the fan's diameter for a smooth, continuous look, and the fan's bottom circular plastic base features a cut-away edge that creates a dip, helping reduce visual bulk. The aesthetic look and design, along with the said features, of the suit fan have never been combined to create any other fan. It is submitted that the plaintiff was the first to introduce the unique features, and since the introduction of the suit fan, the plaintiff has been selling the same in different colours.

4. It is submitted that since November 2020, the plaintiff has openly, continuously and extensively sold the suit fan after applying for registration on 1st January 2020. Learned senior counsel for the plaintiff relied on the photographs, invoices and the Chartered Accountant's certificate. He relied upon the averments in paragraph 21 of the plaint regarding the plaintiff's knowledge of the defendant's fan having a shape configuration, design, and aesthetic appeal identical to the plaintiff’s design, having a fraudulent imitation of the shape configuration and design of the plaintiff's registered design.

5. Learned senior counsel for the plaintiff relied upon the definitions of “article” under Section 2(a), “design” under Section 2 (d) and “original” under Section 2(g) of the Designs Act. He submitted that a design would mean the features of the shape, configuration, and pattern, which, in the finished article, appeal to and are judged solely by the eye, and that an original design would mean a design originating from the author of such design. He also relied upon Sections 4, 5, 6, 7, 8, 11 and 31 of the Designs Act to point out the procedure followed for registration of a design, publication of particulars of the registered design, powers of the Controller and rectification of the register. He also pointed out that the grounds for the cancellation of designs under Section 19 can be raised as a defence under Section 22 (3) of the Designs Act.

6. Learned senior counsel for the plaintiff relied upon the decision of this Court in Whirlpool of India Ltd. vs. Videocon Industries Ltd.(2015(1) Bom C R 137) to point out the well-settled legal principles for the test to be applied in deciding what constitutes an obvious imitation and/or is actionable that have been considered in several judicial pronouncements. He submitted that the similarity or difference is to be judged through the eye alone, where the article in respect of which the design is applied is itself the object of purchase, through the eye of the purchaser. He submitted that the Court should consider the rival designs as a whole to see whether the impugned design is substantially different from the design sought to be enforced. He submitted that the said decision of the learned Single Judge of this Court is approved in the Apex Court’s decision in S.D. Containers vs. Mold-Tek Packaging Ltd((2021) 3 SCC 289).

7. Learned senior counsel for the plaintiff also relied upon the decision of the Division Bench in the Appeal filed in the same case, approving the ad-interim injunction granted in the suit. He relied on the observations in Videocon Industries Limited vs. Whirlpool of India Limited(2012 SCC OnLine Bom 1171), where the Division Bench held that, at first sight, the designs appeared similar, and that even an average buyer would feel so. Thus, the well-established test of judging through the eye alone was followed, where the article with respect to the design is applied to the object of purchase through the eye of the purchaser. He also relied on the observations of the Division Bench in holding that an action for passing off can be maintained if the offender, with full knowledge, creates a situation in which opportunities arise for the consumer to be deceived, which is enough to sustain an action under passing off.

8. Learned senior counsel for the plaintiff relied upon the decision of this Court in Asian Rubber Industries vs. Jasco Rubbers(2012 (5) Mh.L.J. 548). In the said decision, it is held that there was novelty in the shape, configuration and pattern of the footwear of the plaintiff’s design, and there was no product in the market having a similar design. Furthermore, the defendants had not explained how they conceptualised their product; hence, the court framed a prima facie opinion that the design of the defendant’s footwear was identical and deceptive to the registered designs of the plaintiff’s footwear. He submits that the legal principles in the said decision would apply in the present case, containing similar facts.

9. Learned senior counsel for the plaintiff relied upon the decision of the Delhi High Court in Sirona Hygiene Private Limited vs. Amazon Seller Services Private Limited and Others(2023: DHC: 1888). He submits that the Delhi High Court held that when the difference between a design which is merely ornamental and a design which is utilitarian is considered for the aspect of distinction, it is possible that the differences vis-à-vis prior art may be minor on a visual inspection, but substantial where the utility of the product is concerned. He submitted that in the present case, novelty is pleaded in paragraph 14 of the plaint.

10. For the purpose of complete disclosure, the orders passed in the Interim Application (L) No.28883/2022 in Commercial IP Suit No.506/2022 filed by the plaintiff are produced on record. The said suit was filed against Polycab India Limited for design infringement in respect of the other Renesa fan. This Court granted ad interim relief, and the suit is decreed in favour of the plaintiff in terms of the consent terms on 3rd February 2023. In the Interim Application (L) No.36385/2022 in Commercial IP Suit No.66/2023 filed by the plaintiff against Luker Electric Technologies Pvt. Ltd. for design infringement in respect of the Other Renesa fan, this Court vide order dated 5th June, 2023 dismissed the Interim Application of the plaintiff inter-alia on the ground that there was no novelty in the design of the Other Renesa fan and there was prior publication. The plaintiff had preferred an appeal against the said order dated 5th June, 2023, which has been dismissed.

11. The defendant has applied for registration of the defendant’s fan. Hence, the defendant is estopped from contending that the defendant’s fan is unique and different from the plaintiff’s registered design. Learned senior counsel for the plaintiff relied upon the findings recorded in the judgment, granting ad interim relief in the present suit, upon the comparison of the views from the plaintiff's design registration with the defendant’s impugned fan. He submitted that this Court has recorded prima facie findings that the overall shape, configuration and get-up of the impugned fan is not a result of any independent creation or coincidence but a deliberate reproduction of the plaintiff’s registered design. He therefore submits that the ad interim relief granted by this Court be confirmed.

SUBMISSIONS ON BEHALF OF THE DEFENDANT:

12. Learned senior counsel for the defendant showed the comparison between the plaintiff’s suit fan and the defendant’s fan by producing both fans before this Court. He pointed out the two tables incorporated in the plaint for comparison of the plaintiff’s registered design fan with the defendant’s fan and the pictures of the different views of the plaintiff’s fan with the pictures of the defendant’s fan in different views. In the second table, the pictures of the plaintiff’s fan are not of the registered design. Therefore, the plaintiff’s attempt is to compare the defendant’s fan with the subsequent models launched by the plaintiff and not with the fan of the registered design. Learned senior counsel for the defendant relied upon the comparative table incorporated in the affidavit-in-reply to show the difference in the plaintiff’s registered design fan in the first table and the plaintiff’s fan in the second table. He points out the difference in the motor housing lid and the shank profile. He therefore submits that the comparative tables incorporated in the plaint are misleading.

13. The plaintiff has claimed to have registered the design by identifying the model as “Atomberg Renesa Alpha” and further claims to have various models defined as “Atomberg Renesa Prime”, “Atomberg Renesa Prime Regulator”, “Atomberg Renesa Zen”, “Atomberg Renesa Enzel” and “Atomberg Renesa Prime Remote”. Therefore, according to the learned senior counsel for the defendant, the plaintiff seeks to extend the registered design protection to all subsequent models. Thus, the plaintiff has secured the exparte adinterim protection based on a misleading comparative table by incorporating the features of the subsequent models in the second table.

14. The plaintiff’s “Other Renesa Fan” design no. 309694 is a mere trade variant, and there is no novelty or originality. Even if the plaintiff’s “Other Renesa Fan” design no. 309694 and suit design registration no. 325322-001 is completely different, even the defendant’s fan differs from the plaintiff’s registered design. Learned senior counsel for the defendant relied upon the comparative table incorporated in the affidavit-in-reply to show the difference in the flat face of the integrated shank with the blade surface, and then bent in “Z” shape to reach the motor housing in design registration no. 325322-001, and the flat face of the shank integrated with the blade surface, and then slightly twisted to reach the motor housing in design no. 309694. This “Z” shaped integration is significantly different in the visuals of the two models.

15. It is submitted that the said “Z” shaped integration that is clearly and obviously visible in the plaintiff’s suit design is absent in the defendant’s fan. To prove design infringement, comparisons have to be made between the plaintiff’s registered design and the defendant’s fan and not with the defendant’s product, which is admittedly different from the registered design. A product-versus-product comparison cannot be made, especially when the plaintiff has changed the model. The plaintiff failed to identify the similarity between the plaintiff’s registered design fan and the defendant’s fan. Even otherwise, there is a visible difference in the plaintiff’s registered design fan and the defendant’s fan. The blade position, canopy design, housing surface pattern, rivet quantity and positions, blade edge profile, motor housing lid, blade interface with the motor housing, capacitor, shank profile, and floral petal-like pattern are completely different in the defendant’s fan.

16. There is no novelty in the plaintiff’s suit fan when compared with the existing ceiling fans in the market, and there is no technical or functional advancement. Hence, under the provisions of the Designs Act, if a design does not appear to be new or original and is not significantly distinguishable from the known designs or a combination of the known designs, the plaintiff’s registration of the design is liable to be cancelled.

17. The plaintiff opted to retain the “RENESA brand for the ceiling fan launched in 2018 as “ATOMBERG RENESA” and “ATOMBERG RENESA ALPHA” in November 2019, proving that the latter is only a trade variant without any novel or unique features. In Commercial IP Suit No. 66 of 2023, this court refused to grant any injunction in favour of the plaintiff in respect to the design of the Renesa ceiling fan under design registration no. 309694, as the plaintiff failed to prove novelty and originality and that it was only a trade variant. Therefore, the subsequent registration for another Renesa model is also not novel or original. Hence, the registration relied upon by the plaintiff is liable to be cancelled under Section 19 of the Designs Act. The defendant is therefore entitled to raise the grounds of challenge to the plaintiff’s design registration as a defence under Section 22(3) of the Designs Act.

18. The passing-off allegation concerns only the “Z” shape; however, the name and the brand are different. There is no substance in the allegations of passing off. The goodwill relied upon by the plaintiff is based solely on a chartered accountant’s certificate for all six fans, which are the brands. Therefore, there is no material of the plaintiff’s goodwill regarding the different shape of the registered design. The plaintiff seeks to contend that the design as a whole is new, but in reality, only the “Z” shape and edge may be different; hence, at the threshold, the similarity is not seen. Therefore, the brand is irrelevant, and there is nothing similar. The defendant’s application for registration cannot be relied upon by the plaintiff to contend that the plaintiff’s registered design is unique.

19. In view of the different facts of the present case, the decision relied upon by the plaintiff in Asian Rubber and the Delhi High Court’s decision would not apply to the present case. In the present case, there is no utilitarian purpose, and the claimed novelty is only aesthetic.

20. Learned senior counsel for the defendant relied upon the decision of this Court in M/s. Kemp and Company and Another vs. M/s. Prima Plastics Ltd(1998 SCC OnLine Bom 437). This court, in the said decision, held that the defence, which is permissible to a defendant in the legal proceedings provided under Section 53 of the old Designs Act, 1971 (Section 22 of the new Designs Act 2000), is always available to the defendant to be raised at the interlocutory stage also. It is held that the defence which the defendant can set up, finally in the defence of the suit, that the registration certificate is not conclusive because the design was previously published or was neither new nor original, can always be set up at the interlocutory stage while contesting the application for interim relief.

21. On the aspect of passing off in the context of rival claims under the Designs Act, it is held in M/s. Kemp and Company that if the plaintiff has to succeed on the ground of passing off, he must show something more than mere similarity between the goods, and when an article is shaped in an unusual way, not primarily for giving some benefit in use or for any other practical purpose, but capricious in order purely to give an article a distinctive appearance, characteristic of that particular manufacturer’s goods providing a cause of action in passing off if the goods were copied. This view is followed by another Single Judge of this Court in Atomberg Technologies Private Limited vs. Luker Electric Technologies Private Limited(2023 SCC OnLine Bom 1151). It is held in the said decision that while examining the aspect of a prima facie case being made out for the grant of interim relief, even if the court was to proceed on the basis that the defendant has copied the design of the plaintiff, “something more” than mere similarity would have to be demonstrated by the plaintiff for successfully claiming interim relief. This court, therefore, refused interim relief as the plaintiff was unable to make out “something more” as required under the law to successfully claim interim relief against the defendant, even on the aspect of passing off.

22. Learned senior counsel for the defendant relied upon the decision of the Delhi High Court in Trodata Gmbh and Another vs. Addprint India Enterprises Pvt. Ltd. And Another(2025 SCC OnLine Del 4342). It is held in the said decision that while examining a charge of design piracy, the court is not to proceed from the point of view of a person of average intelligence and imperfect recollection, but has to examine the article vis-à-vis the registered design as it would appear to an instructed eye, which is aware of the features of the registered design.

23. Learned senior counsel for the defendant relied upon the decision of this Court in Faber-Castell Aktiengesellschaft and Another vs. M/s. Pikpen Private Limited(2003(4) Mh. L. J. 264), to support his submissions that the passing off does not take place merely on a deceptive similarity between the goods only with reference to the trademark, however, it takes place if there is, on the whole, such a deceptive similarity as would confuse the customers as to the identity of the product and that too at the time of purchase.

24. Therefore, all the grounds of defence to challenge the plaintiff’s registered design are available to the defendant. There is no novelty or originality shown in the registered design of the plaintiff. Hence, in view of the obvious difference between the defendant’s fan and the plaintiff's registered design, it would not warrant any injunction against the defendant.

CONSIDERATION OF SUBMISSIONS AND ANALYSIS:

25. To consider the rival submissions, I have carefully perused the pleadings and the supporting documents. According to the plaintiff, its goods/fans are sold bearing the house mark ATOMBERG with various product identification marks, RENESA ALPHA, RENESA PRIME, RENESA PRIME REGULATOR, RENESA ZEN, RENESA ENZEL, RENESA PRIME REMOTE, RENESA, RENESA +, RENESA SMART+, ARIS, STUDIO, ERICA, OZEO, IKANO, etc., and are known for their superior quality, unmatched features, durability and design. It is contended in the plaint that the plaintiff has a Pan-India service network comprising more than 400 service centres. The plaintiff claims to have spent a substantial amount on promoting and advertising its goods through print and electronic media, including the circulation of catalogues for the benefit of customers, and to have earned substantial revenue from the sale of its goods.

26. It is pleaded by the plaintiff that in or about the year 2018, the plaintiff introduced a ceiling fan under the brand name Atomberg Renesa ("Other Renesa fan"). Thereafter, in or about December 2019, the plaintiff claims to have conceptualized and developed a completely new and original design for a ceiling fan, distinct from any other fan of the plaintiff including, the Other Renesa fan, under a new trade mark/brand "Atomberg Renesa Alpha", which was commercially sold in the market in November, 2020, i.e. the suit fan. According to the plaintiff, the suit fan has a unique, innovative, distinctive, original and novel design. It is the plaintiff’s case that, due to the commercial success of the said fan, in the year 2023, the plaintiff decided to sell the said fan with a minor variation in the blade connector/shank, in addition to Atomberg Renesa Alpha, which was sold from November 2020. The plaintiff contends that the variations were introduced under the trademarks/brands as Atomberg Renesa Prime from August 2023, Atomberg Renesa Prime Regulator from August 2023, Atomberg Renesa Zen from September 2023, Atomberg Renesa Enzel from October 2023, and Atomberg Renesa Prime Remote from December 2023. It is thus contended that the said 6 brands/trademarks have been used exclusively in respect of the said fan forming the subject matter of the present suit.

27. The plaintiff alleged that the defendant's fan, under the name "Pigeon Fan-tastic BLDC Ceiling Fan", i.e. the impugned fan, has a shape, configuration, design and aesthetic appeal that is identical with and/or a fraudulent imitation of the shape, configuration, design of the suit fan for which the plaintiff has secured design registration.

28. The defendant has filed an affidavit-in-reply, denying the allegations. The defendant claims to be an extensive manufacturer and seller of its cooking appliances, fans, mixers, grinders, kitchen and home utilities under its popular brand and trademark “Pigeon,” with a market presence of over 23 years. The defendant contends that it has incorporated distinctive and novel features into the overall shape, configuration, and ornamentation of its fan and has diligently taken steps to protect the design’s novelty. The defendant has filed an application for design registration on 21st February 2025, in class 23–04 in accordance with Sections 5 and 44 of the Designs Act 2000. The defendant has clarified in the affidavit-in-reply the dissimilarity between the plaintiff’s design registration and the defendant’s fan.

29. The defendant has contended that the plaintiff's design registration is invalid and not registrable under section 4(a) of the Designs Act, as it is not new or original. It is alleged that the plaintiff has failed to explain the novelty or originality of its registered design, especially by comparing it to earlier models of ceiling fans in the market. The defendant has contended that the subject matter of the design registration is only a trade variant of existing products in the market, and that the design for which the plaintiff has obtained registration lacks any novelty. The defendant has also challenged the plaintiff’s design registration on the ground that it is not registrable under Section 4(c) of the Designs Act, as the plaintiff’s design is only a trade variant.

30. The defendant has also challenged the plaintiff’s claim of goodwill and reputation for the suit fan. The defendant has contended that, even according to the plaintiff, only 157 fans under the alleged design registration were sold since 2020. The plaintiff has filed only 16 documents, of which the invoices are for RENESA model fans, and some of the invoices pertain to the sale of fans “Atomberg Renesa Alpha” from 2020. Thus, according to the defendant, the undated representative photographs do not prove any goodwill and reputation. Even the CA certificate relied upon by the plaintiff covers all models and does not pertain only to the suit design. The defendant has also challenged the plaintiff’s claim of passing off. It is contended that the plaintiff has failed to prove the test of passing off. According to the defendant, there is a statutory bar to claim damages under Section 15(b) and 22(2) of the Designs Act.

31. I have carefully examined the comparative tables incorporated in the plaint as well as in the affidavit-in-reply relied upon by the parties to point out the similarity and differences between the plaintiff's registered design and the comparison made by the plaintiff of its subsequent models with the defendant's fan. From the table incorporated in the affidavit-in-reply showing the comparison of the two tables incorporated in the plaint, prima facie, it is seen that the product versus product comparison made by the plaintiff in the plaint is not between the plaintiff’s ceiling fan, for which it has actually obtained the design registration. To show similarity, the plaintiff has compared the defendant’s fan with the other models launched by the plaintiff. Thus, it appears that the plaintiff has claimed a design registration for one model and has compared the impugned fan with different models to allege that the impugned fan is similar to the suit fan.

32. Prima facie, no unique or novel feature is seen in the suit fan that can be said to be obviously different from that of a usual ceiling fan. For example, any ceiling fan will have basic features, such as blades, a shank, a canopy, or even a motor housing lid. Therefore, the basic structure of any ceiling fan is bound to be the same. The overall basic functional appearance of a ceiling fan cannot be compared to identify similarities for the purpose of alleging infringement of a registered design in the absence of any novelty. Some unique feature, pattern, configuration, or even an ornamental appearance may constitute a valid registered design of a ceiling fan that would stand out from the usual ceiling fan. However, the basic features of a fan that would make it a ceiling fan cannot be considered novel.

33. Thus, the basic test in deciding such matters, that the similarity is to be judged solely by the eye, is not satisfied. On comparison, the differences between the blade design, motor housing lid, shank profile, rivet quantity, and canopy are clearly visible. In view of the well-settled legal principles, the test applied to determine whether there is any obvious imitation or piracy of a registered design requires the similarity or difference to be judged through the eye alone. When an article with respect to which the registered design is applied is the object of purchase through the eye of the purchaser, the similarity is to be judged based on the obvious visuals. The court is therefore required to see whether the essential parts or the basis of the claim for novelty form part of the impugned article. In the present case, when both the fan designs are seen as a whole, the impugned fan is substantially different from the suit fan. The unique features claimed by the plaintiff in the suit fan, i.e. the bottom view, left side view and right side view as described in the first comparative table in the plaint, are not similar in the impugned fan. Learned senior counsel for the defendant is right in pointing out that the second table in the plaint to compare the alleged similarities with the impugned fan is based on the pictures of the models and not the impugned fan, i.e. the registered design. Admittedly, the plaintiff has introduced various models. Therefore, it appears that the plaintiff has prepared the second table to highlight the alleged similarities by comparing the impugned fan with the models, rather than with the registered design. The difference in the pictures of the plaintiff’s registered fan and the pictures of its models is clearly seen when the two tables incorporated in the plaint are compared.

34. In the present case, as seen from the plaintiff’s pleadings and the comparative first table in the plaint, the plaintiff claims that the suit fan has an obviously different bottom view, and the side view, which is similar to that of the impugned fan. Such an obvious and usual appearance would be of any ceiling fan. However, if the plaintiff’s claim of having a unique design of the blade, shank, canopy and motor housing lid is compared with the impugned fan, no obvious similarity is seen when judged through the purchaser’s eye that would make a purchaser believe that the impugned fan is the suit fan. The different shape of the blade with a curve and the “Z” shape shank design of the suit fan is not seen in the impugned fan. Even otherwise, there are differences between the image of the suit fan and the impugned fan. When the suit fan and the impugned fan were produced before this court at the time of the hearing, no similarity was visible that would constitute piracy to seek any relief on the allegation of infringement of the plaintiff’s registered design.

35. Therefore, apart from the valid grounds raised in defence to challenge the plaintiff's registered design, no similarity is seen in the impugned fan when compared with the plaintiff’s registered design, i.e the suit fan, that would prima facie show any infringement of the registered design as alleged by the plaintiff. The plaintiff has also not made out a prima facie case to establish goodwill and distinctiveness in a particular getup, which would show something more than mere similarity, providing a cause of action on the aspect of passing off. Learned senior counsel for the defendant is right in pointing out that the CA’s certificate relied upon by the plaintiff for claiming goodwill is based on the six model/ brands as pleaded by the plaintiff in the plaint and is not based only on the suit fan. Therefore, by applying the well-established legal principles, as discussed in the above paragraphs, the plaintiff has failed to make out a prima facie case as required under the law to successfully claim interim relief against the defendant.

36. The plaintiff has failed to make out a prima facie case, a balance of convenience and irreparable loss that may be suffered in the absence of interim relief.

37. The interim application is therefore dismissed.

38. The Court Receiver appointed vide Order dated 24th July 2025 stands discharged. The defendant’s goods seized by the Court Receiver shall be released forthwith.