The Delhi High Court has restrained Panasonic Life Solutions India Pvt. Ltd. (Panasonic) from infringing the registered designs of Havells India Limited (Havells).
In March 2022, it came to the knowledge of Havells that Panasonic was to launch its new series of ceiling fans which was going to be branded as “VENICE PRIME”. It was observed by Havells that the fans sold under these series were deceptively similar and/or identical copies in entirety of that of Havells’ ENTICER and/or ENTICER ART ceiling fans.
As a result, Havells approached the Delhi High Court seeking to restrain Panasonic from infringing its registered designs bearing nos. 280666 (2016 Design -
) and 328605 (2020 Design -
) and manufacturing, selling and marketing its VENICE PRIME series ceiling fans.
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Panasonic countered stating that, Havells’ 2016 Design was ought to be cancelled because Havells had claimed trademark rights by way of addressing its designs as ‘trademark’, ‘trade-dress’ and ‘source-identifier’ of its trade and business, in its plaint which was statutorily not allowed under the section 2(d) of Design Act, 2000 which defines “design” and states that anything that includes a trade mark cannot be constituted as a design. Panasonic further argued that, Havells’ 2016 Design was not novel but was merely a design derived from its previously launched ceiling fans and that Havells Design 2020 was dissimilar to that of its VENICE PRIME series.
Having stated this, a plausible question of invoking the common law remedy of ‘passing-off’ also arose as Havells had mentioned its already registered designs as ‘trademark’. Against this, Havells, to prove the novelty of the Havells’ 2016 Design, placed a comparison table of the Havells’ 2016 Deisgn with some of the prior publications on record.
With regards to the two claims of passing off and infringement made by Havells, the Court observed that, the basic ingredient for passing off was misrepresentation, which, in this case, was not satisfied as no customer with an average intelligence and imperfect recollection would be deceived or confused into buying the fans of Panasonic under an impression that they were the goods of Havells. Hence, Havells was not able to establish the prima facie case of passing off in Design 2016.
Further with respect to the claim of infringement under section 22 of the Designs Act, the Court scrutinized the matter comparing the essential features of the designs. A visual comparison of the two fans showed that: (a). overall appearance and shape were similar; (b). the inner border of the motor body was plain which was outlining the bulge and seamlessly joined with the trim while the outer border part was continuously running from the blade trims to the body ring giving an effect that the trims/ornamentation body ring and bottom cover were seamless and one single unit, in both the fans; and (c). both fans had filleted corners on the blade tips which gave a symmetric appearance along with a depression that ran through the blades. Therefore, the Court held that Havells had made out a prima facie case of infringement of Design 2016 and that Panasonic’s VENICE PRIME series design was created with a clear intent to copy the Havells’ 2020 Design. Accordingly, Panasonic, was restrained from manufacturing, marketing, selling (including upon the online platforms) the fans under its VENICE PRIME series and/or those which are identical or deceptively similar to the designs of the Havells or which are colorable imitation or substantial reproduction of Havells get-up, layout, trade dress, colour scheme, pattern, shape, configuration etc. in the ENTICER ART-NS Stone series during the pendency of the suit.
The matter is now, enlisted before the learned Joint Registrar on 02.08.2022.
