This case relates to a dispute between Havells India Limited and Panasonic Life Solutions India Pvt. Ltd. over allegations of design infringement and passing off. Havells India Limited, the plaintiff, alleged that Panasonic infringed its registered designs for ceiling fans under its ENTICER and ENTICER ART series and simultaneously passed off its goods as those of Havells. The case explores the interplay between statutory design rights and common law remedies of passing off.

Detailed Factual Background:
Havells India Limited is the registered proprietor of several ceiling fan designs, including its ENTICER, ENTICER ART, and ENTICER ART-NS STONE series. These designs feature unique attributes such as minimalistic rectangular ornamentation with metallic borders on the fan blades, chamfered edges, and concave curves towards the motor, among other distinctive features. The plaintiff has invested significantly in the marketing and promotion of these designs, with cumulative sales of approximately Rs. 527.48 Crores and a promotion budget of Rs. 12.91 Crores for 2020-21.

In March 2022, Havells discovered that Panasonic was about to launch its VENICE PRIME series of ceiling fans, which allegedly copied the essential and distinctive features of the ENTICER series. The Plaintiff argued that Panasonic's VENICE PRIME fans were visually similar and likely to confuse customers, leading to an action for both infringement of design rights and passing off.

Detailed Procedural Background
The plaintiff filed CS(COMM) 261/2022 before the Delhi High Court, seeking an injunction against Panasonic from manufacturing, marketing, or selling ceiling fans that were identical or deceptively similar to Havells' registered designs. The case also involved an application under Order XXXIX Rules 1 and 2 CPC for interim relief. Panasonic challenged the maintainability of the composite suit on the grounds that infringement of registered design and passing off claims could not be pursued together. Panasonic further alleged that Havells' designs lacked novelty and were liable to be cancelled.

Issues Involved in the Case:Whether a composite suit for infringement of registered design and passing off is maintainable?Whether Havells' claims for statutory design infringement and common law passing off are mutually destructive?

Detailed Submissions of Parties:
The plaintiff contended that the VENICE PRIME fans by Panasonic copied the essential features of the ENTICER and ENTICER ART series, amounting to infringement under the Designs Act, 2000, and passing off. It asserted that under settled law, particularly the decision in Mohan Lal v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980, a registered design owner could simultaneously claim relief for passing off.

Panasonic argued that the plaintiff could not pursue both claims in one suit, relying on Carlsberg Breweries A/S v. Som Distilleries, 2018 SCC OnLine Del 12912, and Dart Industries Inc. v. Vijay Kumar Bansal, 2019 (80) PTC 73 (Del). Panasonic also argued that Havells' designs lacked novelty, citing prior art and third-party publications to suggest that the registered designs were common in the trade.

Detailed Discussion on Judgments Cited by Parties; Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980: This Full Bench decision held that an action for passing off could be pursued along with a design infringement claim, provided the passing off claim extended beyond the registered design into the overall trade dress. Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 2018 SCC OnLine Del 12912: The Five-Judge Bench ruled that a composite suit for design infringement and passing off is maintainable under Order II Rule 3 CPC. However, it also reaffirmed that a design per se used as a trademark could render the design registration vulnerable.  Dart Industries Inc. v. Vijay Kumar Bansal, 2019 (80) PTC 73 (Del): This judgment interpreted Carlsberg to suggest that a passing off claim could not coexist with a design infringement action. However, the Single Judge in the present case noted that this view was not binding as it conflicted with Carlsberg's Full Bench decision. RB Health (US) LLC & Ors. v. Dabur India Ltd., 2020 (84) PTC 492 (Del): This case reiterated the "classical trinity" test for passing off – goodwill, misrepresentation, and damage. Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65: The Supreme Court recognized that even in the absence of malice, a likelihood of confusion suffices for a passing off action.Whirlpool of India Ltd. v. Videocon Industries Ltd., 2014 SCC OnLine Bom 565: This Bombay High Court judgment held that distinct get-up and trade dress are protectable under common law.

Detailed Reasoning and Analysis of Judge:The Court held that a registered design holder could bring simultaneous claims for design infringement and passing off, provided the passing off action was based on the overall trade dress and not restricted to the registered design per se. The Court observed that both statutory infringement and passing off protect different commercial interests – the former safeguards design novelty, while the latter prevents customer confusion due to misrepresentation. The Court found that Havells' claims were not mutually destructive but were alternative claims permissible under civil procedure rules. On the issue of novelty, the Court rejected Panasonic's argument that marble patterns are common and cited estoppel principles because Panasonic itself had applied for a similar design registration. The Court also rejected the claim that Havells suppressed material facts regarding pending cancellation proceedings, noting that no official cancellation notice had been received from the Controller of Designs. Applying the "classical trinity" test, the Court held that Havells had a strong prima facie case based on its established goodwill and reputation, the likelihood of deception due to Panasonic's VENICE PRIME series, and the potential damage to Havells' business.

Final Decision:
The Court granted an interim injunction restraining Panasonic and its associates from manufacturing, marketing, or selling ceiling fans under the VENICE PRIME series or any other fans that were deceptively similar to Havells' ENTICER ART series during the pendency of the suit.

Law Settled in this Case:
A composite suit for infringement of a registered design and passing off is maintainable, and such claims are not inherently mutually destructive. The decision reaffirmed the legal position laid down by the Full Bench in Carlsberg and Mohan Lal that a passing off claim can coexist with a design infringement claim, provided the passing off is based on a broader trade dress.

Case Title: Havells India Limited Vs Panasonic Life Solutions India Pvt Ltd
Date of Order: 31 May 2022
Case No.: CS(COMM) 261/2022
Neutral Citation: 2022 SCC OnLine Del 1863
Name of Court: High Court of Delhi
Name of Judge: Justice Jyoti Singh

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539