Background
Novamax Industries LLP, a cooler manufacturer holding Design No. 322384-002, alleged that Prem Appliances was selling coolers under the mark "AROKING NOVA" substantially identical to its registered design, and simultaneously passing off its goods. Prem Appliances moved for summary judgment, contending Novamax had no real prospect of succeeding on either claim.
The Defendant's Two-Pronged Attack
Prior publication. The defendant produced sales invoices showing commercial sales under the mark ZEPHYR from early 2019, and — more strikingly — pointed to Novamax's own website displaying the cooler design as early as 24 March 2019, months before the design application. Both, it argued, constituted prior publication under Section 19(1)(b) of the Designs Act, 2000, rendering the registration liable to cancellation and incapable of supporting infringement.
Defective passing off pleadings. Relying on the Carlsberg Full Bench, the defendant argued the plaint lacked averments on the specific features of shape, configuration, packaging or colour said to be distinctive of Novamax's get-up.
The Court's Findings
Design infringement — dismissed. Justice Tushar Rao Gedela found that coolers bearing the suit design were put up for sale before 24 March 2019, which itself amounted to prior publication under Section 19(1)(b). Critically, the publication that trips the provision need not come from a third party — the proprietor's own disclosure is equally fatal. With the design vulnerable to cancellation, the infringement claim had no real prospect of success.
Passing off — survives for trial. Examining the plaint, the Court found sufficient averments of misrepresentation and likelihood of confusion. Passing off is an inherently fact-intensive inquiry into goodwill, misrepresentation and damage — matters that cannot fairly be adjudicated at the threshold without oral evidence and cross-examination.
Key Takeaways for Design Proprietors
- File first, sell later. The Designs Act contains no grace period. Any disclosure in any medium — website, catalogue, invoice, social media post, trade fair — before the application date can ground cancellation.
- Composite suits remain strategically viable. Following Carlsberg (2018) and Crocs v. Bata (2025), the passing off claim proceeds independently even when the design limb collapses entirely.
- Plead passing off with precision. Identify the distinctive features of get-up, the goodwill attaching to them, the specific misrepresentation, and the likelihood of confusion — vague assertions will not survive a rigorous Order XIII-A application.
- Your own archives can sink you. Novamax's own website and invoices supplied the defendant's best evidence. Defendants should systematically search a plaintiff's disclosure history; plaintiffs should audit theirs before suing.
- Institutionalise "file before you disclose". Treat website uploads, press releases and trade fair participation as publication events, and complete design filings before any commercial sampling or marketing.
Broader Significance
The decision extends a now well-established trajectory — Mohan Lal (2013), Carlsberg (2018), Crocs v. Bata (2025), and now Novamax (2026) — under which common law passing off has emerged as the resilient, parallel track of protection for product get-up in India: independent of the registered right, and able to carry a claim forward even when the statutory foundation crumbles.