The Role of Prior Publication in Design Protection
Introduction: The case of Atomberg Technologies Private Limited v. Luker Electric Technologies Private Limited is a pivotal judicial examination of design infringement and passing off under the Indian Designs Act, 2000. Heard before the High Court of Bombay, this commercial appeal (COMMERCIAL APPEAL (L) NO. 16459 OF 2023) addresses the refusal of an interim injunction sought by Atomberg to restrain Luker Electric from manufacturing and selling ceiling fans allegedly infringing Atomberg’s registered design. The dispute centers on the aesthetic and functional elements of ceiling fan designs, raising critical questions about novelty, prior publication, and the scope of appellate interference in discretionary orders.
Factual Background: Atomberg Technologies Private Limited, a company incorporated under the Companies Act, 1956, with its registered office in Navi Mumbai, Maharashtra, is a prominent player in the ceiling fan market. Since 2015, Atomberg has manufactured and sold ceiling fans, initially online from 2016 and later through retail channels across India from 2018. The company claims significant market success, with a sales turnover of Rs. 1,03,64,53,181.45 in the financial year 2021–2022, and has earned accolades for its innovative designs. Atomberg’s suit design, the Atomberg Renesa Ceiling Fan (formerly known as the Atomberg Gorilla Renesa Ceiling Fan), was created by its directors in September 2018 and registered under the Designs Act, 2000, on 8 September 2018, bearing registration number 306994 in class 23-04. The design’s unique features, as detailed in the plaint, include its aesthetic shape and configuration, which contribute to its distinctive appeal. A deed of assignment executed on 15 February 2021 transferred proprietary rights to Atomberg, reinforcing its legal claim over the design.
Luker Electric Technologies Private Limited, the defendant, is also a well-established company in the ceiling fan market, with a reported sales turnover of Rs. 299.42 crores in 2021–2022. Luker Electric secured design registrations for two ceiling fans, Size Zero Fan 1 and Size Zero Fan 2, on 21 March 2022. Atomberg alleges that these designs, particularly Size Zero Fan 1, which has been introduced to the market, infringe its registered design by slavishly copying its essential features. Atomberg conducted inquiries revealing Luker’s registrations and provided a comparison table highlighting similarities between the rival products. Luker Electric counters that its designs are the result of extensive research and development, denying infringement. It further contends that Atomberg’s design lacks novelty due to prior publication through social media posts, delivery challans, and invoices dated before 8 September 2018, specifically citing exhibits Q, R, and S. Luker also argues that Atomberg’s design is a mere trade variant, not significantly distinguishable from known designs, and that Atomberg suppressed material facts regarding prior publication.
Procedural Background: Atomberg initiated the suit before the High Court of Bombay, seeking a permanent injunction to restrain Luker Electric from infringing its registered design (no. 306994) and committing passing off by marketing fans deceptively similar to the Atomberg Renesa Ceiling Fan. Alongside the suit, Atomberg filed an interim application (INTERIM APPLICATION (L) NO. 16511 OF 2023) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, requesting a temporary injunction to prevent Luker Electric from manufacturing, selling, or distributing the allegedly infringing Size Zero Fan 1 and Size Zero Fan 2. Atomberg also sought the appointment of a court receiver to seize infringing products and related manufacturing materials, as well as an order for Luker to disclose details of sales and manufacturing processes. Luker Electric filed a detailed reply, supported by documents, opposing the interim application, arguing prior publication and lack of novelty in Atomberg’s design. The learned Single Judge dismissed the interim application, prompting Atomberg to file the present commercial appeal. The appeal was heard by a Division Bench.
Core Dispute: The central issue in this case is whether Luker Electric’s Size Zero Fan 1 and Size Zero Fan 2 infringe Atomberg’s registered design for the Atomberg Renesa Ceiling Fan and whether Luker’s actions constitute passing off. Atomberg asserts that Luker’s fans slavishly imitate the aesthetic and functional features of its registered design, as outlined in paragraph 10 of the plaint, which emphasize the fan’s unique shape and configuration. Atomberg argues that its design, registered on 8 September 2018, is novel and original, and that Luker’s registration on 21 March 2022 was obtained fraudulently. Luker Electric counters that Atomberg’s design was published prior to its registration through social media posts and commercial documents, rendering it non-novel under Section 4(b) of the Designs Act. Luker further contends that Atomberg’s design is a trade variant, lacking significant distinction from known designs, and that the features claimed by Atomberg are functional rather than aesthetic, thus ineligible for design protection under Section 4(c). On passing off, Luker argues that mere similarity in design is insufficient without evidence of false representation, and it highlights differences in packaging and product features to negate Atomberg’s claims. The appeal focuses on whether the Single Judge erred in dismissing the interim application by misinterpreting evidence of prior publication and novelty.
Discussion on Judgments :Several judgments were cited by the parties to support their arguments, each providing context to the legal principles at play. Atomberg relied on Frito-Lay North America Inc. v. Balaji Wafers Pvt. Ltd. (2023 SCC OnLine Bom 2375), arguing that the Single Judge failed to appreciate that even minor changes in design can be substantial in the context of aesthetic appeal, particularly for products like ceiling fans where visual distinction is significant. This judgment emphasizes that the novelty of a design must be assessed based on its overall aesthetic impact, supporting Atomberg’s claim that its design is unique. Atomberg also cited Videocon Industries Ltd. v. Whirlpool of India Ltd. (2012 SCC OnLine Bom 1171), which holds that a design intended to enhance a product’s aesthetic appeal to consumers constitutes an innovation, reinforcing Atomberg’s argument that the Renesa Ceiling Fan’s design is novel due to its pleasing shape and configuration.
Luker Electric referenced several cases to challenge the validity of Atomberg’s design registration. It cited Faber Castell Aktiengesellschaft v. M/s Pik Pen Pvt. Ltd. ((2003) 2 PTC 538), arguing that Atomberg’s design lacks novelty due to prior publication, as evidenced by social media posts and invoices predating the registration. This case underscores that a design disclosed to the public before registration cannot be considered original under the Designs Act. Luker also relied on Selvel Industries v. Om Plast (India) (1992 SCC OnLine Del 1923), which supports the principle that a design must be significantly distinguishable from known designs to be registrable, bolstering Luker’s contention that Atomberg’s design is a trade variant. Additionally, Luker cited Philips Lighting Holding B.V. v. Jai Prakash Agarwal (2018 SCC OnLine Del 1923), emphasizing that functional features cannot form the basis of a registrable design, aligning with its argument that Atomberg’s claimed features are functional rather than aesthetic. Luker further referenced an unreported order dated 6 March 2012 in Appeal No. 62 of 2012 from the Bombay High Court Division Bench, reinforcing the importance of prior publication in invalidating design registration.
Both parties cited Wander Ltd. v. Antox India Pvt. Ltd. (1990 Supp SCC 277), a seminal Supreme Court decision on the scope of appellate interference in discretionary orders. Atomberg argued that the Single Judge’s dismissal was perverse, ignoring evidence that the fans depicted in exhibits Q, R, and S were distinct from the suit design. Luker relied on the same case to argue that the Single Judge’s discretion was exercised judicially, and appellate interference is unwarranted unless the decision is arbitrary or capricious. The Supreme Court’s observations in Wander Ltd., particularly in paragraph 14, clarify that an appellate court should not substitute its own discretion unless the trial court’s decision is demonstrably perverse or ignores settled legal principles. Atomberg also cited Ramakant Ambala Choksi v. Harish Ambala Choksi (case details not fully provided but referenced in the context of appellate jurisdiction), which reiterates the principles in Wander Ltd., emphasizing that appellate courts must assess whether the trial court’s discretion was exercised reasonably.
Reasoning and Analysis of the Judge: The Division Bench, meticulously analyzed the Single Judge’s dismissal of Atomberg’s interim application. The core of their reasoning centered on the principles governing appellate interference in discretionary orders, as laid down in Wander Ltd. v. Antox India Pvt. Ltd. The court emphasized that an appellate court should not interfere with a trial court’s discretion unless it is shown to be arbitrary, capricious, perverse, or contrary to settled legal principles. The Single Judge’s finding that Atomberg’s design was prior published was based on exhibits Q, R, and S (social media posts from August 2018) and commercial documents like delivery challans and invoices dated before 8 September 2018. These documents, coupled with Atomberg’s admission in paragraph 8 of the plaint that the Atomberg Renesa Ceiling Fan was formerly known as the Atomberg Gorilla Renesa Ceiling Fan, led the Single Judge to infer that the design was in the public domain before registration, thus undermining its novelty under Sections 4(b) and 19(b) of the Designs Act.
The Division Bench found no error in this reasoning, noting that Atomberg’s failure to disclose prior publications in its plaint was a critical factor. The court rejected Atomberg’s argument that the fans in exhibits Q, R, and S were distinct (e.g., Renesa+ or other models), finding that Atomberg’s rejoinder affidavit explanations about house-marks (Atomberg and Gorilla) were insufficient at the interim stage. The Single Judge’s observation that the designs in exhibits Q, R, and S were prima facie similar to the registered design was upheld, as was the conclusion that the suit design might be a trade variant, lacking significant distinction from known designs under Section 4(c). The court also addressed Atomberg’s reliance on Frito-Lay and Videocon, noting that while minor design changes can be substantial in some contexts, the evidence here suggested trivial differences, insufficient to establish novelty.
On the issue of passing off, the court agreed with the Single Judge that mere design similarity is insufficient without evidence of false representation. Luker’s table of comparison highlighted differences in the canopy, rod, and packaging, negating the likelihood of consumer confusion. The Division Bench found that the Single Judge’s discretion was exercised judicially, supported by a reasoned analysis of the evidence and applicable law, including Sections 2(d), 4, 19, and 22 of the Designs Act. The court concluded that the decision was neither arbitrary nor perverse, warranting no interference.
Final Decision:The Division Bench dismissed Atomberg’s commercial appeal (COMMERCIAL APPEAL (L) NO. 16459 OF 2023) and the associated interim application (INTERIM APPLICATION (L) NO. 16511 OF 2023) on 7 June 2025. No order was made as to costs. The court upheld the Single Judge’s refusal to grant an interim injunction, finding that Atomberg failed to establish a prima facie case of design infringement or passing off, given the evidence of prior publication and lack of novelty in its registered design.
Law Settled in This Case: This case reinforces several key principles of design law and appellate jurisdiction in India. First, it underscores the importance of novelty and originality under Sections 2(d) and 4 of the Designs Act, 2000, affirming that a design published in the public domain before registration is ineligible for protection. Second, it clarifies that a plaintiff’s failure to disclose prior publications in its pleadings can weaken its case for interim relief, as transparency is crucial in design infringement claims. Third, the case reiterates that functional features do not qualify for design protection, and a design must be significantly distinguishable from known designs to be registrable. Fourth, on passing off, the judgment emphasizes that mere design similarity is insufficient; plaintiffs must demonstrate false representation to succeed. Finally, the case reaffirms the principles in Wander Ltd. v. Antox India Pvt. Ltd., limiting appellate interference in discretionary orders to cases where the trial court’s decision is arbitrary, capricious, or perverse. These principles guide courts in balancing the protection of intellectual property rights with fair competition.
Case Title: Atomberg Technologies Private Limited Vs. Luker Electric Technologies Private Limited Date of Order: 7 June 2025
Case Number: COMMERCIAL APPEAL (L) NO. 16459 OF 2023
Neutral Citation: 2025-BHC-OS-1183
Name of Court: High Court of Bombay
Name of Judge: Hon’ble Chief Justice Alok Aradhe and Hon’ble Mr. Justice M.S. Karnik
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
