Invalid Design Registration Does Not Bar Passing Off Claim: Delhi High Court Allows Composite Suit to Proceed Despite Dismissal of Infringement Action

1. Case Snapshot

Case Name: Novamax Industries LLP vs Prem Appliances & Anr

Citation: CS(COMM) 177/2021

High Court: High Court of Delhi

Bench: Hon'ble Mr. Justice Tushar Rao Gedela

Date of Judgment: 19th June, 2026

Area of Law: Intellectual Property Law, Designs Act, Passing Off, Summary Judgment, Civil Procedure

2. Judgment in Brief

The Delhi High Court partially allowed the defendant's application under Order XIII-A of the CPC seeking summary judgment dismissing the plaintiff's suit for infringement of registered design and passing off. The Court held that the plaintiff's claim for infringement of design had no real prospect of succeeding, as the design had been published and sold prior to the date of application for registration, rendering it invalid under Section 19(1)(b) of the Designs Act, 2000. However, the Court rejected the defendant's application insofar as it sought dismissal of the passing off claim. The Court held that a composite suit for infringement and passing off is maintainable, and even if the infringement claim fails, the plaintiff can still pursue the passing off claim based on the same facts and evidence. The Court found that the plaintiff had made sufficient averments in the plaint to constitute a cause of action for passing off, and the defendant had not adequately traversed those allegations in its written statement.

3. Relevant Facts

Plaintiff's Business and Design Registration

• The plaintiff, Novamax Industries LLP, was incorporated on 11.07.2018 and commenced business of manufacturing and selling electrical goods such as fans and coolers.

• The plaintiff engaged a company, Hongyi JIG Rapid Technologies, to design unique products for coolers.

• The plaintiff applied for and became the registered proprietor of design no. 322384-002 in Class 23-04 in respect of "Coolers" on 19.10.2019.

• The plaintiff also claimed copyright ownership in the artistic works embodied in the design.

Alleged Infringement

• In March 2021, the plaintiff learnt that the defendants were manufacturing and selling coolers bearing the identical design (impugned goods) under the mark "AROKING" along with the sub-mark "NOVA".

• The plaintiff instituted the present suit claiming infringement and passing off of the registered design, along with damages, delivery up, and rendition of accounts.

Interim Orders

• On 16.04.2021, the Court passed an ex-parte ad-interim injunction order restraining the defendants from using the suit design.

• The defendant no.1 filed an application under Order XXXIX Rule 4, CPC seeking vacation of the interim order.

• On 16.01.2023, the Court vacated the interim injunction, finding that the plaintiff had published the design prior to the date of application.

Defendant's Application for Summary Judgment

• The defendant filed the present application under Order XIII-A of the CPC seeking summary judgment dismissing the suit.

• The defendant argued that the registered design was invalid due to prior publication and sale of goods bearing the design before the date of application.

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