By Jigyasa Pareek

In M/s. Orient Electric Limited vs Crompton Greaves Consumer Electricals Limited [CS(COMM) 331/2026], the Delhi High Court granted an interim injunction restraining Crompton from manufacturing and selling its “GRACE” series ceiling fans on the ground that they prima facie infringed Orient Electric’s registered design for its “AEON” fan series. The decision is significant for its detailed reiteration of the principles governing design infringement and invalidity under the Designs Act, 2000, particularly in the context of “mosaicing” prior art references to attack novelty.

In the instant case, Orient asserted that the novelty of its “AEON” fan series, bearing registration no. 393299-001 dated April 9, 2024 in Class 23-04, resided in the overall shape and configuration of the fan, including the harmonious arrangement of the blade configuration, motor housing, hub assembly, and decorative lower cap, which together created a distinctive visual identity. Orient alleged that Crompton’s “GRACE” series fans copied these essential visual features and therefore infringed the registered design.

While Crompton challenged the validity of the registration on grounds of lack of novelty and originality under Section 4 read with Section 19 of the Designs Act, it did not dispute that the rival products were visually similar. Its principal defence was that the plaintiff’s design itself was a trivial alteration to pre-existing elements found across multiple prior art references. Crompton contended that ceiling fans, by their very nature, leave limited room for creativity and that the plaintiff had merely combined previously known design features from different prior publications.

Orient, on the other hand, argued that the defendant’s approach was contrary to the settled principles of design law. It contended that the prior publication must be compared with the registered design as a whole and that novelty may reside in the unique visual arrangement and overall aesthetic presentation of known elements. Orient further argued that the defendant had attempted to selectively extract individual features from multiple prior art documents and mosaic them to challenge novelty, which was impermissible under Indian design jurisprudence.

The Court extensively relied upon the Delhi High Court’s earlier decision in TTK Prestige Ltd. vs KCM Appliances Pvt. Ltd. and described it as a locus classicus on the interpretation and application of the Designs Act. The Court reproduced in detail the principles summarised in paragraph 38.13 of TTK Prestige, particularly emphasising the distinction between assessing validity of a design vis-à-vis prior art and assessing infringement of a registered design.

The Court stressed that:

• the burden to establish lack of novelty or originality lies on the party challenging the registration.
• Prior publication must be evaluated with reference to the features that impart novelty and distinctiveness to the design per se. Mere prior disclosure of stray features would not amount to prior publication at least prima facie.
• “Mosaicing of prior art designs is impermissible” and that novelty cannot be attacked by combining individual elements from different prior designs.
• A design must be assessed as a whole, since novelty may reside in the unique visual arrangement and overall combination of otherwise known elements. Accordingly, a challenge based on prior publication must ordinarily be founded upon a single prior document, or interconnected documents containing cross-references, disclosing the design.
• In certain product categories, the nature of the product may limit the scope for creative variation and the doctrine of de minimis may not apply in every case.
• For the purposes of piracy under the Designs Act, the impugned design need not be an exact replica of the registered design. If the features that impart novelty and originality to the registered design are substantially reproduced in the defendant’s article, infringement would stand established. The existence of variations in peripheral or less significant details, which do not contribute to the novelty or originality of the design, would not be sufficient to avoid a finding of piracy.

Applying these principles, the Court found that Crompton had relied upon seven different prior art references, none of which individually disclosed all the features embodied in Orient’s registered design. Even the closest cited prior art did not disclose the bottom canopy which was a significant feature of the registered design. The Court observed that none of the cited references, when viewed as a composite whole, created the same visual impression as Orient’s “AEON” fan series.

The Court also relied upon the Bombay High Court’s decision in Pidilite Industries Ltd. vs Astral Ltd., which had similarly held that a design must be viewed as a whole and that it is impermissible to dissect an article into separate integers and compare individual features in isolation. The Court reiterated that Section 4(c) of the Designs Act prohibits combinations of known designs or articles, but does not prohibit the use of individual known elements in a novel visual arrangement that yields a distinct overall article.

Having rejected the challenge to validity at the prima facie stage, the Court proceeded to assess infringement. In doing so, the Court reiterated the settled principle that infringement in design law is assessed from the perspective of an “instructed eye” aware of prior art and capable of discerning whether the asserted features merely constitute common trade knowledge or embody sufficient novelty to merit protection.

The Court undertook a visual comparison of the rival products and observed that, apart from minor differences in non-essential features like the shape of the canopies, the overall visual impression created by the two fan designs was substantially similar. The Court specifically noted similarities in the blade profile, the variable wide blade design, the fluidic curves at the blade tips, the matching curvature at the motor end, and the shape and lines of the bottom cover. According to the Court, these similarities constituted deliberate replication of the plaintiff’s distinctive visual features.

Another notable aspect of the decision concerns the Court’s treatment of the defendant’s statements regarding the launch date of the allegedly infringing products. Crompton had initially represented before the Court that its products had already been commercially launched before the institution of the suit. However, subsequent affidavits and invoices revealed that actual retail sales commenced only after the first hearing date for an ad-interim injunction. The Court observed that the plaintiff had approached the Court before the actual commercial launch and held that the plaintiff ought not to be prejudiced by the defendant’s inconsistent statements regarding the launch timeline. The Court further noted that no material had been placed on record by the defendant to conclusively establish the actual date of commercial launch, apart from certain photographs of the products at retail outlets, which by themselves did not indicate the launch date in any manner whatsoever.

Consequently, despite the defendant’s products already being available in the market, the Court granted an interim injunction restraining further manufacture and sale of the impugned “GRACE” series fans and directed the defendant to maintain records of all sales.