The Brief Fact Leading to Filing of Appeal:
- Appellant is the Plaintiff and Respondent is the Defendant in the
subject matter Suit bearing CS(COMM.) 329/2021.
- The subject matter Suit bearing CS(COMM.) 329/2021 was filed by the
Appellant under Section 22 of the Designs Act before the Hon'ble High Court
of Delhi seeking relief of permanent injunction restraining infringement of
a registered design Design No. 282812 under Class 26-03 in relation to 'LED
- The Appellant also filed application under Order 39 Rule 1 and 2 CPC
being I.A No. 8676/2021, seeking ad interim injunction.
- In this case, ex-parte ad interim injunction was also granted in favour
of the Appellant/Plaintiff vide ex-parte injunction order dated 12.02.2021.
- Subsequently, the Respondent/Defendant filed application under Order 39
Rule 4 CPC being I.A No. 10813/2021, seeking vacation of the ex-parte
injunction order dated 12.02.2021.
- After hearing the arguments of the parties, the Hon'ble High Court of
Delhi was pleased to reserved the Judgment.
- Vide Judgment dated 22.08.2022 passed by the Hon'ble High Court of
Delhi, Appellant's application under Order 39 Rule 1 and 2 CPC was dismissed
and Respondent's application under Order 39 Rule 4 CPC was allowed.
- Against this Judgement dated 22.08.2022, the subject matter Appeal was
The Brief Defenses of the Respondent:
- The Respondent alleged the subject matter registered Design of the
Appellant to be prior published , primarily on the ground that on a trade
mark application filed by the appellant TM-A seeking registration of the
trademark in the shape of the subject matter registered design goods,
wherein the appellant claimed user prior in point of time to that of the
- The Other contention of the Respondent was that once a design is used as
a trademark, it cannot be registered as a design. The shape of a product, in
case has been used as trademark, it provides for a ground of cancellation of
a registered design.
- The other grounds as alleged by the Respondent was that the subject
matter design was not original, prior published and merely a trade variant.
- The Respondent also alleged the subject matter design of the Appellant
to be used by various other third parties.
The Brief Finding of the Hon'ble Court:
- The Hon'ble Division Bench observed that onus was upon the Appellant to
disclose as to when the subject matter design product was made available to
- As this has not been done by the Appellant in this case, the prima facie
finding of the Hon'ble Single Judge, could not be faulted.
- The Division Bench further observed that the requirement of Section 19
of the Designs Act would be satisfied where the respondent shows from the
admission of appellant itself that the product was made available on a prior
- Having observed so, the subject matter Appeal was dismissed.
The Important Legal Preposition laid down by the Hon'ble Court in the present
- The requirement of Section 19 of the Designs Act 2000 (India) would be
satisfied where the respondent shows from the admission of appellant itself
that the product was made available on a prior date.
- Since in the subject matter case, the Appellant itself have filed the
Trademark application in relation to subject matter design product ,
claiming user prior to the date of Design Application/Registration, the
Subject matter Design of the Appellant was held to be prior published.
- Trade Mark and Design Rights are antithesis to each other. In case
trademark right has been asserted in a shape of a product, Design right
therein can not be claimed therein. This is also apparent from this fact
that Section 2(d) of the Design Act 2000 (India) specifically excludes
Case Law Discussed:
Date of Judgement:16.11.2022
Case No.: FAO(OS) (COMM) 302/2022
Neutral Citation No. 2022/DHC/005089
Name of Court: Hon'ble Justice Shri Sanjeev Sachdeva and Amit Bansal, High Court
Case Title: GM Modular Pvt. Ltd. Vs Syska Led Lights Private Limited
This information is being shared in the public interest. It should not be
treated as substitute for legal advise as there may be possibility of error in
perception, presentation and interpretation of facts and law involved therein.
Written By: Ajay Amitabh Suman, IPR Advocate,
Hon'ble High Court of
Email: [email protected]
, Mob No: 9990389539