Page | 2

Acknowledgment
It is to acknowledge that I have been able to make this project due to
the sincere efforts and help of my teacher. Her explanation and teaching in the
class has helped me to understand the topic of my project. So I thank my teacher to
guide me well and help me in the completion of the project.

Utkarsh.
 Page | 3

Contents

Table of Cases ....................................................Page 4

Introduction ………………................................Page 5
Meaning of Design ……………………................ Page 5
Criteria for Registration of Design ……………… Page 5

New or Original Design ………………............ Page 6

Trade variation of a previous design………….......Page 7

Disclosure or Publication of Design...................Page 9

Confidential disclosures of design …………….....Page 10
Display of design in exhibition...…………………Page 10

Distinctiveness....................................................Page 11
Design Containing Scandalous or Obscene Matter
............................................................................Page 12
Use of Design Contrary to Public Order or Morality
............................................................................Page 13
Bibliography ………………………....…......... Page 14
 Page | 4

Table of Cases

➢ Allen West & Co. v. British Westinghouse Electric and Manufacturing Co.
(1916) 33 RPC 137.
➢ Bharat Glass Tube Limited v. Gopal Glass Works Limited2008 (37) PTC 1 (SC).
➢ Gammeter v. The Controller of Patents and Designs AIR 1919 Cal 887.
➢ Hawkins Cookers Ltd. v. Zaverchand Liladhar Shah & Others2005 (31) PTC
129 (Bom).
➢ Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure, 2000 PTC 177.
➢ Kemp and Company & Others v. Prima Plastics Ltd., 2000 PTC 96.
➢ M/s B. Chawla & Sons v. M/s Bright Auto Industries, AIR 1981 Del 95.

➢ National Trading Co. v. Monica Chawla AIR 1994 Del 309.

➢ Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd., AIR 1985 Del 136.
➢ Philips v. Harbo Rubber Co., (1920) 37 RPC 233 (HL).
➢ Ravinder Kumar Gupta v. Ravi Raj Gupta and Others, 1986 PTC 50.

➢ Reckitt Benkiser India Ltd. v. Wyeth Ltd., 2013 (54) PTC 90 (Del) (FB).
➢ Tarun Sethi & Others v. Vikas Budhiraja & Others, 2012 (52) PTC 485 (Del).

➢ The Wimco Ltd. v. Meena Match Industries, AIR 1983 Del 537.
➢ Walker v. Scott, (1892) 9 RPC 482.
 Page | 5

Introduction

Meaning of Design
Section 2(d) of the Designs Act, 2000 defines “design” to mean only the features of shape,
configuration, pattern, ornament or composition of lines or colours applied to an article whether
in two dimensional or three dimensional or in both forms, by any industrial process or means,
whether manual, mechanical or chemical, separate or combined, which in the finished article
appeal to and are judged solely by the eye.

As a general rule, a design consists of:

i. three-dimensional features, such as shape of the product;

ii. two-dimensional features, such as ornamentation, patterns, lines or colours of a product;

or

iii. a combination of one or more such features.

The followings are excluded from the definition of design:

i. any mode or principle of construction

ii. anything which is in substance a mere mechanical device

iii. any trademark

iv. any property mark as defined under Section 479 of the Indian Penal Code, 1860.

v. any artistic work as defined in Section 2© of the Copyright Act, 1957.

Criteria for Registration of Design

Section 4 of the Designs Act, 2000 relates to prohibition of registration of certain designs. A
design qualifies for registration only if—

i. It is new or original;

ii. It has not been disclosed to the public;

 Page | 6

iii. It is significantly distinguishable from known designs or combination of known designs;

and

iv. It does not compromise o contain scandalous or obscene matter;1

v. Its use would not be contrary to public order or morality.2

New or Original Design

The word ‘new’ in relation to a design means a design which is completely new in the sense that
it is invented or created for the first time and was hitherto unknown. The word ‘original’ in
relation to a design may mean a new application of an existing or known design to a subject-
matter. Thus a design may not be new in the sense that it is completely new. It may be an existing
or a known design but has been applied to a particular article for the first time. Such a design,
therefore, may be original in the sense that its application to the article is new.

Their Lordships discussed the concept of new and original in Gammeter v. The Controller of
Patents and Designs.3 In this context, it was observed:

A design in order to be new or original within the meaning of the Act, need not be new or
original in the sense of never having been seen before as applied to any article whatever,
there might be a novelty in applying an old thing to a new use, provided it is not merely
analogous.

The Supreme Court in Bharat Glass Tube Limited v. Gopal Glass Works Limited,4 held that the
expression “new or original” appearing in section 4 means that the design which has been
registered has not been published anywhere or it has been made known to the public. The
expression, “new or original” means that it had been invented for the first time or it has not been
reproduced by anyone.

The expression “new or original” in this context has to be construed that whether this design has
ever been reproduced by any other company on the glass sheet or not. The Court further held:

1 Section 4, The Designs Act, 2000.

2 Section 35, The Designs Act, 2000.

3 AIR 1919 Cal 887.

4 2008 (37) PTC 1 (SC).

 Page | 7

In the present case, the design has been reproduced in the article like glass which is
registered. This could have been registered with Racine or leather. Therefore, for
registration of a particular configuration or particular shape of thing which is sought to be
reproduced on a particular article has to be applied. As in the present case the design
sought to be reproduced on a glass-sheet has been registered and there is no evidence to
show that this design was registered earlier to be reproduced on glass in India or any other
part of the country or in Germany or even for that matter in United Kingdom, therefore,
for the first time registered in India which is new and original design which is to be
reproduced on glass sheet.5

The test of novelty is the eye of the judge who must place the two designs side by side and see
whether the one for which novelty is claimed is in fact new. It is a matter of first impression.6

In The Wimco Ltd. v. Meena Match Industries,7 the court held that “in the matter of novelty the
eye has to be the ultimate arbiter and the determination has to rest on the general ocular
impression. The court has to consider and look at the two designs in question with an instructed
eye and say whether there is or there is not such a substantial difference between them that which
has been published previously and the registered design to say that at the date of registration that
was not published in India previously.”

Mere novelty of form or shape is insufficient. Novelty involves the presence of some element or
new position of an old element in combination, different from anything found in any prior
structure.8 The design may be applied to any kind of article but some novelty or originality must
exist in a substantial degree otherwise it would paralyze the industry to make the design a trap
for honest traders.9

The novelty or originality of the particular part may be sufficient to impart the character of
novelty and originality to the whole.10 In Hawkins Cookers Ltd. v. Zaverchand Liladhar Shah

5 Id. At p. 15.

6 Gammeter v. The Controller of Patents and Designs, AIR 1919 Cal 887.

7 AIR 1983 Del 537.

8 Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure, 2000 PTC 177 at p. 181. In Allen West & Co. v.
British Westinghouse Electric and Manufacturing Co. (1916) 33 RPC 137, it was observed that there must be a
substantial novelty in the design having regard to the nature of the article and not a mere novelty of outline.
9 The Wimco Ltd. v. Meena Match Industries, AIR 1983 Del 537.

10 Walker v. Scott, (1892) 9 RPC 482.

 Page | 8

& Others,11 the court held that “it is now well settled that even a slight innovation or
improvement in the design is a design by itself and can be registered as independently innovated
design.”

Design is a conception, suggestion or idea of a shape and not an article. If it has been already
anticipated it is not “new or original.” If it has been pre-published it cannot claim protection.
Publication before registration defects the proprietor's right to protection under the Act.12

Trade variation of a previous design

A trade variant is some embellishment (useful or otherwise) which is known, and sometimes.
though not always, used in connection with a particular class of article or class of work. In
Philips v. Harbo Rubber Co.,13 it was held that “the introduction of ordinary trade variants into
an old design cannot make it new or original.”

Where the design is original, the designer conceives something new; but where the design is a
mere trade variation of a previous design, then the designer could have merely kept an existing
design in view and made some changes in that. In order to determine whether a design is new or
original, there must be substantial difference from the design which was known or had been

published prior to the date of registration of the earlier design. What is “substantial difference”?
This is a question upon which no general principle could be laid down at all and it must depend
upon the particular facts in each case. Sometimes, a small variation in the details of a design may
be enough to make the design different from an existing design, whereas in some cases even
large alterations in detail may not make the two designs different. The court has to consider and
look at the designs in question with an instructed eye and observe whether there is or is not such
a substantial difference between the two. There must be a substantial novelty in the design
having regard to the nature of the article and not a mere novelty of outline.14

The distinction has to be drawn between usual trade variants on one hand and novelty or
originality on the other. For drawing such distinction reliance has to be placed on ocular
impression for which the eye would be the ultimate arbiter. However, the eye should be an
instructed eye, capable of seeing through to discern whether it is common trade knowledge or a
novelty so striking and substantial as to merit registration. A balance has to be struck so that

11 2005 (31) PTC 129 (Bom) at p. 134.

12 Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd., AIR 1985 Del 136.

13 (1920) 37 RPC 233 (HL).

14 Ravinder Kumar Gupta v. Ravi Raj Gupta and Others, 1986 PTC 50.
 Page | 9

novelty and originality may receive the statutory recognition and interest of trade and right of
those engaged therein to share common knowledge be also protected.15

Whether a particular design has novelty in it or not is a matter of fact which needs to be decided
primarily by the human eye. It is the settled proposition of law if a particular shape or pattern or
a substantially similar shape or pattern has previously been published or used, the design
incorporating such a shape or pattern cannot be said to be a novel design. Mere variations or
modifications which do not substantially alter a previously published shape or design, which any
skill person can make, are not sufficient to bring novelty to the design.16

Disclosure or Publication of Design

According to Section 4, a design which has been disclosed to the public anywhere in India or in
any other country by publication in tangible form or by use or in any other way prior to the filing
date, or the priority date of the application for registration shall not be registered. In National
Trading Co. v. Monica Chawla,17 it was observed that publication of a design, if disclosed to
any individual member of the public who is not under an obligation to keep it secret, would
constitute publication of the design. In Reckitt Benkiser India Ltd. v. Wyeth Ltd.,18 the court
stated that once there was actual use of the design by making an article of the same, which was
commercially exploited and put in public use, there would surely be publication.

The expression “tangible form” used in section 4(b) refers to a specific physical form or shape as
applied to an article and not the mere ability to replicate, convert and give a physical shape to the
design. To fall under the expression “tangible form” it is necessary that the article should have
been used, but the expression “in any other way” takes some of its colour from the words “used”
or “tangible form.” Section 4(b) therefore, not only requires publication but it should be
publication by use, in tangible form or in any other way. The expression "any other way” is
wider in context and takes into its ambit a design which has been created though not still put to
use or exists in tangible form but at Hue time it is guided by the words “use” and “tangible
form”. Thus, to disqualify a claim for registration or cancel registration of a design in India, the
publication abroad should be by use, in tangible form, or in some other way. It means that the
design should not be a factum on paper/document alone, but should be recognizable i.e. have the

15 M/s B. Chawla & Sons v. M/s Bright Auto Industries, AIR 1981 Del 95.

16 Tarun Sethi & Others v. Vikas Budhiraja & Others, 2012 (52) PTC 485 (Del) at p. 490.

17 AIR 1994 Del 309.

18 2013 (54) PTC 90 (Del) (FB) at p. 102, 109, 125

 P a g e | 10

same impact in the public as a furnished article will appeal when judged solely by the eyes. In
other words, if the design is on paper then it must exist upon a piece of paper in such a way that
the shape or other features of the article are made clear to the eye. The visual impact should be
similar to when one sees the design on a physical object i.e. in tangible form.

“Publication” is essentially a question of fact to be decided as per the evidence led in each case.
Existence of a design in the publication record/office of a Registrar of design abroad may or may
not depending on the facts of each case amount to prior publication. There would be prior
publication only if the prior registered design is made public and has that much necessary clarity
as applied to a specific article capable of being judged by the visual appearance or the eye of the
mind, that by use of the said knowledge and information in the public record of the Registrar of
design office, an article can be made using that design which will be a piracy or violation of that
design. In other words, unless and until there is If clarity and understanding to the naked eye or
the eye of the mind of the foreign registered design as found in the public record of the Registrar
of design qua a specific article, it cannot be said that such public record will amount to prior
publication.

(a) Confidential disclosures of design

Section 16 of the Designs Act provides that certain disclosures made prior to the registration of
design shall not be deemed to be a publication sufficient to invalidate the copyright thereof. They
are:

i. any disclosure made in breach of faith by someone to whom the proprietor of the design
had disclosed the design in such circumstances as it would make it contrary to good faith
for that person to use or publish the design;

ii. the acceptance of a first and confidential order for articles bearing a new or original
textile design intended for registration.

A disclosure of a design by the proprietor to any other person in good faith is not deemed to be a
publication of design sufficient to invalidate the copyright thereof if the registration is obtained
subsequently to the disclosure. The other person to whom the design has been disclosed, if acts
in contrary to good faith in which the design was disclosed to him and uses such design or
publishes such design, such user and publication of design by the other person other than the
proprietor of the design by legal fiction under section 16 is not deemed to be a publication of the
design sufficient to invalidate copyright. Section 16 thus preserves and protects the proprietor’s
 P a g e | 11

registration in the circumstances, when the disclosure of design is made by the proprietor to any
other person in good faith.19

(b) Display of design in exhibition

The Designs Act provides for special provision regarding the display of designs in exhibition.
Section 21 provides that the exhibition of a design, or of any article to which a design is applied,
at an industrial or other exhibition, or the publication of a description of the design during or
after the period of the holding of the exhibition, or the exhibition of the design or the article or
the publication of a description of the design by any person elsewhere during or after the period
of the holding of exhibition, without the privity or consent of the proprietor shall not prevent the
design from being registered or invalidate the registration thereof.

Three conditions are, however, required to be fulfilled to seek the relief enumerated in section
21. These are:

a) the provisions of section 21 should have been extended to the concerned exhibition by the
Central Government by notification in the Official Gazette;

b) the exhibitor exhibiting the design or article, or publishing a description of the design,
gives to the Controller previous notice in the prescribed form; and

c) the application for registration of design must be made within six months from the date of
first exhibiting the design or article or publishing a description of the design.

Other relevant sections :

1. Distinctiveness
A design which is not significantly distinguishable from known designs or combination of
known designs is not registrable.20 The question whether a design is significantly distinguishable
from the other, is to be judged solely by the eye. It is to be seen whether appearance of one
design is substantially similar to the appearance of another design or not? Thus, for a design to
be sign distinguishable from known designs or combination of known designs, there should be
significant variations in it and not merely small or superficial variations.

19 Kemp and Company & Others v. Prima Plastics Ltd., 2000 PTC 96 at p. 110.

20 Section 4, The Designs Act, 2000.

 P a g e | 12

2. Design Containing Scandalous or Obscene Matter

Section 4 prohibits the registration of a design which comprises or contains scandalous or
obscene matter. If the design of article, for e.g. is such which contains scandalous or obscene
matter, the Controller may refuse to register it. Whether a design comprises or contains
scandalous or obscene matter, should be decided from the perspectives of Indian society, as the
meaning of scandalous or obscene may differ from society to society.

3. Use of Design Contrary to Public Order or Morality

According to Section 35, the Controller may refuse to register a design, if he is of the opinion
that its use would be contrary to public order or morality. Where Controller has made such a
refusal, an appeal shall lie to the High Court from his order.
 P a g e | 13

Bibliography

➢ V. K. Ahuja, ‘Law Relating to Intellectual Property Rights’, Lexis Nexis, 2nd

edition, 2013.

➢ Dr. Raghbir Singh, ‘Law Relating to Intellectual Property Rights’, Universal

Law Publishing Co., 2nd edition.

➢ Catherine Colston, ‘Principles of Intellectual Property Law’.

➢ P. Narayanan, ‘Intellectual Property Law’, Eastern Law House, 3rd edition.

➢ Jennifer Davis, ‘Intellectual Property Law’, Oxford Publications, 4th edition.

➢ P. S. Narayana, ‘Intellectual Property Law in India’, Gogia Law Agency, 2014.

➢ Dr. J. K. Das, ‘Intellectual Property Rights’, Kamal Law House, Kolkata, 2008.

➢ Avinash Shivade, ‘Intellectual Property Manual’, Lexis Nexis Butterworths,

2013.

➢ Rama Sarma, ‘Commentary on Intellectual Property Laws’, Vol. 1, Wadhwa

Nagpur, 2007.