Importance of Design as a

type of Intellectual Property

 Design is an idea as to features of shape,
configuration, pattern or ornament applied to an
article. Such design forms a branch of Intellectual
Property. It refers to the non-functional
appearance of the product, which appeals solely
to the eyes.
 “DESIGNS”

Purely Designs with

Functional /
artistic works eye-appeal & capable of
utilitarian
Industrial application

Patents Copyright Designs

Act, 1970 Act, 1957 Act, 2000
 Benefits of Design
• The registration of a design confers upon the
Registration registered proprietor the exclusive
right to apply a design to the article in the class
in which the design has been registered.
 Evolution of Design Law
• The first legislation in India for protection of Industrial
Designs -The Patents & Designs Protection Act, 1872.
• It supplemented the 1859 Act passed by Governor
General of India for granting exclusive privileges to
inventors and added protection for Industrial Design.
• The 1872 Act included the term ―any new and original
pattern or design, or the application of such pattern or
design to any substance or article of manufacture‘.
• The Inventions & Designs Act of 1888 re-enacted the
law relating to protection of inventions and designs
and contained provision relating to Designs in a
separate part.
• The Patents & Designs Act enacted in 1911 also
provided for protection of Industrial Designs.
• The Patents Act, 1970 repealed the provisions of
the Patents and Designs Act, 1911, so far as they
related to Patents. However, the provisions
relating to Designs were not repealed and
continued to govern the Designs Law. India joined
the WTO as a ―member State in 1995.
• Consequently, the Patents & Designs Act, 1911
was repealed and the Designs Act, 2000 was
enacted, to make the Designs Law in India TRIPS
compliant.
• The definition of design‘ in the
Designs Act, 2000 is more or less
the same as that of the 1911 Act.
Novelty under the 1911 Act was
determined with reference to
India, whereas under the Designs
Act, 2000 novelty is determined
on a global basis.
• The classification system of the
1911 Act was based on material
characteristics of the article,
whereas the Design Rules 2001
and the amendment in 2008
provide an elaborate classification
based on Locarno Classification
system.
 Definition : Article: 2 (a)
• ‘any article of manufacture and any substance,
artificial, or partly artificial and partly natural;
and includes any part of any article capable of
being made and sold separately.’
 Design : 2 (d)
• only the features of shape, configuration, pattern,
ornament or composition of lines or colours applied
to any 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; but
does not include any mode or principle of
construction or anything which is in substance a mere
mechanical device, and does not include any trade
mark or property mark (as defined in Section 479 of
the Indian Penal Code) or artistic work (as defined in
clause (c) of section 2 of the Copyright Act, 1957).
 Exclusion from the Scope of Design
Registration
• Designs that are primarily literary or artistic in scope of design. character are not
protected under the Designs Act.
• These will include :
• Books-jackets, calendars, certificates, forms-and other documents, dressmaking
patterns, greeting cards, leaflets, maps and plan cards, postcards,
• stamps, medals.
• labels, tokens, cards, cartoons.
• any principle or mode of construction of an article.
• mere mechanical device.
• buildings and structures.
• parts of articles not manufactured and sold separately.
• variations commonly used in the trade.
• mere workshop alterations of components of an assembly.
• mere change in size of article.
• flags, emblems or signs of any country.
• layout designs of integrated circuits
 Original
• original, in relation to a design, means
originating from the author of such design and
includes the cases which though old in
themselves yet are new in their application.
A “DESIGN” UNDER THE DESIGNS ACT,
2000
• 2D or 3D features of shape, configuration, pattern,
ornament, composition of lines, colours

• Applied to any article by any industrial process or means

• The finished article appeals to the eye

• Does not include anything which is in

substance a mere mechanical device

• Not an artistic work or trademark

Shape and configuration

It signifies something solid (in

three dimensions) where an idea is
incorporated into the article

Example - feeding bottle

 Pattern, Ornament
It relates to something two dimensional

Example- engraving on metal or like

ornamentation on carpet by various
geometric figures in combination of color
etc.

Mere painting of natural scenes or like on

plain paper- is not an industrial design
 DESIGNS CAN BE 2D OR 3D OR
COMBINATION OF BOTH

• Surface pattern (2D)

• Cut of the garment

(3D)
 DESIGNS EXCLUDED FROM
PROTECTION
• Not NEW or ORIGINAL

• If the design has been disclosed

to the public in India or
elsewhere (exception is
provided for exhibitions)

• Not significantly distinguishable

from known designs or a
combination of known designs
 “NEW OR ORIGINAL”
• “Original”: Means that it must originate from the
creator

• “New”: May involve a design which is known but

is applied for the first time to that article

• But over the years, the test has become NEW

AND ORIGINAL
 THE DEGREE OF NOVELTY REQUIRED

• “New or original” does not simply mean

different

• A trade variant of an old design does not

make it novel

• Substantial novelty required

 WHAT IS “NOVELTY”

• Strikingly different appearance

• Pattern made up of old features but resulting

combination with strikingly different
appearance can be novel
 Two Tests for judging novelty
• 1. Test of influencing customer preference
• Benchairs ltd v. Chair Centre Ltd. (1974) RPC
429
• 2. Test of Noticeability
• Ferrero and Caps A Application 1978 RPC 473
(HL)
 ‘Capable of being made and sold
separately’
• MARICO LTD. Vs. RAJ OIL MILLS LTD., 2007 (35) PTC
330,
• Bombay High Court
• Issue of similarity between cap of two bottles of hair
oil
• Whether cap is an article within the meaning as
specified under the Design Act?
• Court Held : a cap of a bottle is not an article within the
meaning of the definition of “article” as per the
Designs Act, 2000. To qualify as an “article”, it should
be capable of being manufactured and sold separately.
 ‘Capable of being made and sold
separately’
• The Hon’ble Single Bench of Bombay High Court relied on
the judgments reported as FORD MOTOR CAR COMPANY
LTD’S APPLICATION reported in (1995) RPC 167.
• It was held that to qualify under Section 44(1) a spare part
has to have an independent life as an article of commerce
and not be merely an adjunct of some larger article of
which it forms part.
• As per Section 44(1) the English statute has the same
requirement as Indian statute namely “If that part is to be
made and sold separately.” The Hon’ble Court further held
that “Indian Statute should not be read literally. Merely
because part of an article can be made separately and sold
separately, it should not be taken as covered by that phrase
unless the part has an identity in the market by itself.
 ‘Capable of being made and sold
separately’
• However, in appeal before the Division Bench of the Bombay High
Court (reported as MARICO LTD. Vs. RAJ OIL MILLS LTD., 2008(37)
PTC 109 (Bom) (DB))
• the Hon’ble Division Bench reversed the order of the Single Bench
in so far as it related to the interpretation of the definition of
“article” with respect to the cap of a bottle and held that the
definition in the English statute is different from the Indian Statute.
• While the requirement in the English statute is “if that part is to be
made and sold separately” while in the Indian Statue the
requirement is “includes any part of an article capable of being
made and sold separately”. Therefore, the words “capable of being
made and sold separately” has to be read and considered in the
context of the Act.
• The Court however held that both the caps do not have identical
configuration and protrusion as alleged, hence no question of any
infringement.
CLASSIFICATION ACCORDING TO GOODS

• Registration is in relation to goods

• Locarno classification which is followed throughout

the world

• 32 classes

• Protection confined to class for which registered

• More than one design may be registered as a set

of articles of same character
 WHO CAN APPLY FOR A DESIGN
REGISTRATION?
• If design has been specially commissioned
for good consideration, the person for
whom it is executed

• An assignee or exclusive licensee

• In any other case, the AUTHOR

 Registration Procedure
• Filing of application
• Examination
• Response
• Objections
• Acceptance
• Publication
 The essential requirements for
registration of a design
• Should be judged solely by the eye and the features of the design
should be visible.
• Should be new or original.
• Should not be disclosed to the public in India or elsewhere in the
world by prior publication or by prior use or in any other way.
• Should be significantly distinguishable from designs or combination
of designs that are already registered or pre-existing or disclosed to
the public.
• Should not include any scandalous or obscene matter.
• Should be applied to an article by an industrial process.
• Should not include any feature that is purely functional.
• Should not include any trademark or property mark or artistic work
as defined under the Copyright Act.
THE OVERLAP BETWEEN COPYRIGHT &
DESIGN LAWS

• Purely artistic works, for example, paintings

and sketches are protected under the
Copyright Act

• The design development process involves the

development of a number of artistic works –
can copyright protection be claimed over
them?
 COPYRIGHT & DESIGN LAWS
• A distinction has thus sought to be drawn
between “purely artistic works” and works
which are commercialised by industrial
application

• The rationale is that when artistic works are

commercialised, they do not deserve the
protection granted under the Copyright Act and
come within purview of the Designs Act
 Section 2 Copyright Act, 1957
(c) "artistic work" means---
• ( i ) a painting, a sculpture, a drawing
(including a diagram, map, chart or plan), an
engraving or a photograph, whether or not
any such work possesses artistic quality;
• (ii) an architectural work of art; and
• ( iii ) any other work of artistic craftsmanship;
 Section 14 Copyright Act, 1957
(b) in the case of an artistic work, to do or authorize the doing
of any of the following acts, namely:-
(i) to reproduce the work in any material form;

(ii) to publish the work;

(iii) to include the work in any cinematograph film;

(iv) to make any adaptation of the work;

(v) to do in relation to an adaptation of the work any of the

acts specified in relation to the work in clauses (i) to (iii).
 Section 15 Copyright Act, 1957
• 15.Special provision regarding Copyright in designs
registered or Capable of being registered under the
Indian Patents and Designs Act, 2000:-
• (1) Copyright shall not subsist under this Act in any
design which is registered under the Indian Patents and
Designs Act, 2000.
• (2) Copyright in any design, which is capable of being
registered under the Designs Act, 2000, but which has
not been so registered, shall cease as soon as any
article to which the design has been applied has been
produced more than fifty times by an industrial process
by the owner of the copyright or, with his license, by
any other person.
 “Artistic work” – Overlap of Rights?
• Copyright does not subsist
in design registered under
the Designs Act
• Design capable of being
registered, but which has
not been so registered -
copyright shall cease as
soon as any article to
which the design has been
applied more than fifty
times by an industrial
process
 Copyright & Designs Law
• It may not be practically possible for a designer to
get all his designs registered. Also, all designs may
not be “capable of registration” under the Designs
Act

• It may be argued that a design may be capable of

protection under Copyright Act on the basis of the
underlying artistic works (i.e., the sketches,
engravings, prototypes, etc.)
 Copyright & Designs Law
• It is therefore important to maintain
documentation and records at every
stage of product design and development
as this may help in claiming protection
for a design under the Copyright Act,
1957
 DESIGN Vs. COPYRIGHT
DESIGN COPYRIGHT
Complete monopoly Only protects against
copying
Need to register to Subsists inherently
claim protection
Has to be “NEW” No requirement for novelty

Maximum 15 years Life of author + 60 years

Only in respect of Is not goods specific

goods registered for
• Microfibers Inc. v. Girdhar & Co. 2006 (32) PTC
157
• Rajesh Masrani v. Tahiliani Designs Pvt. Ltd
2009 (39) PTC (Del)
• Standard Corporation India Inc. v. Tractors and
Farm Equipments Ltd. MIPR 2014 (2) 23
 Microfibers Inc. v. Girdhar & Co. 2006
(32) PTC 157
• The plaintiff Microfibres filed a suit against the
defendants Giridhar and Co. and Ors. for infringement
of its copyright in the “artistic works” applied to
upholstery fabrics and for attempting to pass off its
goods as that of the plaintiff’s.
• The plaintiff submitted that what was printed on the
upholstery fabrics fell under “unique and original
artistic works” which were conceptualized and
drawn/printed either by the plaintiff’s employees or
the copyright in which was assigned by other persons
to the plaintiff. What is borne out from this submission
is that the purpose/objective of these “artistic works”
is their application to the fabrics.
• Definition of artistic work : very wide and not
necessarily having visual appeal.
• Specific provision for such right under Sec 14
(c)
• Design protection is not extended to
Copyright
• Intention of legislation is to grant higher
protection to original work of artistic nature
compared to design of commercial nature.
Rajesh Masrani v. Tahiliani Designs Pvt.
Ltd 2009 (39) PTC (Del)
• The Plaintiff, a private limited company under the “creative
leadership” of fashion designer Tarun Tahliani, had alleged that the
drawings which it made in the course of developing garments and
accessories were artistic works under Section 2 (c) (i) of the
Copyright Act. The patterns printed and embroidered on the fabric
were also alleged to be artistic works in their own right, as were the
garments finally designed. Further, the plaintiff had alleged
infringement of copyright in these various artistic works, and a
Single Judge had issued an interim injunction in its favour.
• The defendant-appellant raised several arguments in appeal, and at
least two of them merit deeper consideration. The first was that the
garments and drawings were not ‘artistic works’ for the purposes of
copyright protection; and the second was that in any case, the
drawings were required to be registered as designs under Section
15 (2) of the Copyright Act.
 Main Points of consideration
• a) Whether the pattern made by the plaintiff on the
fabric is 'design' or 'artistic work'?
• b) Whether the product in question is the subject
matter of artistic work within the meaning
of Copyright Act, 1957 as alleged by the plaintiff?
• C) Whether the copyright subsists in the plaintiff's
agreements in view of Section 15 of the Copyright
Act, 1957?
• D)Whether the registration of the work under
the Copyright Act is compulsory or registration is
not a condition precedent for maintaining the suit
for infringement of copyright.
 Standard Corporation India Inc. v. Tractors and
Farm Equipments Ltd. MIPR 2014 (2) 23
• Following both the earlier judgment the
overlapping issue was once again addressed.
 Reckitt Benckiser India Ltd vs Wyeth
Ltd.
• Prior Publication
 Issue I
• Whether a design previously registered
abroad is a ground under Section 19 (1)(a) of
the Act for cancellation of a design
subsequently registered in India?
• 19(1)(a) Prior Publication
• 19(1)(b) Prior Registration
 Issue II
• What are the consequences of failure to apply
for registration in India within six months of
making of an application in a convention
country?
 Issue III
• What is the meaning of the expression ‘Prior
Publication’ under Section 19(1)(b) and 4(b) of
the Act?
• Publication in tangible form or by use or in any
other way which constitutes a ground for
cancellation under Section 19
• Doctrine of ‘Sufficient Visual Clarity’: the visual
impact of the publication should be similar to the
design as it visually appears on a physical object.
 Issue IV
• Whether document existing in the record of
Registrar of Designs in a convention country
abroad which are open to public inspection
results in prior publication?
 PIRACY OF REGISTERED DESIGN
• Anyone who applies or causes to be applied to
any article the design or any fraudulent or
obvious imitation of it

• To see whether the essential design features

are substantially similar between the article
and the design representation

• It is the overall general impression of similarity

which is taken into account
 PIRACY OF REGISTERED DESIGN
• Infringement of a copyright in design is termed as "Piracy of
a registered Design".
• It is not lawful for any person during the existence of
copyright to do the following acts without the consent or
license of the registered proprietor of the design.
• Section 22 of the Designs Act, 2000, lays down that the
following acts amount to piracy: -
(1) To publish or to have it published or expose for sale any
article of the class in question on which either the design or
any fraudulent or obvious imitation has been applied.
(2) To either apply or cause to apply the design that is
registered to any class of goods covered by the registration,
the design or any imitation of it.
PIRACY OF REGISTERED DESIGN
• To import for the purpose of sale any article
belonging to the class in which the design has
been registered and to which the design or a
fraudulent or obvious imitation thereof has been
applied
• In fact any unauthorized application of the
registered design or a fraudulent or obvious
imitation thereof to any article covered by the
registration for trade purpose or the import of
such articles for sale is a piracy or infringement of
the copyright in the design.
 Judicial remedy
• The judicial remedy for infringement of a
registered design recommended in the Act is
damages along with an injunction.
• Section 22(2) stipulates remedy in the form of
payment of a certain sum of money by the
person who pirates a registered design.
• A suit in the appropriate manner for seeking
the relief in the form of an injunction is also
recommended
 Jurisdiction
• A suit under section 22 is to be instituted in a
District Court or a High Court depending upon
the quantum of damages claimed.
• A person complaining infringement of his design
can certainly ask for accounts from the defendant
to show the profits earned by the defendant
which would be the loss sustained by him which
he could claim as damages.
• A suit for injunction restraining infringement of
registered design is maintainable only when it is
filed in the appropriate court
 Dart Industries Inc. & Ors. v Techno
Plast & Ors 2016 (67) PTC 457 (Del)
• The first plaintiff: Dart, a US based company
• The second plaintiff :Tupperware Indian Pvt. Ltd.
• Defendant : Techno Plast, the proprietor of the mark
“Signoware”.
• The plaintiffs claimed that ownership to the know-how,
intellectual property rights and trade secrets in its designs
used for the manufacture of Tupperware products.
• Further the defendant company copied their product designs
which amount to design infringement, copyright
infringement, passing off, copying designs by reverse
engineering, unfair competition and unfair trade practices.
 Dart Industries Inc. & Ors. v Techno
Plast & Ors 2016 (67) PTC 457 (Del)
Single Judge
• Injunction denied on the ground of lack of
novelty and originality
• Copyright infringement was denied on the
ground of Section 15
• Passing off was also factually not proved.
 Dart Industries Inc. & Ors. v Techno
Plast & Ors 2016 (67) PTC 457 (Del)
Division Bench
• Firstly, the court agreed with the analysis of the single judge that
the designs were prima facie in public domain and lacked novelty
and hence, could not be protected by the Designs Act despite
registration.
• Secondly, the court held that the question of asserting a copyright
infringement claim independently cannot arise at all when the
design protection subsists, but infringement has not been prima
facie established.
• Thirdly, the court held that action for passing off is a common law
right, independent of the Designs Act. However, for a passing off
action, it must be proved that the general public associates the
shape, trade dress etc. with the plaintiff alone which was neither
pleaded nor established. Holding that there was no infirmity with
the conclusions of the single judge, the court dismissed the appeal
 Whirlpool of India Ltd. V. Videocon Industries
Ltd. 2014 (60) PTC 155 (Bom)
• issues of maintainability of a suit for
infringement between two registered
proprietors and whether there was an
infringement in this case.
• Second issue was about the defenses of
functionality, novelty and the fact that the
plaintiff had obtained two registration with
minor variations on the same day.
• It also considers the issue of passing off
 Maintainability
Just as the
Plaintiff cannot claim a right to relief under Section 22 against a prior registered
proprietor on the basis of his (the Plaintiff’s) registration, the defendant cannot
successfully defend an action under Section 22 by a prior registered proprietor
on the basis of his (the defendant’s) registration. That clearly appears to be the
scheme of the Act. This Scheme is not only based on sound reason and common
sense but is perfectly in consonance with the very nature of a copyright claim in
a design. It, therefore, cannot be argued that Section 22 (3) has implications
only for the Plaintiff’s registration and not for the Defendant’s registration. The
Court may consider both the Plaintiff’s and the Defendant’s registrations in the
light of Section 22 (3) and grant or reject the relief to a Plaintiff depending on whose
registration is prior in time.” In the instant case, the plaintiff’s registration had been
prior in time and therefore, the Court held that the defendant could not use his
subsequent registration as a defense under S. 22.
Plaintiff’s Design
Defendant’s Design
 Whirlpool of India Ltd. V. Videocon
Industries Ltd. 2014 (60) PTC 155 (Bom)
• The principle which clearly emerges from the
above is that the test in deciding such matters
is: "judged solely by the eye are the essential
features present or are the two substantially
different".
• The Defendants were not only found to be
guilty of design piracy but were also prima
facie guilty of passing of their goods/products
as that of the Plaintiff.
Castrol India Limited vs. Tide Water Oil
Co. (I) Limited 1996 (16) PTC 202 (Cal)
• (i) The word 'imitation' does not mean 'duplication' in the sense
that the copy complained of need not be an exact replica.
• (ii) The Court is required to see in particular as to whether the
essential part or the basis of the Plaintiff's claim for novelty forms
part of the infringing copy.
• (iii) The similarity or difference is to be judged through the eye
alone and where the article in respect of which the design is
applied is itself the object of purchase, through the eye of the
purchaser.
• (iv) The Court must address its mind as to whether the design
adopted by the Defendant was substantially different from the
design which was registered. The Court ought to consider the rival
designs as a whole to see whether the impugned design is
substantially different from the design sought to be enforced.
Castrol India Limited vs. Tide Water Oil
Co. (I) Limited 1996 (16) PTC 202 (Cal)
• (v) 'Obvious' means something which, as soon as one looks
at it, strikes one as being so like the original design/the
registered design, as to be almost unmistakable. Fraudulent
imitation is an imitation which is based upon, and
deliberately based upon, the registered design and is an
imitation which may be less apparent than obvious
imitation, that is to say, one may have a more subtle
distinction between the registered design and a fraudulent
imitation and yet the fraudulent imitation, although it is
different in some respects from the original, and in respects
which render it not obviously an imitation may yet be an
imitation perceptible when the two designs are closely
scanned and accordingly amounts to infringement.
 Mattel Inc. v. Jayant Agarwalla,

• Mattel claims a copyright in their "Scrabble" board.

They also claim copyright in the underlying drawings
which were used to create the board in the first place.
Section 15 (2) applies and the board is incapable of
copyright protection. Section 15 (2) reads as below:
“Copyright in any design, which is capable of being
registered under the Designs Act, 1911, but which has
not been so registered, shall cease as soon as any
article to which the design has been applied has been
produced more than fifty times by an industrial process
by the owner of the copyright or, with his licence, by
any other person.”
• In other words, if the work in question (Mattel's board)
could have been registered as a design under the Designs
Act, but hasn't been so registered, then Mattel loses any
"copyright" in such work, if such work was produced more
than 50 times. In short, Mattel loses both design protection
(since it failed to register it as a design) and copyright
protection (since it produced the board more than 50
times).
• The Delhi High Court directed that the defendants,
Agarwala brothers were restrained from using Scrabulous,
Scrabble or any other deceptively similar trademark. The
brothers cannot even hyperlink to Scrabble. But the court
ruled that Mattel did not have a copyright to their famous
board game Scrabble.
 Tarun Sethi & Ors. v. Vikas Budhiraja
& Ors. (Delhi High Court)
• In the present matter, the plaintiffs had claimed novelty only in the
shape and configuration of the door spring. There were certain
features in the plaintiffs’ product that were not present in the
defendants’. Existing publications prior to 2006 were found, which
proved that capsule-shaped door closer/door hinge were available
in the market much prior to the plaintiffs’ registration and there
was no difference in the configuration of those earlier products
with the plaintiffs’. Hence the latter product couldn’t be said to be
materially different from the former. Nor could mere changes in
placement of the plaintiffs’ and the defendants’ products be
perceived as sufficient to alter the shape of such products so as to
acquire novelty. Therefore, the court opined that plaintiff’s
registered design No. 202794 was liable to be cancelled for lack of
novelty and the defendants could use such a factor as defense by
virtue of Section 22(3) of the Act.
• With respect to novelty of a design, the court
held that a design incorporating a shape/pattern
previously published/used or one substantially
similar to that is lacking in novelty. Mere
variations/modifications that do not substantially
alter a previously published shape or design, are
not sufficient to bring novelty to the design.
References were also made to prior decisions like
Kestos Ld. v. Kempat Ld. & Vivian Fitch Kemp
(1936)53 RPC139 and Allen West & Co, Ld. v.
British Westinghouse Electric and Manufacturing
Co. Ld. (1916)33 RPC 137.
 Crocs Inc. USA V Liberty Shoes Ltd. & Ors.
MANU/DE/0615/2018

• Crocs Inc. USA are proprietors of certain

registered designs related to footwear in
India. In the plaint, the Plaintiff stated that
Liberty Shoes Ltd. and others has been
violating the rights of the Plaintiff by imitating
its registered design. It claimed piracy of
design under Section 22 of the Act. The
Plaintiff filed interim applications and a suit
for permanent injunction. The Defendants
challenged the interim injunction application
• Taking defense under Section 22 (4) of the Act,
the defendant contended that the registration of
design in itself invalid. Further claimed that the
design of the Plaintiff’s design lacked
newness/originality. Submitting proof to the
court, defendant stated that the design was in
public domain at the time of registration. Hence,
the registration granted to the Plaintiff was
clearly faulty and liable to be cancelled under
Section 19 of the Act.
• The Court analyzed Sections 2 (d), 4, 19 and 22 of
the Act and held that mere variations to existing
products which do not result in requisite amount
of newness or originality, cannot be considered
as innovations having newness and originality for
being granted monopoly for fifteen years. In
Court's view the design of Plaintiff's footwear is
nothing but a sandal. Sandal with open spaces
are only trade variations of a sandal. The court
held plaintiff liable to pay the imposed costs of
INR 2 lakhs per Defendant, in addition to legal
costs.
• The Plaintiff alleged that the footwear
manufactured by the Defendants were similar,
with color variations or the perforations/open
spaces/holes in the footwear.
• The Plaintiff contended that the onus should
be on the Defendant to prove that there is no
newness or originality.
M/S. Cello Household Products vs M/S.
Modware India And Anr
• There existed two bottles in the market. One belonged
to Cello, while the other belonged to Modware. Cello was
granted registration in the design in 2016. Cello sought an
injunction on two grounds:
• Passing Off.
• Design Infringement.
For determining whether passing off had occurred, court used a
well-established test called the
• “classical trinity”:
• Existence of Reputation and Goodwill.
• Existence of the Fact of Misrepresentation.
• Possibility of Irreparable Injury.
• With regard to design infringement, it was
held that Modware’s product was almost
identical to Cello’s product. Therefore, it was
held that, prima facie, Cello’s design was
sufficiently original and
that Modware’s product infringed upon it.
• Finally, with Modware’s defenses rendered
nugatory, prima facie, design infringement
was concluded to have occurred.
 Pentel Kabushiki Kaisha & Anr. v. M/S Arora Stationers
& Ors.– Delhi High Court [January 8, 2018]

• The Plaintiffs filed a suit for a permanent and interim

injunction restraining the Defendants, from manufacturing,
selling, advertising etc. an identical duplication or obvious
and/or fraudulent imitation of the Plaintiffs’ copyright in
the registered design of their ball points. The court based
on sections 4, 19 and 22 of the Designs Act held that the
features claimed by the Plaintiffs as unique in the ball point
pens of the Defendants were already in existence in earlier
manufactured ball point pens by the Defendants in
different years from the year 2005 and thus were held to
not be substantially new and original designs but mere
trade variants. Accordingly, the court dismissed the
application for interim injunction and vacated the interim
order passed by the court earlier.
Section 4. Prohibition of registration of
certain designs.
A design which –
• (a) is not new or original; or
• (b) 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
where applicable, the priority date of the application
for registration; or
• (c) is not significantly distinguishable from known
designs or combination of known designs; or
• (d) comprises or contains scandalous or obscene
matter shall not be registered.
shall not be registered.
Section 19. Cancellation of registration
(1) Any person interested may present a petition for the
cancellation of the registration of a design at any time
after the registration of the design, to the Controller on
any of the following grounds, namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country
prior to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
(e) it is not a design as defined under clause (d) of section 2.

(2) An appeal shall lie from any order of the Controller under
this section to the High Court, and the Controller may at any
time refer any such petition to the High Court, and the High
Court shall decide any petition so referred.
• It was emphasized that it is the duly of the court to take
special care that no design is to be counted a "new and
original design" unless it distinguished from that
previously existed by something essentially new or
original which is different from ordinary trade variants
which have long been common matters of taste
workman who made a coat (of ordinary cut) for a
customer should be left in terror whether putting braid
on the edges of the coat in the ordinary way so
common a few years ago, or increasing the number of
buttons or the like, would expose him for the prescribed
years to an action for having infringed a registered
design.
• On final analysis, it was emphasized that the
use of the words "new or original" in the
statute is intended to prevent this and that
the introduction or substitution of ordinary
trade variants in a design is not only
insufficient to make the design "new or
original" but that it did not even contribute to
give it a new or original character. If it is not
new or original without them the presence of
them cannot render it so.
In the opinion of this Court, this Court does not even have to
go to the facts as stated by the defendants in their written
statement of their having used the features claimed by the
plaintiffs as unique/new features in the ball point pens of
the defendants which are already in existence in earlier
manufactured ball point pens by the defendants in different
years from the year 2005 inasmuch as firstly the plaintiffs
have to satisfy this Court that the design of which exclusivity
and ownership is claimed by the plaintiffs is a completely
new and original design and is not as to be containing mere
variations or trade variants or some or the other differences
from the known designs already existing in a ball point pen.
In this regard, in the opinion of this Court, the plaintiffs
have miserably failed of showing substantial
newness/originality as required by the definition and
meaning of newness and originality as stated.