Module 20: Fundamentals of the Law Pertaining to Industrial Designs

Introduction

This module aims to familiarize students with the Design Act 2000, and
traverse the interesting concepts pertaining to protection of design as an intellectual
property.
The content comprises of the following: Justification for protecting designs,
the subject matter of design law, definition of design under the Design Act 2000,
excluded subject matter (what is not protected as design), infringement, prohibition of
registration of certain design, defences, remedies and important case laws.

The following sections describe the fundamental tenets pertaining to the law of
designs in India.

1. Justification for protecting designs -

The marketability of any article or good is also dependent on the visual appeal
in addition to its utility. Therefore design of an article and even design of the overall
packaging of the article is very important from a commercial point of view. The law
of design in India incentivises creative packaging by according protection for
copyright in such designs, for a term of 10 years from the date of registration which
can be renewed for a period of 5 years. 1 Therefore, the maximum period for
protection of design right is 15 years. When a design is registered, the registered
proprietor of the design shall enjoy a right to exclusive use of the design and a
corresponding right to protect the design from piracy.

1
S. 11 of the Designs Act 2000 lays down the term of protection as -- Copyright on registration. —
(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of
this Act, have copyright in the design during ten years from the date of registration.(2) If, before the
expiration of the said ten years, application for the extension of the period of copyright is made to the
Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the
period of copyright for a second period of five years from the expiration of the original period of ten
years.
(i) ‘Design’ needs to be protected. All the shapes, configurations, patterns, ornamentation
etcetera are the output of human intellectual effort. Much thought, time and
expense may have been incurred in finding a design which could increase sales and
marketability of a product. Therefore, this specie of intellectual property confers an
exclusive right for a maximum period of 15 years on the proprietor of the design.

(ii)Subject matter of design law - the subject matter which is protected by design system
is the application of the design to article. Two characteristics of design law are:
a. Visual aspect – This has an important impact on the types of subject matter protected
as registered designs.
b. Articles – The protection given only to design which is applied to articles. This means
that garden design, urban planning and architectural design etcetera have been
excluded from the scope of design protection.

The Supreme Court of India in the matter of Bharat Glass Tube Ltd. v.
Gopal Glass Works.,2 defines the object and purpose of the Designs Act, 2000 as to
protect the IPR of original design with the aim to reward the innovator for research
and labour applied to evolve a new and original design. The Court emphasises that the
protection given with respect to designs “is primarily to advance industries and to
keep them in high level of competitive progress. “Unlike patents, industrial designs do
not have high social costs as it does not offer the proprietor a monopoly rights in the
relevant market; but can be utilised to enhance the visual appeal of goods in different
classes as well. Hereinafter the statutory provisions and the relevant procedural and
substantive aspects along with the important principles culled out by the Judiciary in
the case law is discussed.

2. Definition of design - Section 2 (d) of the Designs Act, 2000

The term ‘design’ has been defined to mean 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

2
AIR 2008 SC 2520.

2
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 as defined
in clause (v) of sub-section (1) of S.2 of the Trade and Merchandise Marks Act, 1958
(43 of 1958)3 or property mark as defined in S.479 of the Indian Penal Code (45 of
1860) or any artistic work as defined in clause (c) of S.2 of the Copyright Act,1957
(14 of 1957).

To simplify, the design features must be capable of having separate existence

from the article. There are three main components of this definition. The first is that
of visual character and appeal to the eye and non-functionality. The second is that of
application by any industrial process or means. The third is that of the exclusion of
trademarks and artistic works.

The words, “shape, configuration, pattern or ornament” are not defined in

the Act. It is generally accepted that ‘shape’ and ‘configuration’ refer primarily to the
three dimensional aspect of an article, such as the shape in which a chair is made.
Also ‘pattern’ and ‘ornamentation’ refer primarily to two dimensional aspects, namely
things that are added to or placed on the surface of an article, such as the pattern
applied to wall paper or carpet. Colour and texture may also be brought within the
concept of pattern or ornamentation. A combination of one or more such features is
also protected as subject-matter of the law of design. The word ‘shape’ indicates the
external form of the article. The word ‘configuration’ refers to the arrangement by
which the shape of a composite article is arrived at.

Design is not registered in the abstract. They are registered as features which
are applied to an article. It is a conception, suggestion, or idea, and not an article. 4 In
general any application for registration must be accompanied by a representation of
the design; that is something in the nature of a drawing or tracing, by means of which
the conception or suggestion constituting the design may be imparted to others. 5 The
3
See, the Trade Marks Act, 1999 (47 of 1999).
4
See, Rotela Auto Components (P) Ltd v. Jaspal Singh (2002) 24 PTC 449 (Del) at p. 461; Niki Tasha
P Ltd v. Faridabad Gas Gadgets P Ltd., AIR 1985Del 136;Dover Ltd v.
NurnbergerCelluloidwarenFabrikGebruder Wolff., 1910 (Supp) RPC 498.
5
Pugh v. Reley Cycle Co Ltd., (1912) 29 RPC 196.

3
essence of design law is that a design consists of visual features which are applicable
to an article. The new or original combination and arrangement of lines, stripes or a
pattern on the border of the shawl has been held to constitute design. 6 To be applicable
to an article means that the design must be distinct from the article to which it is
applied, so that, even without the design, the article would retain its essential
character.

‘Article’ means any article of manufacture and any substance, artificial, or

partly artificial and partly natural and includes any part of an article being made and
sold separately. The article must have its existence independent of the design applied
to it. The design must be applicable to an ‘article of manufacture.’ 7 Thus it means that
designs for buildings and structures will not be registrable. If the design is applied to
the part of an article, the part must be for an article which is ‘made and sold
separately.’8 The phrase ‘made and sold separately’ was considered by the House of
Lords in R v. RDAT,9 when it was held that in deciding whether an article was ‘made
and sold separately’ it was irrelevant that the part were, in fact manufactured, stocked
and retailed separately.

‘Appeal to and judged solely by the eye’ – the appeal must be such that it
attracts the attention of the consumer towards the article. The design must be judged
not by objective measurement or scientific evidence but by a visual comparison of
previously existing shape, configuration, pattern or ornament. Lord Morris in the
matter of Amp Inc. v. Utilux 10observed that the definition of design in the UK
Designs Act 1946, could be more expansive by including “[c]ertain features either of
a shape or of configuration or pattern or ornament. These features must be applied to
an article. They must be applied to it by some industrial process of means. There will
then be a finished article. The features must be such that in the finished article they

6
The Wimco Ltd v. Meena Match Industries, AIR 1983 Delhi 537.
7
Bharat Glass Tube Ltd v. Gopal Glass Works Ltd (2008) 37 PTC 1 (SC), p. 15.
8
S. 2(a) of the Designs Act, 2000 states that an “article” means any article of manufacture and any
substance, artificial, or partly artificial and partly natural and includes any part of an article capable of
being made and sold separately.
9
R v. Registered Designs Appeal Tribunal, Exparte Ford Motor Company Ltd., [1995] 1 WLR 18.
10
(1972) RPC 103 (HL) at p. 112.

4
must appeal to and judged solely by the eye. It follows that in the finished article they
must at least be noticeable.11

Notably, the earlier definition of design under the Designs Act 1911 was
narrower; whereas the definition of design under the Designs Act 2000 includes
‘composition of lines’ and the applicability of design to an article in two dimensional
or three dimensional or in both the forms.

3. What are not protected as Design –?

In the Wingate’s Registered Design case,12 Farwell, J has clarified the

intention of the Legislature in defining what is excluded from the scope of design
protection in the following manner:

The intention of the legislature was to ensure so far as possible that only that
which was in fact a design itself that is in the appeal to the eye should come within the
Act. But, by that, I do not mean that because a design, being in fact a design, and
being new and original qua design, is something which makes an appeal to the eye,
and is new or original, it is properly a subject-matter of registration, notwithstanding
that it also involves a method of construction which may be entitled to protection as a
patent.13 [emphasis added]
The excluded subject matter from the scope of design protection include the following
heads:
S.No Particulars
i. Any mode or principles of construction.
ii. A Mere mechanical device, whose features are dictated solely by function.
iii. Any trademark.
iv. Any property mark as defined in S. 479 of the Indian Penal Code, 1860.
v. Any artistic work as defined in S. 2(c) of the Copyright Act, 1957.
vi. Immoral design or designs contrary to public order.

11
Ibid.
12
(1935) 52 RPC 126, p. 131.
13
Ibid.

5
 The ‘any mode or principle of construction’ as an exclusion ensures that
protection is granted only to the appearances of articles rather than to the methods or
principles of construction by which the article is manufactured. The exclusion draws
the line between patent law, which protects invention and design law, which protects
appearances.

A particular shape is said to be dictated solely by function if its relevant

features are brought about by, or attribute only to, the function which the article in
that shape is to perform, even if the same function could be performed by an article of
different shape. Principally, an ‘every feature’ rule is followed, when the overall
design has to be looked in order to ascertain that every feature of that design have no
necessary relation to function. A design is unregistrable only if every feature of the
design is dictated by function. Thus if a design is partly functional it may still be
registrable. Where a design is made up of a number of different features and some of
those features are dictated by function, so long as some of the remaining design
features are not determined by function, the design will not fall within the scope of the
exclusion. Furthermore, a mere mechanical device by itself constitutes an article
which does not have any cosmetic appeal that could be protected within the law of
design. Any trademark falls squarely within the ambit of Trademark law.14 Similarly, a
property mark connotes to a mark used for denoting that a particular moveable
property belongs to a particular person, 15 while an ‘artistic work’ constitutes
copyrightable subject-matter.16 Any immoral design or designs contrary to public
order are excluded from protection in the Act.
14
S.2(1)(i)(viii)(zb) in Trade Marks Act, 1999 defines -- “trade mark” means a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and combination of colours; and— in
relation to Chapter XII (other than section 107), a registered trade mark or mark used in relation to
goods or services for the purpose of indicating or so as to indicate a connection in the course of trade
between the goods or services, as the case may be, and some person having the right as proprietor to
use the mark, and— in relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so to indicate to a connection in the course
of trade between the goods or services, as the case may be, and some person having the right, either as
proprietor or by way of permitted user, to use the mark whether with or without any indication of the
identity of that person, and includes a certification trade mark or collective mark.
15
S. 479 of the Indian Penal Code, 1860.
16
According to S. 2(c) of the Copyright Act, 1957 "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) work of architecture; and (iii) any other work of artistic
craftsmanship.

6
 Therefore, the whole purpose of a design is that it shall not stand on its own as
an artistic work but shall be copied by embodiment in a commercially produced
artefact.17 The limited monopoly right in design law was granted upon the visual
image or eye appeal of the finished article and not the functionality or use of the
manufactured article.

4. Prohibition of registration of certain designs – Section 4 of the Designs

Act, 2000

4.1. There is no express provision in the Designs Act for the

advertisement of design or for inviting any opposition to design
registration. A design may be registered only on an application,
provided it fulfils the criteria as prescribed in the Act.

Certain kinds of designs are statutorily prohibited of registration, these are functional
designs, where the features of the designs were dictated solely by function and that
the design had no feature of shape or configuration which appealed to the eye.

In Escorts Construction Equipment Ltd v. Action Construction

Equipment Pvt Ltd, 18the case was concerning the alleged illegal copying of a design
by the respondent of Pick-N-Carry Hydraulic Self Mobile Cranes manufactured by
the plaintiff. Though the case was not directly coming under the Designs Act, the
Court examined whether the said design was capable of registration under the Designs
Act. After examining the definition of design under the Act, the Court held that the
design in question was incapable of registration. Rejecting the contention of the
plaintiff who claimed protection of certain specific parts of the crane, the Court held:

“The aforesaid parts of the crane are made in a particular shape so as to

interrelate with others mechanically. These parts of the crane are not made to appeal
to the eye but solely to make the crane work or function. Most of the key components
or parts, unseen in the crane for which they were required, had only to pass the test of
17
Interlego v. Tyco, (1988) RPC 343, [1988] 1 AC 217.
18
1999 PTC 36(Del)

7
being able to perform their function. They would be judged by performance and not
by appearance. Consequently, the aforesaid key components or parts are incapable of
being registered as designs.”

According to the Court the definition made it amply clear that the primary
object of the Act was to protect aesthetic shape and not function, or functional shape.
Therefore, neither can a plaintiff’s advertisement emphasizing upon the functional
nature of the features be a cause of action for a suit against infringement of the
Plaintiff’s design;19 nor would purely functional features of the toothbrush be the
subject matter of design registration.20

4.2. The following are grounds for non-registrability of designs:

4.2.1. Not new or original – a design can be registrable only

when it is new or original and not previously published in
India. The primary requirement is that the design must be
new with respect to the class of article to which it has been
applied. The novelty or originality is judged on the basis of
expert evidence, which means that only an expert who is
well versed with the common trade practices and usages in
the class of goods to which the design is applied would be
the one entitled to pass the verdict on the novelty and
originality. A design as such may be original in the sense
that its application to the article is new.
In Gammeter v. Controller of Patents & Designs, 21the
court upheld the claim of novelty or originality for the
registered design of a metal wrist-band for watches –
although a gold bracelet of the same kind was used as
jewellery from several years. The court opined that,
although the shape of the band was not new or original, but

19
Fisher Stoves, Inc v.All Nighter Stove Works, Inc., 206 USPQ 961.
20
Glaxo Smithkline Consumer Healthcare Gmbh& Co KG v. Amigo brushes Private Ltd
&Anr, 2004 (28) PTC 1 (Del).
21
AIR 1919 Cal 887.

8
 its application to the watch was for a purpose and this
design could be said to be original.
The test of novelty has been described by the Delhi
High Court in the matter of the Wimco Ltd v. Meena Match
Industries22as, “[…] 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.
Furthermore in Hello Mineral Water Pvt Ltd v. Thermoking
California Pure23 it was held that, 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.
Further in Glaxo Smithkline Consumer Healthcare
Gmbh & Co KG v. Anchor Health & Beautycare Pvt Ltd, 24
the Delhi High Court explained that for a design to be new
or original, the variation from the design previously applied
must be significant, not merely small or superficial. In the
instant case, the plaintiff’s infringement suit was pertaining
to the design of the handle of a toothbrush, which is used
for grip by hand and fingers, and not in respect of the
design of whole of the toothbrush; wherein the Court made
the following observation:
“[N]ovelty should be capable of making a design
different and distinctive at first sight of the consumer,
should be new and should not require a lot of effort to find
out the novelty. If this yardstick is not applied then by

22
AIR 1983 Del 537.
23
(2000) PTC 177, p.181.
24
(2004) 29 PTC 72 (Del).

9
 introducing minor and insignificant changes here and there,
one may try to monopolize an old and already known
design which cannot be protected even by Designs Act.”25
Therefore, the novelty or originality of the particular
part may be sufficiently striking to impart the character of
novelty and originality to the whole article.

4.2.2. No prior disclosure - a design can be registrable only when

it is not previously published in India. The Designs Act
2000 does not define the term ‘publication’ but if a design
is available to the public or it has been shown or disclosed
to anyone who is not bound to keep it secret then such
design will not be considered registrable. Such publication
can be made in any prior document or even by prior use.
Therefore, in essence publication would mean the opposite
of being kept secret as held by the Delhi High Court in the
matter of Wimco Ltd., Bombay v. Meena Match
Industries.26 The disclosure even to one person is sufficient
to constitute publication.
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. They are:

4.2.2.1. 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;
4.2.2.2. The acceptance of a first and confidential order
for articles bearing a new or original textile
design intended for registration.
25
Ibid, p. 82.
26
Ibid.

10
 The other person to whom the design was disclosed, if acts in contrary to good
faith in which the design was disclosed to him/her 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 S.16 is not deemed to be a publication
of the design sufficient to invalidate copyright. Section 16 thus preserves and protects
the proprietor’s registration in the circumstances, when the disclosure of design is
made by the proprietor to any other person in good faith.

Further S.21 of the Act 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. The conditions
that are required to be fulfilled for relief are:

(1) The provisions of S.21 should have been extended to

the concerned exhibition by the Central Government by
notification in the Official Gazette;
(2) 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
(3) 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.

4.2.3. Not distinguishable from known design –In case of a

combination of previously known designs, it will qualify as
registrable only if such combination results in a new visual
appeal. Therefore it has to be distinguishable from known

11
 designs or combinations of known designs or comprise.
Thus, for a design to be distinguishable there should be
significant variations in it and not merely small or
superficial variations.

4.2.4. Scandalous – Any scandalous or obscene matter are not

registrable under the Designs Act 2000. Whether a design
comprises or contains scandalous or obscene matter, should
be decided from the perspective of Indian society.

4.2.5. According to S.35 of the Designs Act 2000, the Controller

may refuse registration if the use of the design would be
contrary to public order or morality. An appeal shall lie to
the High Court from an order of the Controller under this
section.

5. Application for registration of a design can be made to the Controller of

Designs, who may then register it, provided the application is not hit by
non-registrability grounds mentioned in (b) above. The design is not to be
registered in more than one class. Furthermore, registration of a design
under the Designs Act, 2000 is procedurally different from the registration
granted under the Patents Act 1970 and the Trade Marks Act 1999, where
prior to registration there is a substantive examination, publication before
registration and provision for opposition before registration. Registration
of a design under the Designs Act does not entail these processes.
In fact, Section 2(d) which defines ‘design’ when r/w Rule 11 with
Form I clarifies that the design which is registered is to be applied to any
finished article and may be judged solely by eye appeal. The Controller is
to register a design on application made under S. 5 by the proprietor of any
new or original design not previously published in any country and which
is not contrary to public order or morality and ought to be filed in the
prescribed form which is Form I. The Design Rules 2001, S.11(1)
prescribe that this application must be accompanied by four copies of the

12
representation of the design and the application and each of copy of the
representation of the design shall be dated and signed by the applicant.
S.6 of the Act provides that a design may be subsequently registered in
respect of more articles comprised in that class of articles, so far as it does
not extend the period of copyright in the design beyond that arising from
the previous registration. S. 7 further provides that after the registration of
a design, the Controller shall cause publication of the prescribed
particulars of the design to be published in prescribed manner. The design
is to be open to public inspection thereafter. The Controller shall after
acceptance of the design direct the registration and publication of the
particulars of the application along with the representation of the article to
which it has been applied in the Official Gazette. S.8 empowers the
Controller to make orders regarding substitution of the application, while
S.9 allows the Controller to grant a certificate of registration to the
proprietor of the design when the design is registered. S.5 provides that the
application registration date be recorded as the date of registration of a
design. The design so registered is maintained in the register of designs
which is kept in the Patent Office in Kolkata. Rule 30 of the Designs Rules
2001 lays down that when a design is accepted particulars with respect to
the number of the design, the class in which it is registered, the date of
filing the application for registration in this country, the reciprocity date, if
any, claim for the registration, and such other matters as would effect the
validity or proprietorship of the design should be entered in the said
register.
Notably, the Design Rules 2001, in Rule 10 and 11 require that the
article shall be further classified in the Third Schedule, where if the
proprietor were to register the same design in more than one class of
article, a separate application shall be made in each class of article and the
application shall contain the number or numbers of the registration already
effected. Rule 17, allows that upon receipt of the application for
registration, if the Controller finds objections raised by the examiner
appearing to be adverse to the applicant or requires any amendment of the
application, a statement of such objections shall be sent to the applicant to

13
 respond within 3 months from the date of official communication of
objection by removing the objection or applying for hearing. The period
for removal of the objections is not to exceed the time period of 6 months
from the date of filing of the application. Failure to respond will require
that the applicant shall be deemed to have withdrawn the application.

6. Authorship of a new or original design is discussed under S. 2(j) of the

Designs Act, 2000. The provision refers to the proprietor of design as the
author of the design. Where the author of the design executes the work for
some other person for good consideration, the person for whom the design
is so executed shall be the proprietor of that design. Where any person
acquires the design, or the right to apply the design to any article, whether
exclusively or non-exclusively, the proprietor of the design is that person
to the extent in and to which the design or right is acquired. Proprietor of a
new or original design also includes any person on whom the property in
the design or the right to apply the design has devolved from the original
proprietor.

7. The Controller-General of Patents, Designs and Trade Marks is the

Controller of Designs for the purposes of Designs Act. The Central
Government may appoint as many examiners and other officers with such
designations as it thinks fit. Such officers shall discharge under the
superintendence and directions of the Controller such functions of the
Controller under this Act as he may, from time to time, by general or
special order in writing, authorise them to discharge. According to S.3 of
the Designs Act, 2000, the Controller may, by order in writing and for
reasons to be recorded therein, withdraw any matter pending before an
officer and deal with such matter himself either de novo or from the stage
it was so withdrawn, or transfer the same to another officer who may,
subject to special directions in the order of transfer, proceed with the
matter either de novo or from the stage it was so transferred.

14
 8. Design and Copyright: There may be certain designs which can qualify
for protection both under the Design Act and the Copyright Act. The
industrial design and product design are covered by the Design Act 2000.
Therefore if an original artistic work has been registered as a design under
the Design Act then the same subject matter cannot enjoy a coterminous
protection under the Copyright Act. However if a design qualifies for
registration under the Design Act but has not been so registered then the
exclusive right will subsist under the Copyright Act. If such a design is of
an article which is commercially produced, the copyright over the design
under the Copyright Act will cease to exist when the article to which the
design has been applied has been reproduced more than fifty times by an
industrial process by the owner of the copyright or by any other person
with a licence from the owner.

Design law and the law of Copyright u/S 15(2) can be clarified as hereunder:-

Designs Copyright

Exclusive rights, i.e., Only protects against

Complete monopoly for large copying
scale production (most
countries also confer
exclusive rights)

Needs to be registered Copyright is accorded

automatically, thus there are
no formalities of registration
process

Requires originality and The criterion for protection is

novelty originality, which is easier to
fulfil compared to novelty

Duration of protection is 10 The duration of protection is

plus and can be extended much longer (60 years +)

15
 further by 5 years

Only confined to the product Not product specific

that it is registered upon

9. Infringement and remedies - what amounts to infringement of a design is sale of a

registered design for the purpose of applying or cause to be applied, to import the
registered design for the purpose of sale knowing that the registered design or its
imitation is not with the written consent of the registered proprietor. Such
unauthorised act is also termed as ‘piracy’ of a registered 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.
(3) 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. Any unauthorised 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 in the design.

The aforesaid acts shall constitute piracy only when it is committed during the
existence of copyright in any design. Further, it is necessary that the acts constituting
piracy should have been done for the purpose of sale and not merely for private or
personal use. It is further required that the forbidden acts have been done in relation to
any article in any class of goods in which the design is registered and not in relation to
other class of goods.

16
 Section 22 provides that once a design is registered, the registered proprietor
having a copyright therein can insist that anyone committing piracy should be
restrained from doing so for the purpose of Designs Act.

The tests to be applied for ascertaining the identity or sameness of the

registered designs in question in an infringement action, includes, to find out whether
there were substantial differences between the design subsequently registered and the
design which was earlier registered. These differences must be objectively
ascertained. In a Madras High Court decision in the matter of Britannia Industries v.
27
Sara Lee Bakery, it was observed that the similarity of device or article in its
external appearance could be a factor in considering the substantial differences
between the two but was not the only determining factor.

Defences to a suit for infringement include functional requirements, as well as

the article having no eye appeal. In order for infringement to be found the Court must
determine whether the alleged infringing designed article has the same shape or
pattern and eliminate the claim of similarity. The following defences can be applied –

(i) The defendant can deny that there was any infringement of the
registered design as alleged, or
(ii) That the design applied by him was materially different from the
registered design, or
(iii) That the defendant applied the design with the consent of the
registered proprietor of the design, or
(iv) That the plaintiff is not the proprietor of the design, or
(v) That the registration of the design is invalid as in fact there was no
design as claimed within the definition under S.2(d), or
(vi) The design was not new or original or had been previously
published or registered in India; or
(vii) That there was in force a contract relating to the registered design
which contains an unlawful condition as declared by S.42.

27
AIR 2000 Mad 497.

17
 There is no provision in the Designs Act, 2000 which prevents the defendant
in an infringement suit from pleading that the design has been previously published
and was neither new nor original. Furthermore, the designs which are ordinary may be
differentiated from those that are works of art. The defendant can in the case of
ordinary designs raise a defence against infringement by showing even a small change
in his design; while in works of art, a defence of substantial difference needs to be
established.

10. The remedies that are ordered for infringement of design include:
10.1.1. The remedies (civil) – injunction, damages, delivery up of
infringing articles.
10.1.2. The remedies (criminal) – imprisonment or fine or both.

Section 22(2) stipulates two alternative remedies in the form of payment of

money by the person who infringes a registered design and a suit for injunction
restraining infringement of registered design and for rendition of accounts. The
defendant ought to elect one of the two alternatives. Section 22 (2)(a) provides, if any
person acts in contravention of Section 22, he or she shall be liable to pay the
registered proprietor of the design a sum not exceeding Rs.25,000/- for every
contravention recoverable as a contract debt. The total sum recoverable in respect of
any one design shall not exceed Rs. 50,000/-

Section 22(2)(b), provides that the proprietor may bring a suit for the recovery
of damages for any such contravention, and for an injunction against the repetition
thereof. If s/he succeeds then s/he will be entitled to recover damages and restrain the
defendant in terms of the injunction granted by the Court.

The above remedies will be maintainable only when filed in the appropriate
Court, which may be a District Court or a High Court depending upon the quantum of
damages claimed.

18
 The Delhi High Court has in the matter of M/s Smithkline Beecham Plc v.
M/s Hindustan Lever Ltd.,28 held that, passing off action is also available to a case
of design and such right could be enforced provided the same is available in
accordance with law even in a case of design, for otherwise a latitude would be given
to a manufacturer to misrepresent and to deceive unwary customers by manufacturing
and selling its products as that of products of some other manufacturer or seller.

11. In summary, the essence of the law of designs provides protection to

aesthetic features of goods that enhance the visual appeal and consequent
marketability of such goods. Designs are not registered in the abstract but
are registered as features which are applied to an article in a way that the
article will retain its functional character even without the application of
the design. Further designs applied to specific parts of an article must be
for an article which is ‘made and sold separately.’ Any design which is not
new or original or one which has been disclosed priorly, is not
distinguishable from known design, is scandalous or obscene are not
protected under the Act. The excluded subject-matter more particularly
provided in the Statute u/S. 4 include modes or principles of construction
such as buildings, features dictated solely by function, mechanical device,
trademark, property mark and artistic works.
Finally instances of piracy of a registered design, which is a term
referring to infringement of a design when an unauthorized act is the sale
of a registered design for the purpose of applying or cause to be applied, to
import the registered design for the purpose of sale knowing that the
registered design or its imitation is not with the written consent of the
registered proprietor can be retrieved by suing for civil or criminal
remedies. Section 22 provides that remedy in the form of payment of
money by the person who infringes a registered design. Further a suit for
injunction restraining infringement of registered design and for rendition
of accounts is, therefore, maintainable only when filed in the appropriate
Court, which may be a District Court or a High Court depending upon the
quantum of damages claimed.

28
(2000) PTC 83 at p.90.

19
 12. Important case notes

Definition of a Design

Polymer Papers Ltd. v. Gurmit Singh & Others; 2002 (25) PTC 327 (Del).

Facts: The plaintiff was a company engaged in the production of filter papers for
various automobiles. The defendant was a manager in the company who was
responsible for creating designs for the manufacture of the filter papers. The plaintiffs
contend that the defendant left the job and sold off the industrial drawings to the other
defendants thereby infringing on their Copyright.
Issues: The issue is whether the plaintiff company had the exclusive right to
reproduce or depict the industrial drawings, manufacturing processes, names of
suppliers of certain parts and the other trade secrets and whether all these constituted a
‘design’ under the Designs Act, 2000.
Rules: S. 2(d) of the Designs Act, 2000 states that a design means “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”. Copyright is defined in Section 2(c) as under
“the exclusive right to apply a design to any article in any class in which the design is
registered”.
Analysis: In the present case, the industrial drawings, list of suppliers and clients,
manufacturing processes, etcetera were for the purpose of the manufacture of filter
which came within the ambit of design by virtue of it being of a particular shape and
configuration formed by an industrial process.
Conclusion: The Delhi High Court thus held that industrial drawings and designs in
which the copyright was claimed clearly fell within the definition of design under S.
2(d) of the Designs Act, 2000. However, since the design was not registered, the
plaintiff could not claim copyright over it.

20
Ampro Food Products v. Ashoka Biscuit Works; AIR 1973 AP 17.

Facts: The appellants and the respondents manufacture biscuits. The appellant’s
biscuits have AF embossed on them while the respondents have AB embossed on
them. The appellants alleged that the respondents have copied their design and thus
they have committed infringement of the design. The respondents contend that the act
cannot be an act of piracy since they have already applied for the registration of the
mark as a trademark.
Issues: The issue is whether the embossing on the biscuits was a design or a
trademark and if a trademark is included within the ambit of the definition of design
under S. 2(5) of the Designs Act, 1911.
Rules: S. 2 (5) of the Designs Act, 1911 states that a trademark does not fall under the
definition of a design. S. 51-A of the Designs Act talks about the cancellation of
registration of a design. Section 53 prohibits all acts of piracy of a registered design.
Analysis: The Designs act specifically states that a trademark does not fall within the
scope of the definition of design. Embossing on a biscuit is an integral part of the
biscuit and hence it is a design and not a trademark. This is because a trademark need
not necessarily be present on the product but a design has to be an inherent part of it.
Conclusion: The court held that a design is different from a trademark. A design is
necessarily a part of the product but a trademark is not. In the present case, the
respondents had filed for the registration of their design as a trademark. This was not
possible as per the statute. However that did not give them the right to commit the act
of piracy and thus the court held that the respondents could not legally use AB on
their biscuits.

Bharat Glass Tube Limited v. Gopal Glass Works Limited; 2008 (1) CTMR 500
(SC).
Facts: The respondents Gopal Glass Works had registered their designs for diamond
shaped glass sheets under the Designs Act, 2000 and were granted a certificate of
registration for the same. The respondents therefore acquired the sole right to
manufacture and market the glass sheets in the design that was registered in their
names. The appellant however started marketing his glass sheets with the same

21
design. The designs that were formed on the glass sheets were formed by engraved
rollers which were developed by a German Company which had licensed all Indian
rights to the respondent. On learning that the appellants were manufacturing glass
sheets in the same protected design the respondents moved Court for an interim
injunction which they were granted following which the appellants moved the Asst.
Controller of Patents for cancellation of the respondents design on the ground that it
already been published by the German Company in the year 1992 as was evidenced
by a letter produced from the German Company and also that the design had been
published on the website of the U.K Patent Office by another company which had
sought for design protection.
Rules and Analysis: The respondents design was not new or original since the
German company had been manufacturing the engraving rollers with the same design
since 1992 and also because the design had already been published in the U.K. Patent
Office Website by another German Company and thus the registration of the
respondent’s design was cancelled since it did not meet the requirements of originality
laid down by S. 4. When the matter went on appeal to the High Court the single judge
over-ruled the Asst. Controller of Patents and restored the design to the respondents.
The Appellants then appealed against this decision to the Supreme Court.
Conclusion: Supreme Court accepted the respondent’s distinction between the design
on the engraved rollers and the glass sheets. Under S. 2(d) design means the
application of shape to any article and since in this case the respondent had
specifically mentioned in the application form that he was applying the designs only
to glass sheets, he would have exclusive rights to do so despite the fact that the design
already existed on the engraved rollers. On the question of whether the design was
new and original the Supreme Court held that the appellant had failed to establish that
the design had already been published. The appeal was dismissed and the registration
of the design was restored to the respondent.

Escorts Construction Equipment Ltd. & Anr. v. Action Construction Equipment

Pvt. Ltd. & Anr.; 1999 PTC 36 (Del).

22
Facts: The claim of the plaintiffs was that the defendants’ Pick-N-Carry Hydraulic
Self Mobile Cranes is the three dimensional reproduction of the drawings for which
the plaintiffs have copyright protection.
Issue: Whether the author of an artistic work has the exclusive right to reproduce the
work and convert it from two dimensional to three dimensional and vice versa?
Rule: Under S. 2(5) of the Designs Act, 1911, the word "design" is defined as
meaning features of shape and configuration, pattern or ornament which appeal to and
are judged solely by the eye.
Analysis: The Court observed that industrial drawings are produced by skilled
draughtsman. Some of the drawings incorporate standard parts such as engine or a
gear box in common use, but even in those drawings there is ample labour, judgement
and skill. The drawings used in the design of the crane were reproduction of the
original artistic work. Those copies of drawings were, in turn, used to manufacture
parts of the crane. Those parts manufactured are again reproduction of original artistic
works. A reproduction of an artistic work includes a version produced by converting
the work into three dimensional forms. Such drawings are capable of being infringed
by copying of a three dimensional article.
Conclusion: Based on the above reasoning, the Court held that the defendants have
violated copyright of the plaintiffs in their industrial drawings and granted an
injunction in favour of the plaintiff.

Hindustan Lever Ltd., Bombay v. Nirma Pvt. Ltd., Ahmedabad; AIR 19992 Bom
195

Facts: Hindustan Lever Ltd., has filed a suit against Nirma Private Ltd., seeking
permanent injunction restraining the defendant from using in relation to soaps or
detergent powder the impugned carton, a photograph of which is annexed as Exhibit
'O' to the plaint, or any other deceptively similar carton.
Issues: Whether the mark used by the defendant infringes the plaintiff's mark?
Whether an artistic label which can be registered as a trade mark under the Trade
Marks Act can also be registered as an artistic work under the Copyright Act, 1957?

23
Rule: Section 2(c) of the Copyright Act, 1957 defines an "artistic work" to mean "a
painting, a sculpture, a drawing (including a diagram, map, chart or plan), an
engraving or a photograph."
Analysis: To find out whether the mark used by the defendant infringes the plaintiff's
mark or not was decided by applying the test as to what would be the general
impression of an unwary customer of imperfect recollection while seeing the
impugned carton. The Court said that a mark is infringed by another, even without
using the whole of it, he uses one or more of its essential features.
Conclusion: The Court ruled that the defendant can market its product without
adopting the carton Exhibit 'O' to the plaint or any other label deceptively similar to
the label mark of the plaintiff or the essential features thereof.

Concept of Novelty and Originality

Parle Products Private Limited v. Surya Food & Agro Limited; 2009 (40) PTC
638 (Mad) (DB).

Facts: Appellant/Plaintiff Parle Products Pvt. Ltd. are carrying on business of

manufacturing of biscuits and confectionaries and they had developed new and
original packet designs having several novel features in its shape, configuration and
surface pattern, which were registered for protection. They further contend that in
Chennai, Defendant Surya Food and Agro Limited had started marketing several
varieties of biscuits "Priyagold" in packets bearing shape, configuration and surface
which was a fraudulent and obvious imitation of the Plaintiff’s registered Design.
Issues: Whether a "cause of action" has arisen at Chennai and the plea can be barred
under Order II Rule 2 of the Code of Civil Procedure? Whether a design registered
under the Designs Act is eligible for protection under the Copyright Act?
Rules: Code of Civil Procedure, S. 134(2) of Trade Marks Act, S. 22 of Designs Act,
2000
Analysis:
1. As per S. 22(1) of the Designs Act, 2000 copyright in a registered design gives
a Proprietor an exclusive right to apply the design to any article in any class in
which the design is registered. For relief under this section, every ground on

24
 which registration of a design may be cancelled under S. 19, will be available
as a ground of defence. Whether a "cause of action" has arisen at a particular
place, is a 'question of fact', which can only be decided after recording of the
evidence of the parties. When a plea of bar under Order II Rule 2 of the Code
of Civil Procedure is raised, the Court has to ascertain whether the cause of
action of the previous and subsequent suit, was identical and in the absence of
proof of the identity of cause of action and pleadings, such a plea cannot be
permitted to be raised in the considered opinion of this Court. Moreover, the
issue of jurisdictional dispute requiring evidence must be decided along with
the other issues in the suit, only at the time of trial.

2. "Actually and voluntarily resides or carries on business or personally words

for gain" mentioned in S. 134(2) of Trade Marks Act, is not found in S. 22 of
Designs Act. As matter of fact, there is no provision under Designs Act for
criminal proceedings against piracy of designs. If a design is registered under
that Act, it is not eligible for protection under the Copyright Act. However, in
the case of a design which is capable of being registered under the Designs
Act, but no so registered, copyright will subsist under the Copyright Act, but it
will cease to exist as soon as any article to which the design has been applied
has been reproduced more than 50 times by an industrial process by the owner
of the copyright or with his license by any other person. The Designs Act,
unlike the Copyright Act, gives monopoly protection in the strict sense of the
word rather than mere protection against copying as under the Copyright Act
and though there is an area of overlap between the Copyright Act and the
Designs Act, the two Acts do not give coterminous protection as regards the
subject-matter.

Bharat Glass Tube Limited v. Gopal Glass Works Limited; 2008 (1) CTMR 500
(SC).

Facts: The respondents Gopal Glass Works had registered their designs for diamond
shaped glass sheets under the Designs Act, 2000 and were granted a certificate of
registration for the same. The respondents therefore acquired the sole right to

25
manufacture and market the glass sheets in the design that was registered in their
names. The appellant however started marketing his glass sheets with the same
design. The designs that were formed on the glass sheets were formed by engraved
rollers which were developed by a German Company which had licensed all Indian
rights to the respondent. On learning that the appellants were manufacturing glass
sheets in the same protected design the respondents moved Court for an interim
injunction which they were granted following which the appellants moved the Asst.
Controller of Patents for cancellation of the respondents design on the ground that it
already been published by the German Company in the year 1992 as was evidenced
by a letter produced from the German Company and also that the design had been
published on the website of the U.K Patent Office by another company which had
sought for design protection.
Rules and Analysis: The respondents design was not new or original since the
German company had been manufacturing the engraving rollers with the same design
since 1992 and also because the design had already been published in the U.K. Patent
Office Website by another German Company and thus the registration of the
respondent’s design was cancelled since it did not meet the requirements of originality
laid down by S. 4. When the matter went on appeal to the High Court the single judge
over-ruled the Asst. Controller of Patents and restored the design to the respondents.
The Appellants then appealed against this decision to the Supreme Court.
Conclusion: Supreme Court accepted the respondent’s distinction between the design
on the engraved rollers and the glass sheets. Under S. 2(d) design means the
application of shape to any article and since in this case the respondent had
specifically mentioned in the application form that he was applying the designs only
to glass sheets, he would have exclusive rights to do so despite the fact that the design
already existed on the engraved rollers. On the question of whether the design was
new and original the Supreme Court held that the appellant had failed to establish that
the design had already been published. The appeal was dismissed and the registration
of the design was restored to the respondent.

Glaxo Smithkline Consumer Healthcare Gmbh & Co. KG v. Anchor Health &
Beautycare Pvt. Ltd.; 2004 (28) PTC 1 (Del).

26
Facts: In the above case the plaintiff filed a suit for restraining the defendant from
manufacturing and selling offending toothbrushes, which infringed the registered
design of the plaintiff or which were fraudulent or obvious imitation. The suit is filed
in respect of design of toothbrushes, which comprises a distinctive aesthetic
toothbrush in respect of which the plaintiff had obtained a design registration. By
virtue of said design registration and Section 48(5) of the Designs Act, 2000, the
plaintiff has the copyright in the design for an initial period of 5 years from the date of
the registration and this period is extendable by two successive periods of 5 years
each.
Issue: Whether the defendant by adopting an obvious imitation of its design in its own
toothbrush has infringed the plaintiff's property right for the design registered in its
name?
Rule: S. 22(1) of the Act was enacted to eliminate the violation of the copyright in
any design, in other words, the piracy of registered design. Clause (a) discloses that it
would not be lawful for any person to apply or cause to be applied to any article or
any class of article in which the design is registered, the design or any fraudulent or
obvious imitation thereof for the purpose of sale without the license or written consent
of registered proprietor of the said design. The action of such a person would also fall
under clause (c) and would be not lawful if a person consciously infringed registered
design or any fraudulent or obvious imitation thereof or apply to any article in that
class of article in which the design is registered by adopting fraudulent or obvious
imitation thereof without the consent of the registered proprietor of that design.
Analysis: In a suit for injunction filed against the defendants, the Delhi High Court
held that the tooth brushes mainly have 2 components viz., the plastic handle and the
bristles. The handle itself has 3 sub components which are (a) the head (b) the neck
(c) the handle grip. While holding that the handle of the tooth brush could not be
detached from other components and sold out separately, the court dismissed an
application for interlocutory injunction against the defendants on the grounds that the
handle (grip) of the toothbrush detached from its other components is incapable of
being registered as a design, therefore the question of piracy of the plaintiff's
toothbrush's design under S. 22 of the Designs Act 2000 could not arise.
Conclusion: The plaintiff was unable to prove the infringement of his property rights.
The Court passed a verdict in the favour of the defendant.

27
Escorts Construction Equipment Ltd. & Anr. v. Action Construction Equipment
Pvt. Ltd. & Anr.; 1999 PTC 36 (Del).

Facts: The claim of the plaintiffs was that the defendants’ Pick-N-Carry Hydraulic
Self Mobile Cranes is the three dimensional reproduction of the drawings for which
the plaintiffs have copyright protection.
Issue: Whether the author of an artistic work has the exclusive right to reproduce the
work and convert it from two dimensional to three dimensional and vice versa?
Rule: Under S. 2(5) of the Designs Act, 1911, the word "design" is defined as
meaning features of shape and configuration, pattern or ornament which appeal to and
are judged solely by the eye.
Analysis: The Court observed that industrial drawings are produced by skilled
draughtsman. Some of the drawings incorporate standard parts such as engine or a
gear box in common use, but even in those drawings there is ample labour, judgement
and skill. The drawings used in the design of the crane were reproduction of the
original artistic work. Those copies of drawings were, in turn, used to manufacture
parts of the crane. Those parts manufactured are again reproduction of original artistic
works. A reproduction of an artistic work includes a version produced by converting
the work into three dimensional forms. Such drawings are capable of being infringed
by copying of a three dimensional article.
Conclusion: Based on the above reasoning, the Court held that the defendants have
violated copyright of the plaintiffs in their industrial drawings and granted an
injunction in favour of the plaintiff.

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

Facts: The matter arises in connection with an application which was made by Mr.
Gammeter to the Controller of Patents and Designs whereby the Controller was
requested to register the accompanying design in class. The Controller registered that
design on the 5th of February 1915. On the 23rd of July 1915, Messrs. J, Boseck &
Co. applied to the Controller for cancellation of the registration; and, after hearing
both patties, that is to say, Mr. Gammeter and Messrs. Boseck & Co., on the 7th of

28
August 1915, the Controller cancelled the registration. On the 23rd of February 1916,
notice of an application to the learned Judge was given; and the notice was that an
application would be made for an order that the Controller of Patents and Designs
should place the Design No. 2611 upon the register of designs in such manner as the
same was on and prior to 4th August 1916.
Issues: Whether the controller had exceeded his jurisdiction? Even if had jurisdiction,
should he have cancelled the registration of a new and an original design?
Rule:
1. S. 62 of the Indian Patents and Designs Act provides that, 'The Controller
may, on request in writing accompanied by the prescribed fee,-(a) correct any
clerical error in or in connection with an application for a patent or in any
patent or any specification; (b) cancel the registration of a design either wholly
or in respect of any particular goods in connection with which- the design is
registered; (c) correct any clerical error in the representation of a design or in
the name or address of the proprietor of any patent or design, or in any other
matter which is entered upon the register of patents or the register of designs."
2. S. 43 provides, in Sub-section (1) that "The Controller may, on the application
of any person claiming to be the proprietor of any new or original design not
previously published in British India, register the design under this part." Sub-
section (4) provides that ' The Controller may, if he thinks fit, refuse to
register any design presented to him for registration; but any person aggrieved
by any such refusal may appeal to the Governor-General in Council": so that,
the Controller upon an application for the registration of a design has
discretion either to register or to refuse to register, but his decision is subject,
to an appeal not to the Courts, but to the Governor-General in Council.
Analysis: S. 62 is limited to oases of applications by the registered owner or
somebody in who is vested the interest of the registered owner, such as the trustees in
bankruptcy or the Liquidator, if the registered owner happens to be a Company. The
words "on request in writing" induce one to think that they must mean on request, by
a person who is interested in the patent or design. The Controller, upon the application
of Messrs. Boseck & Co., had no jurisdiction to cancel the registration, and it can be
said that under the Act the proper and ordinary way of expunging the registration of a
design was to apply to this Court under S. 61.

29
Calcutta High Court went on to rule that the test of novelty was the eye of the judge
who must place the two designs side by side and see whether the one for which
novelty was claimed was in fact new. It further observed that it was a matter of first
impression. In this case although in view of the bracelet produced by Messrs. Cooke
and Kelvey, the shape of the "Novelty" band by itself, cannot be said to be new and
original, the application of it to a watch to be worn on the wrist was for a purpose so
different from ' and for a use so dissimilar to the purpose and use of the bracelet that
the design in question may be said to be original.
Conclusions: Appeal was allowed by the Calcutta High Court.

Texla Metals & Plastics Pvt. Ltd. v. Anil K. Bhasin; 2001 PTC 146 (Del).

Facts: The plaintiff has filed an application that it has obtained a registration of a
design of a bollard (road safety marker), and has also obtained a registration for
delineator. The plaintiff attached the registration certificates of these designs along
with their photographs in the plaint. The defendant also is a manufacturing company
of bollard and delineator. The only difference in the design of bollard of the plaintiff
and the defendant is that in the defendant’s entire design a few words and a particular
arrow is missing, other things being exactly the same as plaintiffs’. The design of the
delineator of both the parties is the same. According to the plaintiff, it had conceived
both the designs and got registration for its use without any objection and therefore
the plaintiff claims that the defendant is infringing its designs and claims for an
injunction restraining the acts of the defendant. While the defendant claims that these
designs are used as road safety in other countries and the defendant had even procured
its samples before the plaintiff got the registration done.
Issues:
● Does making the design freely available in the market, lead to its publication?
● Is the design used by the plaintiff, original?
● Has there been any infringement of the designs of the plaintiff?
Rules: The Court took into consideration S. 43 of the Designs Act, 1911 which
provides for the person claiming to be the proprietor of any new or original design not
previously published in India, the right to make an application.

30
S. 51-A of the Designs Act, 1911 provides for the registration already granted to be
cancelled if the design has been previously published in India prior to its registration
or if the is not new or an original one.
Analysis: The Court rules that if a good is imported from abroad and used by the
importer without making its design freely available in the market, the design is nit
said to be published. Thus, the contention of the defendant that it had received
brochures from various countries before the plaintiff got their designs registered, mere
receipt would not amount to publication of designs within India. The Court in
accordance with S. 43 of the Designs Act, 1911 read that though the basic nature of
the road safety equipment will basically remain the same yet the designs were not
available in India before the plaintiff got it registered. The design may not be new or
original elsewhere but it is a novelty as far as India is concerned. The fact that the
plaintiff made the designs available in India before the defendant did it, clarifies the
position that it is the proprietor of the design and thus the Court does not advance the
decision in favour of the defendant.
Conclusion: The plaintiffs’ appeal stands for the grant of an injunction. An ex parte
injunction is granted in favour of the plaintiff and the contention of the defendant is
dismissed.

Joginder Singh v. Tebu Enterprises (P) Ltd.; AIR 1989 Del 81.

Facts: By a certificate dated 16th August, 1976 the respondent obtained registration
No. 144635 under the Design Act of a tricycle which, inter alia, consists of a blow
moulded plastic seat as well as blow moulded wheels with a steel handle. The
respondent also obtained another registration No. 144636, also on 16th August, 1976,
from the Controller of Designs, Calcutta in respect of blow moulded plastic seat.
These seats are somewhat in the shape of a duck and, according to the respondent, it
was their original design. The petitioner also, after 16th August, 1976, started
manufacturing and selling tricycles using somewhat similar blow moulded seats.
Thereupon the respondent filed a suit for permanent injunction against the petitioner.
Issue: Whether the petitioner is entitled to cancellation of the design No. 144635 and
144636 dated 16.8.76 in question on the ground as stated in the petition?

31
Rule: S.51A (1) of the Designs Act
Analysis: In this case, the meaning of the expression "published in India" was
analysed with great detail. The Court also looked into whether a single instance of
import unconnected with any other fact or disclosure to only one person of a design
can be regarded as publication in India. There can be no doubt that if goods are
manufactured and steps are taken to sell them to the public, then the design of the
goods has to be regarded as having been published in India. If good are imported from
abroad and are used by the importer without its disclosure to anyone else and goods of
such design are not freely available in India then, possibly, it can be said that there is
no publication of the design goods so imported. If, however, the goods which are
imported are used and in full view of the general public, then the design of the goods
so imported and used will have to be regarded as having been published in India, apart
from the fact that such a design, if later used for manufacture of goods in India, would
not be regarded as a new or an original design.
Conclusion: The Court came to the conclusion that there was prior publication of the
design, and goods answering the said description were being manufactured and
marketed before the design was registered. Hence, ruling in favour of petitioner.

B K Plastic Industries v. Jayantilal Kalidas Sayani; AIR 1972 Cal 339.

Facts: The petitioner applied to the Controller of Patents and Designs at Calcutta for
the registration of a patent in respect of a 'picnic set' being an assembly of tumblers
made of plastics. After making the said application the petitioner started
manufacturing and marketing for commercial purposes the said assembly of tumblers.
The petitioner subsequently came to know that on or about June 26, 1968 an
application was made by one J. K. Savani of Bombay for the registration of a design
in respect of assembly of tumblers. The petitioner on coming to know of the said
marketing of the said tumblers according to the said design complained of the
infringement made thereby of its aforesaid patent in respect of the said 'picnic set'.
Issue: The issue in this case is whether the two forums prescribed by the S. 51 A of
the Patents and Designs Act, 1911 for the relief of cancellation or revocation of a
registration of design are mutually exclusive. The other issue was whether there was
an infringement in the designs of the plaintiffs?

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Rules: S. 43(1) of the Patents and Designs Act, 1911 provides that "The Controller
may, on the application of any person claiming to be the proprietor of any new or
original design not previously published in (India), register the design under this
part". S. 51-A. of the act deals with Cancellation of registration:-1. Any person
interested may present a petition for cancellation of the registration of design- (a) At
any time after the registration of the design, to the High Court on any of the following
grounds, namely :--i) that the design has been previously registered in (India); or ii)
that it has been published in (India) prior to the date of registration; or iii) that the
design is not a new or original design; or (b) Within one year from the date of
registration to the Controller on either of the grounds specified in Sub-clauses (i) and
(ii) of Clause (a). 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".
Analysis:
1. If a design loses its novelty or newness on the date of registration the
registration of such design shall be cancelled or revoked. Even if a design
which is original but is published earlier than the date of registration the
registration may be revoked. The respondent with the consent of J. K. Sayani
has been manufacturing the plastic tumblers in the aforesaid form of the
design for the purpose of selling the same in the market and has been selling
the same in various parts of India through various agencies. In the instant case
the invention or the method or dovetailing the tumblers under a cover is not of
any intricate mechanism. It is true that any process is not registered but only
the product i. e. the shape and configuration of the tumblers assembly with the
cover but even then in any event the same has to be held to have been
published on the basis of the admission.
2. Reliance of the respondents on S.43 was not correct. It is true that either a new
or an original design may be registered under Section 43 of the Act but
certificate of registration issued by the Controller under Section 45(1) of the
Act is only a prima facie evidence to the said effect. In an action for damages
for infringement defence may raise the plea that the design is neither new nor
original. Similarly, in an application for cancellation or revocation of a
registration of a design the petitioner may raise the plea that the design is

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 neither new nor original and on that ground should be cancelled or revoked.
Upon proof of either of the said grounds, the registration may be cancelled.
3. With regard to the mutual exclusiveness of the forums of filing the petition,
the court was of the opinion that, it is not necessarily the case that the
alternatives are mutually exclusive. The question as to whether they are
mutually exclusive or not must be determined by applying the general rule that
words should be construed to ascertain the intention of the provision in
question to be collected from the whole of its terms". The forums prescribed
by Section 51-A for cancellation or revocation of registration of Design in
Sub-clauses (a) and (b) are not mutually exclusive. In the premises, the
application made by the applicant which was pending now before the
Controller cannot operate as a bar to the initiation of the present proceeding by
way of petition.
Conclusion: The petition on behalf of the appellants was allowed.

Hello Mineral Water Pvt. Ltd. v. Thermaking California Pure; 2000 (20) PTC
177 (Del).

Facts: The plaintiff is a company engaged in selling water coolers. It claims that the
defendants who are also engaged in selling water coolers, have infringed their
copyright by using their same design on water coolers. The defendant has been trying
to advertise its product in the market using pamphlets, which makes it obvious for the
plaintiff that his design has been copied and his copyright infringed. The defendant
claims that the plaintiff has no novelty in the design for it was already in use. The
plaintiff seeks injunction for restraining the defendants from using his design.
Issues: Did the plaintiff have novelty in the design? Can the plaintiff claim his
copyright over the design, by virtue of its registration?
Rule:
1. The Court brings in S. 2(5) of Designs Act, 1911 which defines “design”. It
refers to features of shape, configuration, pattern applied to any article through
industrial or manual process but does not include any mode or principle of
construction and also does not include any trade mark as defined in S.2(1)(5)
of the Trade And Merchandise Marks Act, 1958. The Court also referred to S.

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 2(4) of Designs Act, 1911 which referred to copyright as the exclusive right to
apply a design to any article in any class in which the design is registered.
2. S. 47 of the Act allows the registered proprietor of the design to have
copyright in the design during five years of registration, and also have the
exclusive right to use it while S. 53 of the Act makes it unlawful for any
person to apply the design or its imitation in the class of goods in which the
design is registered.
Analysis: The Court held that the plaintiff did not have novelty in the design because
for a design to be a novelty there should be presence of some new element in
combination with the previous one and it should not have been known to anyone
before. The colour combination, the location of the cup holders and the brand labels
of the defendant gives the impression that it is not a copy of the design used by the
plaintiff. Also the plaintiff did not have copyright over the design because that design
was already in use for air conditioners, washing machines etc. in other advanced
countries of the World. There was no newness or anything inventive about the design
and so the registration by the plaintiff is liable to be cancelled.
Conclusion: The appeal was disposed of with the conditions that the defendants shall
submit quarterly statements of manufacture and sale of water coolers and in case the
suit is decreed in favour of the plaintiff, the defendant will be liable to pay 15% of the
gross sale proceeds to the plaintiff within six months.

Glaxo Smithkline Consumer Healthcare Gmbh & Co. KG v. Amigo Brushes

Private Ltd. & Anr. 2004 (28) PTC 1 (Del).

Facts: In the above case the plaintiff filed a suit for restraining the defendant from
manufacturing and selling offending toothbrushes, which infringed the registered
design of the plaintiff or which were fraudulent or obvious imitation. The suit is filed
in respect of design of toothbrushes, which comprises a distinctive aesthetic
toothbrush in respect of which the plaintiff had obtained a design registration. By
virtue of said design registration and Section 48(5) of the Designs Act, 2000, the
plaintiff has the copyright in the design for an initial period of 5 years from the date of
the registration and this period is extendable by two successive periods of 5 years
each.

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Issue: Whether the defendant by adopting an obvious imitation of its design in its own
toothbrush has infringed the plaintiff's property right for the design registered in its
name?
Rule: S. 22(1) of the Act was enacted to eliminate the violation of the copyright in
any design, in other words, the piracy of registered design. Clause (a) discloses that it
would not be lawful for any person to apply or cause to be applied to any article or
any class of article in which the design is registered, the design or any fraudulent or
obvious imitation thereof for the purpose of sale without the license or written consent
of registered proprietor of the said design. The action of such a person would also fall
under clause (c) and would be not lawful if a person consciously infringed registered
design or any fraudulent or obvious imitation thereof or apply to any article in that
class of article in which the design is registered by adopting fraudulent or obvious
imitation thereof without the consent of the registered proprietor of that design.
Analysis: In a suit for injunction filed against the defendants, the Delhi High Court
held that the tooth brushes mainly have 2 components viz., the plastic handle and the
bristles. The handle itself has 3 sub components which are (a) the head (b) the neck
(c) the handle grip. While holding that the handle of the tooth brush could not be
detached from other components and sold out separately, the court dismissed an
application for interlocutory injunction against the defendants on the grounds that the
handle (grip) of the toothbrush detached from its other components is incapable of
being registered as a design, therefore the question of piracy of the plaintiff's
toothbrush's design under S. 22 of the Designs Act 2000 could not arise.
Conclusion: The plaintiff was unable to prove the infringement of his property rights.
The Court passed a verdict in the favour of the defendant.

Mohan Lal v. Sona Paint & Hardwares, and Micolube India Limited v. Rakesh
Kumar; 2013 (55) PTC 61 (Del) (FB)

Facts: Plaintiff was in the business of manufacturing and trading of mirror frames,
door pipe, handles and other allied and cognate goods. Plaintiff had two design
registrations in respect of its two mirror frames. Plaintiff came to know that the
Defendant had started to manufacture and market products bearing designs which
were identical and similar to Plaintiff’s designs. Thus, the Plaintiff instituted a suit

36
against the Defendant seeking a decree for permanent injunction restraining piracy of
registered design, passing off, damages, etc.
Issues: Whether the suit for infringement of registered Design is maintainable against
another registered proprietor of the design under the Designs Act, 2000? Whether
there can be an availability of passing off in the absence of express saving or
preservation of the common law by the Designs Act, 2000 and more so when the
rights and remedies under the Act are statutory in nature? Whether the conception of
passing off as available under the Trade Marks can be joined with the action under the
Designs Act when the same is mutually inconsistent with that of remedy under the
Designs Act, 2000?
Rule and Analysis:
1. A holder of a registered design could institute a suit against a defendant who is
also in possession of a registered design.” It was held that a suit for
infringement of registered Design is maintainable against another registered
proprietor of the design under the Designs Act, 2000 and the expression “any
person” found in S. 22 of the Designs Act would not exclude a subsequent
registrant as no such words of limitation are found in S. 22.
2. A holder of a registered design can institute an action for passing off.” It was
held that the Plaintiff would be entitle to institute an action for passing off in
respect of a design used by him as a trademark provided that the action
contains the necessary ingredients to maintain such a proceeding. Trade Marks
Act does not deprive a user of an unregistered trademark the right to protect
the misuse of his mark by a defendant Therefore, in so far as a design, which
is registered under the Designs Act is concerned, it would certainly have the
right to take remedial steps to correct a wrong committed by a defendant by
instituting a passing off action.
3. The two actions cannot be combined in two suits”. It was held that a
composite suit for infringement of design and passing off would not lie. The
Court could, however, try the suits together, if the two suits are filed in close
proximity and/or it is of the view that there are aspects which are common to
the two suits.
Conclusion: The reference was disposed off.

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The concept of functional designs
Fisher Stoves, Inc. v. All Nighter Stove Works, Inc.; 206 USPQ 961.

Facts: Robert L. Fisher, designer of a welded steel woodburning stove, granted

plaintiff, Fisher Stoves, a license to manufacture and sell such stoves in New England
under Fisher's registered trademark ("Fisher Stove") and design patent. James
Morande became one of plaintiff's dealers. Morande formed Defendant Corporation,
which began production and sale of four models of woodburning stoves in a number
of respects remarkably similar to plaintiff's. The Plaintiff brought an action seeking
injunctive and monetary relief for infringement of its common law trademark, unfair
competition, misappropriation of confidential information, and violations of the
Lanham Act.
Issues: Whether the defendant's product is likely to be mistaken for the product of the
plaintiff and whether the similarities between the two products were functional in
nature?
Rule: It has been held that, “every product has its own separate threshold for
confusion of origin.” The greater the value of an article, the more careful a consumer
can be expected to be. As far as functional similarities are concerned, those functional
features are not the subject of a valid patent or copyright may be imitated with
impunity. Copying functional features only requires the defendants to take special
precautionary measures to ensure that the buyers are not misled by the source.
Analysis: Plaintiff’s is primarily a single purchase article, not something which a
buyer would buy on an impulse. Since the name of the manufacturer is clearly
displayed on the product, there is hardly any scope for confusion. Both the products
are only functionally similar. The functional features were not only the basics but the
design itself. The two-level top, assertedly the most distinctive feature of plaintiff's
stove, serves three functions: it creates turbulence within the stove for better
combustion; it provides two cooking surfaces of different temperatures; and it
prevents smoke from escaping when the door is opened. Thus, while the court can
sympathize with the plaintiff for losing business to imitators, this is a part of business.
Conclusion: The plaintiff was unable to prove instances of actual confusion between
his products and the products of the defendants. Moreover the similarities between the

38
two products were only functional in nature. The court found against the plaintiffs on
all counts and dismissed the complaint.

Points to Remember
➔ Bharat Glass Tube Ltd. v. Gopal Glass Works: to protect the IPR of original
design with the aim to reward the innovator for research and labour applied to
evolve a new and original design.
➔ The subject matter which is protected by design system is the application of
the design to article, which includes visual effects and the articles.
➔ Design is not registered in the abstract. They are registered as features which
are applied to an article. It is a conception, suggestion, or idea, and not an
article
➔ . A design is unregistrable only if every feature of the design is dictated by
function.
➔ Escorts Construction Equipment Ltd v. Action Construction Equipment Pvt
Ltd,
➔ Application for registration of a design can be made to the Controller of
Designs, who may then register it, provided the application is not hit by non-
registrability grounds.
➔ S.6 of the Act provides that a design may be subsequently registered in respect
of more articles comprised in that class of articles, so far as it does not extend
the period of copyright in the design beyond that arising from the previous
registration.
➔ S. 2(j) of the Designs Act, 2000 refers to the proprietor of design as the author
of the design.
➔ The Controller-General of Patents, Designs and Trade Marks is the Controller
of Designs for the purposes of Designs Act.
➔ If an original artistic work has been registered as a design under the Design
Act then the same subject matter cannot enjoy a coterminous protection under
the Copyright Act.

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➔ Section 22 provides that once a design is registered, the registered proprietor
having a copyright therein can insist that anyone committing piracy should be
restrained from doing so for the purpose of Designs Act.
➔ The remedies that are ordered for infringement of design include:
● The remedies (civil) – injunction, damages, delivery up of
infringing articles.
● The remedies (criminal) – imprisonment or fine or both.

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