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DESIGNS

MODULE 6
Purpose of this section is to impart knowledge about filing procedure of design
applications, what can be filed as design, piracy and infringement of Designs. It
also covers topics like overlap of Copyright and Design acts.

Chapter Title Page No.

1 PROCEDURE FOR FILING A DESIGN APPLICATION 2-7
2 WHAT CAN BE FILED AS A DESIGN? 8-13
3 PIRACY AND INFRINGEMENT OF DESIGN AND CASE 14-16
STUDY
4 OVERLAP OF COPYRIGHT AND DESIGN ACTS AND 17-21
CASE STUDY

DESIGNS 1.3 1
CHAPTER 1: PROCEDURE FOR FILING A
DESIGN APPLICATION
REGISTRATION OF DESIGN1
1.0 Who can be the applicant [Section-5(1)]:
As per Section 5(1) any person claiming to be the proprietor of any new or original design may
apply for registration. A proprietor may be from India or from a convention country [Section
442].
1.1 Proprietor of a new or original design [Section-2(j)]
Proprietor of a new or original design is defined under Section 2(j)3. A proprietor may be:
i. an author of design;
ii. a person for whom the design is executed after receiving the consideration;
iii. a person who has acquired the design; and
iv. a person on whom the design has devolved from the original proprietor.

In A. Pressler & Co. v. Gartside & Co design registration was obtained in respect of printed or
woven Design on textile piece goods and an action of infringement was filed. The plaintiff
claimed to be the registered proprietor of the design and hence entitled for an action of
infringement against imitation of similar design by defendant. The defense put forward was that
the registration of the design is invalid on the ground that at the date of its registration it was not
new or original having been previously published and the author of the design was not a person
in the employment of the plaintiffs and the plaintiffs did not acquire the design so as to be
entitled to apply for registration as proprietors within the meaning of Section 93 of The Patents
and Design Act, Mr. Bailey, who was the managing director of the plaintiff company, made an
ink sketch of a design that he wished to have worked out and applied to woven goods. He stated
that the instructions he gave to the weaver who was to produce the cloth in accordance with the
design were; (a) that the cloth should be of a certain quality and (b) as per previous order,
No.1780 which his firm had already given to the weaver. Having got the design with no further

1 https://indiankanoon.org/doc/796325/
2 https://indiankanoon.org/doc/1970883/
3 http://lawmin.nic.in/ld/P-ACT/2000/The%20Designs%20Act,%202000.pdf

DESIGNS 1.3 2
instructions, the weaver produced some cloth and submitted it to Mr. Bailey and he was satisfied
with it.
The weaver was not given any particular instructions with regard to any particular way in which
the sketch was to be worked out. In these circumstances, it was held that Mr. Bailey was the
author of the design. The design as registered was something which was evolved by the weaver
of the cloth and not by Mr. Bailey at all. The question whether Mr. Bailey approved of it or not
when it was made, did not make him the author of the design. If it was not Mr. Bailey’s, then
neither Mr. Bailey nor the Company of which he is managing director was the author entitled to
be registered as the proprietor of the design. Justice Farwell while deciding the validity of
Vredenburg’s registered design held that if there are two persons each of whom has produced a
similar design and each has communicated the fact of such authorship to the other, neither of
them alone is the proprietor of a new or original design and neither of them can validly register
it.

1.2 Where to apply:

A design application for registration can be filed in the Patent Office and shall be addressed to
the Controller of Design. There is a prescribed form for filing design application namely Form-1
along with the prescribed fee.
[Section 5(2)4 Form-1] The following details required to be fill-in:
 Full Name and Address of the Applicant;
 Name of the Article;
 The Class to which the Article belongs as per the III Schedule under The Design Rules,
20015;
 Address for service in India;
 Application shall be signed either by the applicant or by his authorized agent/legal
representative, which means a legal practitioner or a patent agent in India;
 Four copies of representation of the design shall be filed along with the application;

1.3 Representation sheet33 [Section-5, Rule-11, 12 & 14]:

4 https://indiankanoon.org/doc/947182/
5 http://www.wipo.int/edocs/lexdocs/laws/en/in/in025en.pdf

DESIGNS 1.3 3
• Representation means the exact representation of the article for which registration is sought;
• The representation shall be exact drawings, photographs, tracing, including computer graphics
or specimen of Design. The Controller may require a specimen of the article to be submitted at
the time of examination in a particular case;
• Photographs of an article from different view should be pasted on the representation sheet.
Representation shall be prepared on white A4 size paper (210 mm x 296.9 mm) (and not on
cardboard) of durable quality. The figure shall be placed in an upright position on the sheet. The
photograph should show the perspective view, front view, side view, top view, bottom view etc.;
• If design is to be applied to a set, the representation shall depict various arrangements in which
the design is to be applied to articles in the set;
• Where an application is filed for a design as applied to a set, whether the given articles
constitute a set or not, shall be determined by the Controller;
• In case, name or representation of living persons appears on a design, consent of such persons
may be submitted along with the application. In case of a deceased person, the consent of legal
representative may be submitted. It may be noted that non-submission of such consent may result
in office objections and resultant delay in registration. In case, the representation contains the
image or name of an imaginary person, such fact may be mentioned in the declaration on the
representation sheet;
• A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark,
word, letter, numerals should be endorsed on each representation sheet;
• Representation, which consists of a repeating surface pattern, shall show the complete pattern,
and a sufficient portion of the repeating pattern in length and width, and shall not be less than 15
cm by 10 cm in size;
• The name of applicant shall be mentioned in left hand top corner of the representation sheet;
• Total number of sheets and sheet number shall be mentioned in the right hand top corner of the
representation sheet in Arabic numerals;
• The representation sheet shall be signed and dated by the applicant/agent;
• No descriptive matter or matter denoting the components by reference letters/numerals shall be
included;
• No sectional views shall be incorporated in the representation sheet;

DESIGNS 1.3 4
• Dimensions or engineering symbols etc. shall not be used in the representation sheet. The
representation is not to be regarded as engineering drawing of the article. The relevant parameter
is the shape and not the size of the article;
• Where Trade Marks, words, letters or numerals are not the essence of the design, they shall be
removed from the representations or specimens. Where they are essence of the design, a
disclaimer shall be given in the representation sheet disclaiming any right to their exclusive use;
• No extraneous matter or background shall appear in the representation sheet. A background is
considered neutral as long as the design is clearly visible in it;
• Dotted lines may be used in representation to indicate those elements of the article for which no
protection is sought. Dotted lines identify elements which are not part of the claimed design. In
such a case, features of design for which protection is sought must be shown in solid lines in the
drawing. For instance, an ornamentation or surface pattern on an article can be registered. In
such a case, the representation shall contain a solid line drawing for the claimed ornamentation
or surface pattern, and dotted line for rest of the article;
• When color combination is the essence of a design as applied to an article, the same shall be
clearly depicted in the representation;
• Coloring may be used, on a black and white drawing, to highlight only those features of the
design for which protection is sought. In such cases, it shall be clearly indicated in the novelty
statement that the claim is restricted only to the portions depicted by coloring and the colors so
given are not part of the design;
• Representations shall ordinarily be prepared in one format e.g. drawings, graphics or
photographs etc. However, for better clarity, if the applicant so desires, a representation may be
given in different formats;
• The applicant shall keep in mind the requirements of an Examiner to visualize the design and
distinguish the same from any probable prior art. The number of views required in a
representation sheet may be decided in light of this requirement.

1.4 If anyone wants to get his design registered in different classes then separate Application is
required to be filed for registering a design in more than one class. [Section 5(3)]

DESIGNS 1.3 5
1.5 Classification:
For the purpose of application for registration of Design, articles are classified into 32 Classes
which includes a miscellaneous class 99. The Classes are described in Third Schedule of The
Design Rules, 2001. In case of any doubt as to the Class in which the article would fall, the
Controller will decide the question. Where a design application is for an article with multiple
utilities, the application may be made with depiction of an article in any one or more of the
utility. For instance, in case of a design of pen-cum-torch, the applicant is at liberty to apply in
the class relating to pen, torch and pen-torch and file two applications in different classes for
better protection.

1.6 Statement of novelty: [Rule 12]

The applicant may endorse on the application and each of the representation, a brief statement of
the novelty he claims for his design. The Controller may also in some cases ask the applicant to
provide a statement of novelty claimed on the representation sheet. Some of the examples of
novelty endorsed are as under:
• The novelty resides in the ornamental surface pattern of the bottle as depicted;
• The novelty resides in the butterfly knob of the Casserole;
• The novelty resides in the shape of the ash-tray etc.
If in a design registration no claim or statement of novelty is specifically stated the recording will
cover the whole of the design and no exclusive right could be claimed in any individual part,
shape or pattern.

1.7 Types of Design applications:

• Ordinary Application - An application which does not claim priority. Thus, the application is
filed with priority in India. [Section 5]
• Reciprocity Application – An application which claims priority from an already filed
application in a Convention Country and being filed in India within six months from the date of
filing in Convention Country.
The period of six months is non-extendable. [Section 44, Rule 2(d)] The requirement for filing
of application for registration of reciprocity application is the same as an ordinary application

DESIGNS 1.3 6
under the Act except for the following requirement [Rule 15] i.e.:

• Priority document: A reciprocity application shall be accompanied by a certified copy of the

design application filed in the Convention Country; and
• If the priority document was not filed with the application, the same may be filed within an
extendable period of three months. Extension may be sought by filing Form 18 along with
prescribed fee.

DESIGNS 1.3 7
CHAPTER 2: WHAT CAN BE FILED AS A
DESIGN?
In order to be protectable, it is necessary for a Design to fulfil the following requirements:
(i) It is covered under the definition of Design; and
(ii) It is not a prohibited design as per Section-4 of the Act.

2.1 Definition of Design:

Section 2 (d) of The Design Act, 20006 defines Design as under:
d) "design" means only the features of shape, configuration, pattern, ornament or composition of
lines of colors 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 as defined in Clause (v) of Sub-section
(1) of Section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as
defined in Section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in
clause) of Section 2 of the Copyright Act, 1957 (14 of 1957);

Essential features of a design are:

(a) Feature - of shape, configuration, pattern, ornament or composition of lines or colors
applied to any article;
(b) The article may be in two dimensional or three dimensional form;
(c) Feature applied to an article by any industrial process or means, whether manual,
mechanical or chemical separate or combined;
(d) Finished article which has appeal to the eye;
(e) It does not relate to feature which are dictated by function i.e. mere mode or principle of
construction or anything which is in substance a mere mechanical device; and

6 https://indiankanoon.org/doc/618466/

DESIGNS 1.3 8
 (f) Does not include a ‘trade mark’ or a ‘property mark’ or any ‘artistic work’ as defined
under The Trade and Merchandise Marks Act, 1958, Indian Penal Code 1860 and The
Copyright Act 1957 respectively.
The essence of design protection is the protection of the appearance of an article. The protection
of appearance depends on feature applied to an article such as shape, surface pattern,
ornamentation, configuration, texture etc. The feature applied to an article imparts an aesthetic
eye appeal enhancing the value and marketability of the product/article making it a registrable
design. If the feature is merely functional in nature the same would be incapable of any design
protection.

2.2 A design may be three-dimensional or two-dimensional. Three dimensional - shape and

configuration e.g. shape of a bottle, Kettle, chair etc. Two dimensional - a pattern or ornament
e.g. pattern on fabric, wallpaper etc. A piece of paper on which a pattern is drawn cannot be a
subject matter for registration of design. Label put on a carton to be used as container for the
goods can never amount to design within the meaning of Section 2(3) of The Design Act, 1911.
The paper used for printing or canvas used for painting have no function other than to carry the
printing or painting. Therefore, they are not registrable.

In Re Littlewoods Pools Ltd’s Application (1949) 66 RPC 309 – application was made to
register a form of football coupon consisting of a rectangular sheet of paper on which a pattern
was formed by straight lines, the spaces between were filled with literary matter. Wynn-Parry J
in holding that the paper was not an article stated that as the function of the paper was “solely to
carry the imprint of the design” and did not have any other function it was not an “article”,
within the meaning of the Act. It would appear to follow that paper or canvass could be
considered an article. However, to be registrable an article must have some function other than
that of merely carrying the design. A drawing or painting on ordinary paper or canvas are not the
same as wallpaper or wrapping paper or textiles. The wallpaper, wrapping paper or textiles all
perform a function other than just being a vehicle for the design. For example the wallpaper is
used for sticking on the wall to either enhance the decor of a room or for the more practical
purpose of covering bangs or faults in the wall surface. Textile material is used for making up a

DESIGNS 1.3 9
variety of articles e.g. curtains, clothing, bed linen etc. These aspects make the article is
registrable.

2.4 Definition of an article:

Section 2(a) of The Design Act, 2000 defines article as under:
(a) “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.
Rule 2(e) of The Design, Rule 2001 defines a set of articles.
“(e) “Set” means a number of articles of the same general character ordinarily sold together or
intended to be used together, all bearing the same design, with or without modification not sufficient to
alter the character or substantially to affect the identity thereof.”

The phrase “capable of being made and sold separately” was not in The Design Act, 19117. This phrase
was added in The Design Act, 2000 to enlarge the definition of article and design.

In Marico Ltd. v/s Raj Oil Mills The Hon’ble Court observed as under: The definition of "article" under
the Act as reproduced above read with the definition of "design" are different from the provision of the
English statute as reproduced above and importantly, the following words "includes any part of an
article capable of being made and sold separately", whereas, in the English statute the words are "if
that part is to be 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 English Law is silent with
regard to the above words of the Act. The repealed Act 1911 defines "article" means any article of
manufacture and any substance artificial or natural or partly artificial or partly natural. The above
words "capable of being made and sold disjointedly" were not there earlier. Therefore, as noted in the
objects and reasons and as intended to enlarge the definition of "article" and "design" above words
have been inserted. These words are clear and unambiguous.
The phrase as inserted in the Act, now even covers "any part of an article capable of being made and
sold separately". Apart from any article of manufacture, therefore, we have no doubt that the words
inserted in the Act have a wide meaning and are not to be restricted to exclude an article and or even
the part of an article which is "capable of being made and sold separately", as contended and as held by

7 http://indiaip.com/product_image/1399278119.pdf

DESIGNS 1.3 10
the learned Judge. There is no question of giving the constrained meaning to exclude finished design
article like cap in question which admittedly and factually were and are made separately. These caps
are capable of being sold separately.”
Further, while deciding the meaning of the article the actual intention at the time of the design
registration is seen. The article in question, a face of an electric meter, was found not to be registrable.
Therefore, as per the definition in the Act an article must have two ingredients to be eligible for design
registration and these are:
- it must be “an article of manufacture” ;and
- it must be “capable of being made and sold separately”.
Thus, an article must have a purpose other than merely carrying the design meaning thereby the article
must be capable of being sold even if it does not carry the design applied to it. An article of manufacture
or a substance had to have some purpose other than that of merely carrying the ornament.

2.5 Applied to an article:

Design is always applied to an “article”, therefore it is article specific. An application for a design
registration shall be made in a prescribed Form-1 which clearly says that provide the name of the article
on which the design is sought to be applied. The Hon’ble Supreme Court in Bharat Glass case held that
the design of the Roller though being prior registered and prior published will not invalidate the design
registration in India which was applied on the glass sheet. The court held as under:
“Therefore, the concept of design is that a particular figure conceived by its designer in his mind and it
is reproduced in some identifiable manner and it is sought to be applied to an article. Therefore,
whenever registration is required then those configurations have to be chosen for registration to be
reproduced in any article. The idea is that the design has to be registered which is sought to be
reproduced on any article. Therefore, both the things are required to go together, i.e. the design and the
design which is to be applied to an article. In the present case, the design has been reproduced in the
article like glass which is registered. This could have been registered with resin or leather. Therefore,
for registration of a particular configuration or particular shape of thing which is sought to be
reproduced on a particular article has to be applied. As in the present case the design sought to be
reproduced on a glass-sheet has been registered and there is no evidence to show that this design was
registered earlier to be reproduced on glass in India or any other part of the country or in Germany or

DESIGNS 1.3 11
even for that matter in United Kingdom, therefore, it is for the first time registered in India which is new
and original design which is to be reproduced on glass sheet.
Thus, a known design if applied to a new article can impart originality and would be considered as
registrable design. For example, the design of a metal band called the "Novelty band," intended to attach
a watch to the wrist, was similar in shape and configuration to a bracelet previously manufactured for
ornamental purpose, it was held that though the shape of the "Novelty" band by itself could not be said
to be new and original, the application of it to a watch to be worn on the wrist was considered as original
design.

2.6 Eye Appeal to an article:

The definition of the design has a categorical reference that the feature in terms of shape, alignment or
pattern on the finished article must appeal to and are judged solely by the eye. Thus, the feature applied
to an article should be appealing to the eye. Hence all the features are not registrable Design only those
features which are appealing to the eyes are registrable Design. “Eye appeal” is a technical phrase which
must be distinguished from the more general “visual appeal”, features which in the finished articles
appear to and are judged solely by eye”.

2.7 Eye Appeal of a prospective purchaser:

In determining whether the features in question had eye appeal, the Court adopted the mantle of the
prospective purchaser of the article to which the design had been applied. The design was not viewed
through the eyes of an expert in the field. The question of eye appeal came up for consideration in
Interlego A.G. v. Tyco Industries Inc. [1988] 16 R.P.C. 343.
In that their Lordships have laid down important test in the matter of visual appeal of the eye. It was
observed as follows:
“In relation, however, to an assessment of whether a particular shape or configuration satisfies the
former and positive part of the definition, the fact that an important part of the very purpose of the
finished article is to appeal to the eye cannot be ignored. That factor was one which was conspicuously
absent from the articles upon which the courts were required to adjudicate in the cases of Tecalemit Ltd.
v. Ewarts Ltd. (1927) 44 R.P.C. 503, Stenor and Amp and in the more recent Irish case of Allibert S.A. v.
O'Connor [1981] F.S.R. 613, in all of which the claim to registration failed. It was one which was

DESIGNS 1.3 12
present in the case of Kestos where the claim to the validity of the design succeeded. It is present in the
instant case. One starts with the expectation of eye-appeal, for part of the very purpose of the article is
to have an eye-appeal.

2.8 Design with no eye appeal is not a registrable design:

A drawing indicating a method of construction which can only be understood and visualized only
by an eye trained in the mechanical subjects cannot be a registrable design. The drawings which
are not perceivable by the eye of an ordinary person and which can only be perceived by an
Engineer or a technician are not registrable Design.

DESIGNS 1.3 13
CHAPTER 3: PIRACY AND
INFRINGEMENT OF DESIGN

3.1 Infringement of Design

It is illegal to apply a registered design or a deceitful or understandable imitation of such,

to an article or to ingress, publish or expose an article to which such a design has been applied in
the same class of articles in which the design is registered, without authorization from the
registered owner. Available recourse includes filing suit to recover a nominal sum from the
infringer as a contract debt or seeking damages and an injunction against misuse of the design.

Not every resemblance is applicable and imitation does not mean duplication. An obvious
imitation is one which immediately strikes one as being so like that the original registered design
as to be almost indistinguishable. In contrast, the word ‘fraudulent’ presupposes knowledge of
the registered design.

In order to ascertain infringement, the two merchandises need not be placed side by side,
but rather examined from the point of view of a consumer with average knowledge and imperfect
recollection. The main consideration is whether the broad features of shape, configuration and
pattern are similar to one another. In some of cases courts may also endeavor to ascertain
substantial differences. Interestingly, the Delhi High Court and the Calcutta High Court are at
variance on whether the registered proprietor of a design can institute a suit against another
registrant; the Delhi High Court takes the vision that there is no bar.

All grounds available to a person seeking cancellation may be adopted as a defense in

infringement chronicles.

In Steelbird v Gambhir (2014) the Delhi High Court upheld the defendants’ plea that the
design was neither new nor original and thus not eligible for protection and vacated the interim
injunction. The Madras High Court has observed that the remedies available to a registered rights
holder, the defense available to the opposing party and the nature of the available reliefs are not
evidently designated in the Design Act (MC Jayasingh v Mishra Dhatu, 2014).

DESIGNS 1.3 14
3.2 Piracy of Design

Piracy of a design means the application of a design or its imitation to any article belonging to
class of articles in which the design has been registered for the purpose of sale or importation of
such articles without the written consent of the registered proprietor.

Publishing such articles or exposing terms for sale with knowledge of the unauthorized
application of the design, also considered as piracy of the design.

Damages

According to Section 22(2) (b) of the Design Act, 2000 the proprietor of a design has the right to
bring a suit for recovery of indemnities. A practical method of assessing damages is to assess
them on the basis of a reasonable royalty based on all infringing articles made and sold by the
defendant. Alternatively damages may be assessed to compensate plaintiff for the loss of sales
suffered by him on account of the sale of the infringing articles by the defendant or other damage
caused to him thereby, e.g. reduction in price. However, the plaintiff cannot recover damages or
penalty for infringement if he has failed to mark his articles in the prescribed manner denoting
that the design was registered, unless he shows that he took all steps to ensure the marking of the
article.

Passing off under Indian design law

Courts have long debated whether the common law remedy of passing off is available for
Designs or not. In 1983, the Delhi High Court held that since no express provision for passing
off is mentioned, unlike in trademark legislation, it couldn’t be claimed by a petitioner. Much
later, the court in obiter took the view that rights in registered Design are set out in the Design
Act itself, whereas passing off is established under common law. As a result, the rights are
distinct and different. It is observed that the absence of a prompt endowment does not mean that
the passing off is not available under design law.

DESIGNS 1.3 15
3.3 CASE LAWS RELATED TO DESIGN INFRINGEMENT IN INDIAN SCENARIO.

In the case of Dabur India Ltd. v. Rajesh Kumar and Ors8 [2008] the Delhi high court has
raised the questions against the frivolous Design litigation. The Court in the case gave
due regards to all the aspects appended to the use of the bottle's design in question
beyond the tenets of design law, the Court has taken into consideration practicalities like.
In Marico v Raj Oil9 (2008), the court held that caps were articles as defined under the
Design Act and were "capable of being made and sold separately". However, an
injunction in this instance was denied, since the conflicting caps were dissimilar.
In Troikaa v Pro Labs10 (2008), the defendant was restrained from manufacturing,
marketing and using tablets that were similar in shape and color to the plaintiff's tablet, as
it had registered the shape and configuration under the Design Act.

8 https://indiankanoon.org/doc/145573/
9 https://indiankanoon.org/doc/759618/
10 https://indiankanoon.org/doc/1901149/

DESIGNS 1.3 16
CHAPTER 4: OVERLAP OF COPYRIGHT
AND DESIGN ACTS
The intersection between copyright and Design is an intricate area of law. While the Design Act
confers protection for a limited period, the Copyright Act grants a higher level of protection to
works such as paintings and sculptures. To prevent any overlap, the Design Act explicitly
excludes artistic works. Further, the Copyright Act provides that copyright shall not subsist in
any design which is registered under the Design Act. Any considered subject matter that is
capable of being registered under the Design Act still is not, will lose copyright protection as
soon as any article to which the design has been applied has been reproduced more than 50 times
through an industrial process. This provision not only dampens parties from availing protection
under both acts, but also ensures that anyone attempting to do so has both sets of rights
extinguished.

Trademarks and Design are essentially different rights, in the sense that Design are more
concerned with an article’s appearance, while trademarks relate to the origin of the goods and
services. While the Design Act expressly excludes trademarks, trademark law includes the shape
of goods within the ambit of a trademark, even though shapes which give substantial value to the
goods are excluded from registrability. It thus cannot be said that a design, which includes the
shape of goods, can never be used as a trademark or not protected under trademark law.

4.1 Case law

In Samsonite v Vijay Sales11 (1998) the court held that copyright could not be claimed in
a set of drawings and vacated the injunction granted against the defendants, since the
suitcases at issue were not registered under the Design Act and had been reproduced over
50 times.
An injunction had been denied in Taparia Tools v Ambica Overseas12 (2005) on the
ground that novelty had been claimed only in the shape and configuration and not in the
scale marking on the wrenches. The court found that Design similar to the plaintiff’s

11 https://indiankanoon.org/docfragment/279539/?formInput=vip
12 https://indiankanoon.org/doc/1666328/

DESIGNS 1.3 17
 wrenches and pliers were present on the market before the design’s registration and that
the shape and configuration of the design were dictated by function.
In Marico v Raj Oil (2008) the court held that caps were articles as defined under the
Design Act and were “capable of being made and sold separately”. However, an
injunction in this instance was refused, since the rival caps were dissimilar.
In Troikaa v Pro Labs (2008) the defendant was restrained from manufacturing,
marketing and using tablets that were similar in shape and color to the plaintiff’s tablet,
as it had registered the shape and structure under the Design Act.
In Mattel v Jayant Agarwalla 13(2008) the court held that the Scrabble board was an
article capable of design protection, but since more than 50 copies had been made and the
design was not registered, copyright protection for the design could not be claimed by the
plaintiff.
In Whirlpool v Videocon 14(2014) the court found that the design of the plaintiff’s
washing machines was distinct and had garnered substantial goodwill in the market.
Observing that the definition of a ‘trademark’ includes the shape of goods, the court
allowed the plaintiff’s claim of design infringement and passing off against the
defendant.
In Jagdamba v Tristar 15(2014) the appellate court reversed the trial court’s decision with
regard to industrial drawings of the plaintiff’s machine and major components, holding
that the drawing was not entitled to copyright protection as more than 50 products had
been manufactured by applying the drawings to the machine.

Indian copyright and design laws have a curious and blurry overlap, the effect of which is most
obvious in the applied art industry. A work created as a design for a commercial product can lead
to all types of legal queries including questions on the intent with which the work was created or
whether one’s design’s reproduction is limited to 50 copies or has exceeded that threshold. If
you’re looking for intellectual property protection in this realm, a good place to start is the
Design Act, 2000. The definition of a design specifically excludes an artistic work, which is
capable of acquiring copyright protection. Protection under copyright law lasts much longer than

13 https://indiankanoon.org/doc/107853771/
14 https://indiankanoon.org/doc/188051985/
15 https://indiankanoon.org/doc/131950565/

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design law and some judges have reasoned that if a piece of art purely translates an artist’s vision
to canvas, then it is an artistic work and merits longer (copyright) protection. If your work falls
in the latter category, then protection must be sought by registering the design under the Design
Act. But notably, if someone misses out on statutory design protection, the copyright statute (the
Copyright Act, 1957) offers a respite, albeit a limited one—section 15(2) protects copyright in
such a design until 50 reproductions of the design are made by an industrial process. Upon the
making of the 51st reproduction, copyright ceases.

4.2 Case study

Company ‘A’ creates some original, artistic patterns and uses these as prints for upholstery
fabrics. Company ‘B’, also in the business of manufacturing and selling upholstery, comes out
with similar prints on its fabrics. This leads ‘A’ to allege copyright infringement and passing off;
‘B’ counters that the works of ‘A’ are not artistic works that can be worthy of copyright
protection, but rather Design it ought to have registered under the Design Act. These were the
exact facts in the case of Microfibres v Girdhar & Co16 in 2009. The Delhi High Court agreed
that the fabrics of ‘B’ did incorporate Design founded on artistic patterns belonging to ‘A’.
However, the drawings of ‘A’ were meant for commercial exploitation and therefore qualified
not for copyright, but design protection. In the absence of a design registration, ‘A’ was not
entitled to any relief. The court reasoned that artistic works created for independent existence
could be differentiated from works created for application on another article by an industrial
process. The object of making a work was significant for determining the nature of protection
applicable to it. A painting by a well-known painter had independent existence and was
copyrightable. Drawings created only for application to fabric had no reason for independent
existence and were allotted as Design. On appeal, the division bench (comprising two judges)
held that an artist’s objective at the time of creating an artistic work was indecipherable and need
not be considered. Copyright would remain in an original artistic work (say an Andy Warhol
painting) for its entire term and a derivative of such work for the purpose of industrial
application (say an image optimized for printing the Warhol image on coasters) would qualify
for independent IP protection—in this case, as a design under the Design Act. The Microfibers
judgment was viewed as “harmonizing the Copyright and the Design Act in accordance with the

16 https://indiankanoon.org/doc/1210059/

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legislative intent” and reiterated soon after by the same court in Vishvajeet Sharma v State
case17.

The interplay between copyright and Design in India

In May 2014, in Jagdamba Impex v Tristar Products18, before the Delhi court, Tristar claimed
the copyright over 2D industrial drawings used commercially for manufacturing 3D equipment
to make combs. Jagdamba began manufacturing combs using identical machines which were
later revealed to be based on Tristar’s industrial drawings. In the first instance, Tristar succeeded
in restraining Jagdamba from its copyright infringing act, but on appeal the court observed that
industrial drawings used to produce combs had no independent existence and therefore did not
qualify as artistic works under the copyright statute. Tristar’s entitlement to copyright protection
under section 15(2) was lost once its drawings were used to produce more than 50 combs by an
industrial process and since the drawings were not registered as Design, no cause of action
remained against Jagdamba. Yet when Tristar filed a special leave petition before the Indian
Supreme Court, the high court’s observation on exhaustion of copyright protection vis-à-vis
drawings used to manufacture more than 50 articles was set aside. The trial court was directed to
independently examine the issue and that decision is still awaited. Almost concurrently, the
Bombay High Court expressed having “gravest misgivings” about the applicability of the
Jagdamba decision and took a divergent view in Photo quip India v Delhi Photo Store. Here the
plaintiff created machine drawings used to make pilot moulds from which flash lights were
manufactured and asserted copyright in both the drawings and moulds. It was alleged that the
defendant’s flash lights infringed the copyright in its drawings and the court agreed. The
plaintiff’s drawings were upheld as artistic works capable of copyright protection. It was
impossible for the defendant to reproduce the articles without reverse-engineering them and
preparing illicit drawings; these infringed the plaintiff’s copyright. In a related development, a
writ petition challenging section 15(2) of the Copyright Act is pending before the Delhi High
Court (Mukul Goyal v Union of India). Although its full details are not in the public domain, the
challenge is reportedly based on article 14 of the Constitution, which guarantees citizens the
right to equality. This petition urges that section 15(2) arbitrarily singles out the applied art

17 https://indiankanoon.org/doc/115584881/
18 https://indiankanoon.org/doc/131950565/

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industry (as opposed to other creative industries) and the threshold on reproductions, i.e., 50, is
arbitrary for it is based on no logical consideration.

Disclaimer: The study material mentioned in the module is for academics purpose to
provide information and understanding; it should not be interpreted as a legal advice or opinion.

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