Q-1 Explain in detail which designs are prohibited from

registration under the Designs Act

Ans: Introduction
Under the Designs Act, certain types of designs are prohibited from
registration to ensure that only genuinely new, original, and aesthetically
valuable designs are protected. The Designs Act, 2000 of India outlines
the legal framework for the protection of designs, including the criteria for
registration and the grounds on which a design can be refused
registration. Below are the key points regarding designs that are
prohibited from registration under the Designs Act, with reference to
relevant sections:
Section 2(d): Definition of "Design"
For a design to be eligible for registration, it must comply with the
definition provided under Section 2(d). A "design" is defined as the
features of shape, configuration, pattern, ornament, or composition of
lines or colors applied to any article. It must be applied by any industrial
process, whether manual, mechanical, or chemical, separate or combined,
and must be judged solely by the eye. If a design does not meet this
definition, it is not eligible for registration.
1. Section 4: Prohibition of Registration of Certain Designs
This section explicitly states the grounds on which a design cannot be
registered. A design shall not be registered if:
 Section 4(a): Not New or Original

Definition of Novelty and Originality:

 A design is considered "new" if it has not been previously
disclosed to the public, either through publication, use, or any
other means, before the date of application or priority date.
"Originality" refers to the uniqueness of the design, meaning it
must be the result of the designer's own intellectual effort and
not a mere replication or imitation of existing designs.
 The principle of novelty and originality ensures that only
designs that contribute something new to the public domain
are granted protection. This encourages innovation and
prevents monopolization of common design elements.
Examples:
 If an industrial designer creates a new pattern for a fabric that
has never been seen before, it is considered new. However, if
the pattern closely resembles an existing one, even with slight
modifications, it may not be deemed original and therefore not
registrable.
 Section 4(a) states that a design that is not new or original cannot
be registered. A design is considered not new if it has been
disclosed to the public anywhere in India or in any other country by
publication in tangible form, or by use, or in any other way prior to
the filing date or priority date of the application.

 Section 4(b): Prior Publication

What Constitutes Prior Publication:
 A design is considered published if it has been made available
to the public in any form—printed publications, digital media,
exhibitions, or through actual use. The key aspect is that the
design must be accessible to the public before the filing date
of the design application.
Impact of Global Publication:
 The Designs Act considers both national and international
publications. Even if a design has not been published in India
but has been disclosed elsewhere in the world, it cannot be
registered in India.
 This provision ensures that the same design is not protected
by multiple registrations across jurisdictions, which could lead
to legal conflicts and undermine the purpose of design
protection.

 Section 4(c): Not Significantly Distinguishable

 A design must have a distinctive character that clearly
differentiates it from existing designs. The distinction must be
substantial enough to be noticed by the average consumer,
making it apparent that the design is not just a minor variation
of an already known design.
 This provision prevents the registration of designs that could
confuse consumers or dilute the value of genuinely innovative
designs. It ensures that protection is only granted to designs
that stand out due to their uniqueness.
 Example: A design for a smartphone case that only changes
the color of an existing design without altering the shape,
pattern, or overall appearance may not be considered
significantly distinguishable and hence may be denied
registration.

 Section 4(d): Scandalous or Obscene Matter

 A design is considered scandalous or obscene if it offends public decency or

morals. This includes designs that depict or suggest vulgar, profane, or offensive
images, symbols, or language.
  The law seeks to ensure that registered designs adhere to the standards of public
morality and do not promote or condone behavior or imagery that is socially
unacceptable.
Example:
A design that incorporates offensive language or explicit imagery would be
considered obscene and would be prohibited from registration. Similarly, a design that
might incite hatred or violence could be considered scandalous.

 Section 4(e): Contravention of Law

 Any design that contravenes existing laws cannot be registered.
This includes designs that infringe on existing intellectual
property rights, such as copyrights, trademarks, or patents, or
violate any other legal provisions.
 This provision ensures that the registration of designs does not
conflict with other legal rights or obligations, maintaining the
integrity and coherence of the legal system.
 Examples: If a design incorporates elements that are copyrighted
by another party without permission, such as a famous logo or a
character, it would contravene copyright law and be ineligible for
registration. Similarly, a design that promotes illegal activity, like
counterfeiting, would also be barred.
Section 19: Cancellation of Registration
Grounds for Cancellation:
 Under Section 19, any interested party can seek the cancellation of
a registered design if it is found to violate any of the prohibitions in
Section 4. This provides a post-registration mechanism to ensure
that only valid designs remain protected.
 Example: If a design is registered and later evidence surfaces that it
was published in a foreign journal prior to the filing date, a
competitor may file for its cancellation under Section 19.
Case Law:
1. Dart Industries Inc. & Ors. v. Techno Plast & Ors. (2019)
 Citation: CS (COMM) 1143/2018
 Court: Delhi High Court
 Summary:
o In this case, the plaintiff, Dart Industries Inc., sought to
enforce its registered design for a plastic container against the
defendant, Techno Plast, which had allegedly copied the
design. The defendant argued that the design was not new or
original and should not have been registered under Section
4(a) of the Designs Act.
 o Key Holding:
 The court held that for a design to be "new or original"
under Section 4(a), it must be substantially different
from known designs. The court found that the plaintiff's
design was indeed novel and not a mere trade variant.
The court emphasized that even minor modifications
could make a design registrable if they contribute to a
distinctive appearance.
 Significance:
o This case reaffirmed the importance of novelty and originality
in design registration and clarified that minor, yet distinctive
changes, can make a design eligible for registration.
2. Gopal Glass Works Ltd. v. Assistant Controller of Patents and
Designs & Ors. (2006)
 Citation: 2006 (33) PTC 434 (Cal)
 Court: Calcutta High Court
 Summary:
o Gopal Glass Works Ltd. had a registered design for glass
sheets with a particular pattern. The company sought to
prevent another party from using a similar design, claiming
infringement. The defendant challenged the validity of the
design registration, arguing that it lacked novelty and was not
significantly distinguishable from existing designs.
o Key Holding:
 The Calcutta High Court found that the design registered
by Gopal Glass Works Ltd. was not new or original and
was substantially similar to prior designs that were
already known in the market. The court ruled in favor of
the defendant, holding that the design registration
should be canceled under Section 19 on the grounds
that it did not meet the requirements of Section 4(a) and
4(c).
 Significance:
o This case is significant as it illustrates the application of
Section 4 in rejecting a design that lacks novelty and
distinctiveness, reinforcing the principle that designs must be
substantially unique to qualify for protection.
Conclusion
Designs that are not new or original, have been previously published or
used, are not significantly distinct, contain scandalous or obscene matter,
or contravene any law are prohibited from registration under the Designs
Act, 2000. These restrictions ensure that only novel and original designs
that are suitable for public consumption and do not violate legal or moral
standards are protected under the law.