26th Feb:

Design Registration and Rights

●​ Mandatory Disclosure & Novelty: Design law, like other intellectual property (IP),
mandates the disclosure of a new idea. This involves transforming an existing design into
a new, attractive feature. The intellectual input in creating aesthetic value that competes
with common designs is recognized by law.
●​ Legal Status and Due Diligence: A registration certificate serves as evidence of a design.
When a client alleges design copying, the first step is to verify registration. This
establishes the client's legal standing to sue.
●​ Rights Conferred by Registration:
○​ Assertion of Right: Registration allows the owner to assert their right over the
design.
○​ Monopoly Period: A registered design grants a 10-year monopoly, which can be
renewed for an additional 5 years. This renewal is a business decision based on
the design's sustained commercial viability.
○​ Right to Sue: Without valid registration, one cannot assert rights for the 10-year
period, renew the right, or take action against infringement.
●​ Eligibility Criteria: The law establishes eligibility criteria for design registration, which,
if met, grants a right for 10+5 years.
●​ Application to Articles: A design must be applied to an article, enhancing its commercial
value. The "statement of novelty" is a crucial legal document drafted by lawyers to define
the client's claim and protect against future infringement or cancellation claims.
●​ Public Domain: After the 15-year protection period lapses, the design falls into the public
domain, meaning it becomes accessible to all without needing permission. This is part of
the social contract where the IP owner discloses the design in exchange for a limited
monopoly.
●​ Commercialization and Sufficient Disclosure: Design is driven by commercial intent; it's
meant to be applied in the industry. If a registered design is not commercialized, it can be
 grounds for cancellation. It's crucial that what is being sold is what was registered; any
changes must be reported to the registry.

Infringement, Renewal, and Cancellation

●​ Basis for Infringement Claim: A registered design provides the primary basis for an
infringement claim as the registrant is considered the first mover in the market.
●​ Renewal (Pattern Style): A design's novelty can be the basis for a 5-year monopoly
extension. The law questions whether a design should be assertable after 25 years if it
re-enters the market and still holds commercial value, highlighting the balance between
innovator rights and public access.
●​ Cancellation: A registered design can be challenged for its validity and potentially
canceled if evidence shows the claim was fraudulent (e.g., the design was not novel or
was previously known). The design office itself doesn't typically initiate cancellation; it
arises when new evidence is brought forth.
●​ Restoration of Lapsed Design: A unique feature of design law is the ability to restore a
lapsed design. If a design registration is not renewed after the initial 10 years, it normally
falls into the public domain. However, Section 12(2) allows the owner to apply for
restoration within a specific period (e.g., before the 11th year ends for the remaining 4
years of the potential 5-year extension), clarifying that the design was not abandoned.
This underscores the law's intent to protect the proprietor and allow full utilization of the
15-year term.

International Context and Agreements

●​ Globalization and TRIPS: The TRIPS (Trade-Related Aspects of Intellectual Property

Rights) Agreement, part of the WTO framework, emerged in the 1990s, shifting IP
towards a trade-focused perspective and establishing minimum standards for protection.
●​ Minimum Standards: TRIPS set a floor, not a ceiling, for IP protection (e.g., 20 years for
patents). Countries can offer stronger protection but must meet these minimums.
●​ TRIPS Compliance and National Law: India, as a developing country, was given a
transition period (1995-2005) to align its IP laws with TRIPS. The Designs Act of 2000
reflects this update from the earlier 1911 Act.
 ●​ Section 44 and Reciprocity: Section 44 of the Designs Act addresses global agreements
and the principle of reciprocity. If two countries have a reciprocal agreement, a design
registered in one country can claim priority in the other based on the initial registration
date. This fuses national and international law, emphasizing the importance of
registration for evidentiary purposes globally.
●​ Classification of Goods: Designs are registered for specific classes of goods. India has
adopted an international classification system for uniformity. A separate application is
needed if the same design is to be applied to different classes of goods.

Conditions for Design Subsistence & Key Definitions

●​ Procedural Compliance: Filing the design application correctly is essential.

●​ New or Original: A design qualifies for registration if it is new (not previously known
worldwide) or original. "Original" here means that even if the design concept is known,
its specific application to an article is novel.
●​ Not Disclosed to the Public: The design should not have been previously disclosed to the
public anywhere. Prior disclosure or publication can be grounds for cancellation.
●​ Distinguishable: The design must be distinguishable from known designs or
combinations of known designs.
●​ Not Scandalous or Obscene: The design must not contain scandalous or obscene matter,
nor should its use be contrary to public order or morality. Defining these terms can be
challenging due to cultural differences and is often a matter of public policy and judicial
interpretation.
●​ No Common Law Design Protection: Registration is mandatory; there is no protection for
"common law" or unregistered designs.

Specific Examples Discussed

●​ Book Jackets: The discussion on book jackets highlights the distinction between design
law and copyright. While a book jacket has aesthetic elements and informs about the
book, its primary commercial value is tied to the book itself. If a book jacket lacks an
independent commercial identity separable from the book, it is more likely to be
protected by copyright rather than design law. Design law seeks to protect designs that
 have an individual character and can be commercially viable as applied to an article. The
decision to pursue copyright over design protection can also be a strategic business
choice, considering the longer protection term copyright might offer for artistic elements.
●​ Tree-Shaped Lamps: A lamp designed to look like a tree illustrates the concept of
applying a known design (a tree) to an article (a lamp) in a novel way to create a new
aesthetic and functional product. The novelty lies in the application and the resulting
luminescent effect. To protect such a design, the statement of novelty must clearly
identify the unique features (shape, pattern, effect) that distinguish it from other lamps.

Project and Assignment Related Points

●​ Students are to determine project items and use the information to develop their projects.
●​ The project involves intelligently drafting a "statement of novelty" for a client's design.
●​ Students need to research the real owner of a design (business entity, commissioned
designer, etc.) for their projects.
●​ Understanding the classification of goods for the chosen design/article is important for
the registration application.

March 5, 2024

Course Introduction and Design Law Fundamentals

●​ Design Law Evolution: The class began with a discussion on the evolution of design law
in India, highlighting the transition from earlier legislation to the Designs Act of 2000. It
was noted that traditionally, courts knew about general IP but not specifically design law,
leading to confusion.
●​ Specialization in IP: Intellectual Property (IP) was not always a compulsory course but
has become so due to its increasing importance in commercial and international disputes.
India's National IP Policy emerged in 2015, with a focus on innovation, creativity, and
entrepreneurship.
●​ Common Designs vs. Novel Designs: A key distinction was made between "common
designs" (generic, accessible novelty that shouldn't be monopolized) and "novel designs."
The example of a "shoe is a shoe is a shoe" illustrated that basic articles and their
common forms are in the public domain. To claim design protection, one must establish
specialized novelty.
●​ Copyright in Designs vs. Copyright Act: Section 2(c) of the Designs Act defines
"copyright" in the context of designs as the exclusive right to apply a registered design to
an article in a specific class. This is different from copyright under the Copyright Act,
which protects original works of authorship. Design protection is linked to the industrial
production and sale of articles bearing the design.
●​ Application to an Article: A design must be applied to an "article of manufacture" to be
registrable. This means buildings and structures are generally excluded. The article must
be capable of being made and sold separately.​

○​ The "capable of being made and sold separately" clause was debated, with the
Marico oil cap example illustrating that technical capability to remove and sell
separately isn't the sole determinant if the primary business isn't selling that part
individually.
●​ Visual Appeal Judged by the Eye: The visual element of a design is crucial and is
judged solely by the eye of the consumer. The design should influence the consumer's
purchasing decision.
●​ Definition of Design (Section 2(d)):
○​ Inclusions: Features of shape, configuration, pattern, ornament, or composition of
lines or colors applied to an article (2D, 3D, or both) by an industrial process
(manual, mechanical, chemical, separate or combined).
○​ The design must be in the finished article and appeal to and be judged solely by
the eye. Intermediate steps or unfinished products are not the concern of design
law.
○​ Exclusions:
■​ Any mode or principle of construction (a feature of patent law).
 ■​ Anything which is in substance a mere mechanical device (subject matter
for patents).
■​ Any trademark (as defined in the Trademark Act) or property mark.
■​ Any artistic work (as defined in the Copyright Act). This is crucial for
understanding the overlap and distinctions between design and copyright
protection.
●​ Non-Functionality: Design protection is for aesthetic features, not purely functional
ones. A design does not need to have a "use" in the patent sense; its "use" is its
commercial appeal.
●​ Assignment Discussion: The class discussed the case presentation assignment,
emphasizing tracing case history, understanding arguments, and the Amicus Curiae's role
in determining if a precedent holds value today.

March 6, 2024

Design Law: Novelty, Originality, and Procedural Aspects (Focus on Pre-2000 Act)

●​ Course Material and Expectations: The instructor emphasized that provided slides are
hand-holding material, and assessment is based on application. Active participation,
discussions, and timely assignment completion are crucial. The aim is a "clean, crisp,
conceptually sound elective."
●​ Historical Context of Indian Design Law:
1.​ India had an 1888 version of a patents and designs act.
2.​ The Inventions and Designs Act of 1911, adopted from British law, was the
primary legislation until the 2000 Act. This act clubbed inventions and designs
together.
●​ Case Study Introduction (Pre-2000 Act): A 1919 Calcutta High Court decision was
introduced as an example. This case is significant because it overturned a controller's
decision and interpreted the 1911 statute.
●​ Novelty vs. Originality (under 1911 Act):
1.​ New: Unknown before, similar to a patentable standard (worldwide novelty).
2.​ Original: Original application of a known design onto an article of commerce in a
way not known before. Originality is attached to the application.
3.​ The 1911 Act understood novelty and originality (conjunctive), requiring both to
be proven. This was a tough standard.
4.​ The 2000 Act uses "new or original" (disjunctive), a key difference.
●​ Problem with "And" Conjunction (1911 Act): Requiring designs to be novel (like
inventions) and original led to confusion, asking designs to have a "use" akin to
inventions, which contradicts the visual appeal nature of designs.​

1.​ Visual appeal's only "use" is to generate consumer preference. It's not meant to
solve or improve a function.
2.​ The intellectual aspect of design is creating a visual effect that was not known, not
inventiveness in a functional sense.
●​ Case Analysis (Wristband for Watch - 1919):
1.​ Procedural Issue: The case dealt with the controller's power for clerical error
correction and cancellation of design registration.
■​ The 1911 Act (Section 62) discussed clerical error correction (applied by
the proprietor) and cancellation.
■​ The controller and subsequently the High Court (conservatively)
interpreted that only the proprietor could apply for cancellation. This was
deemed absurd, as third parties have a vested interest in canceling bad
designs.
■​ The court narrowed the controller's ability to entertain third-party
cancellations.
2.​ Substantive Issue (Novelty/Originality of a Metal Wristband for a Watch):
 ■​ The court upheld the novelty/originality of a metal wristband for a watch,
even though similar gold bracelets existed as jewelry.
■​ Key Distinction: Watch (utility) vs. Jewelry (ornamentation).
■​ Applying a jewelry-like band to a watch was for ornamentation, not to
enhance the watch's function.
■​ Ornamental vs. Instrumental: The ornamental purpose of the bejeweled
wristband on the watch made it a design. The inherent ornamental function
of jewelry in a bracelet is instrumental (it has to be ornamental to be
jewelry).
■​ The court recognized that the application of the design (bejeweled band)
to a different class of goods (watch) with an ornamental purpose was
original.
■​ The court, acting as the consumer, found the items (watch with band vs.
bracelet) to be different.
■​ Tests Laid Down (Implicitly):
■​ Dissimilar Purpose and Use: The design on the watch had a
purpose (ornamentation) dissimilar to that of a bracelet (being
jewelry).
■​ Exceptional Overlap: If classes of goods merge due to a design,
it's an exceptional overlap, not a standard rule for novelty.
■​ Enhanced Commercial Appeal: The ornamentation added
commercial value to the watch. This is key for industrial design.
■​ Fixation/New Way of Applying: The original application of the
design onto the article matters.
■​ Street Test: Would a buyer opt for this product because of the
design?
●​ Comparison with 2000 Act Provisions:
1.​ Section 29 (2000 Act): Controller can correct clerical errors in representation,
name/address of proprietor upon request (implies proprietor).
2.​ Section 31 (2000 Act): Rectification of register can be applied for by "any person
aggrieved" (broader than just proprietor).
 3.​ Section 35 (2000 Act): Controller may refuse registration if use is contrary to
public order or morality; appealable to High Court.
4.​ Section 19 (2000 Act): "Any person interested" can petition for cancellation of
registration after it's granted, on specified grounds. This typically means a
competitor.
5.​ The 2000 Act expands the locus for challenging/correcting designs beyond just
the proprietor, unlike the narrow interpretation of the 1911 Act in the 1919 case.
●​ Conceptual Takeaways from the 1919 Case (Substantive):
1.​ Fixation/New Way of Applying: Original application to an article that fixes the
design onto it.
2.​ Dissimilar Purpose/Use: Distinguish if the design is ornamental, instrumental, or
essential.
3.​ Identify Exception by Filtering Overlap: If items seem to overlap/substitute,
filter to see what novel aspect remains.
4.​ New Use Altogether/Street Test: Does the design create a new trend or
significantly enhance saleability?
5.​ Evidence of Commercial Viability: Design must have a commercial identity and
be saleable.
●​ Assignments and Project Work: The instructor discussed upcoming assignments,
including case presentations and a project involving analyzing chosen design items.
Students were asked to finalize their design items for the project.

March 12, 2024

Design Law: Subject Matter, Exclusions, and Novelty Standards

●​ Context of Design Law Today: The instructor highlighted that court interpretations of
design law can be confusing, sometimes mixing design per se with design rights, or
 copyright under copyright law with copyright within design law. The aim is to understand
what courts have gotten right and how Indian design law compares internationally.
●​ Commercial Angle of Design: Design law inherently has a commercial angle because
designs are applied to articles intended for sale and profit. It's about gaining a competitive
edge.
●​ The "Shoe is a Shoe" Fallacy: The generalization that "every shoe is a shoe" (meaning
common articles cannot be protected) needs careful consideration. Design law protects
the enhancement of a useful article's value through a new design, not the utility itself.
●​ International Perspectives (Briefly Mentioned):
○​ Europe: Concept of "unregistered design" protection.
○​ US: "Design patent" concept, where invention and design can be fused. Miniature
versions of the Statue of Liberty could be design patents.
●​ India's Stance: India distinguishes artistic works (copyright, e.g., sculptures for life + 60
years) from saleable designs (10+5 years). Design requires an application to an article of
commerce.
●​ What is NOT Protected by Design Law (Section 4 & Related Concepts):
○​ Methods or Principles of Construction: These are typically patent subject
matter. Design protection is for appearance, not the method of making.
Architectural forms, urban planning, etc., are generally excluded.
○​ Features Dictated Solely by Function (Every Feature Rule):
■​ If every feature of a design is dictated by its function, it's not protectable
as a design.
■​ However, if even one feature is not solely functional (i.e., has aesthetic
appeal), the design may be registrable. The overall design is assessed.
■​ If a design creates the function, it's likely an invention.
■​ Escorts Construction Case (1999): The court held that functional shapes
of heavy machinery (pick and carry hydraulic crane) are not protectable
under design law as their primary object is function, not aesthetics. If a
part is made solely to enable the machine to work, it's judged by
performance, not appearance.
 ○​ Mechanical Devices: Generally patent subject matter. Medical devices with
non-clinical aesthetic features might be an exception.
○​ Trademarks, Property Marks, Artistic Works: Explicitly excluded by Section
2(d).
○​ Designs Contrary to Public Order/Morality.
○​ Cultural Works & Traditional Cultural Expressions (TCEs): This is a newer
area of conflict.
■​ International brands sometimes misappropriate cultural designs.
■​ India has taken a stance to protect TCEs, recognizing their cultural value
beyond mere commercial exploitation. This involves ensuring benefits
return to the communities and preventing erosion of cultural identity.
■​ Startups and nodal agencies are now facilitating the commercialization of
artisan work while protecting cultural identity, sometimes using GIs or
other forms of recognition.
●​ Novelty in Design: Requires establishing that the design (or its application) is new and
not a mere trade variant. It involves comparing with prior structures and showing a new
element or a new combination of old elements.
●​ Case Presentation and Project Guidance: The instructor reiterated the importance of
researching chosen design items, understanding their history, and the legal principles
involved.

March 19, 2024

Design Protection: Procedures, Substantive Requirements, and Examination

●​ Project Guidance (Continued):
○​ The instructor provided a reading to help students differentiate between
commonplace terms and protectable design elements, using it as a comparative
guide for analyzing their chosen articles under Indian design law.
○​ Students are to act as lawyers advising a client on the protectability of their
chosen design, being critical of the choice if it falls outside design law.
○​ The Indian Designs Act and Rules are the primary guides.
●​ Recap: What is NOT Design:
○​ Section 2(d) excludes trademarks, property marks, copyright (artistic works), and
patents.
○​ Originality in Design (Section 2(g)):
■​ "Originating from the author of the design."
■​ Includes cases where known designs are new in their application to an
article. The visual element might be known, but its application to a new
article makes it original.
■​ Unlike copyright originality (no mandatory registration), design originality
is established through expert evidence during mandatory registration.
"Expert evidence" means prior art/trade variants don't show the same
application.
○​ Functional designs are out unless the "every feature rule" is not satisfied (i.e., not
every feature is purely functional).
●​ Publication and Disclosure (Section 4):
○​ A design should not be registered if it's not new or original, or if it has been
disclosed to the public anywhere before the filing date (or priority date).
○​ Single Publication Rule: Even a single disclosure to one person (if from an
authorized channel with intent to sell) can be sufficient to debar others from
copying and establish the proprietor's priority, pending registration. Publication
means the opposite of being kept secret.
●​ Prohibitions on Registration (Beyond Section 4):
 ○​ Section 5(1) read with Section 35: The controller can refuse registration if the
design is contrary to public order or morality. This is appealable to the High
Court.
○​ Section 46: The central government can prohibit registration or cancel existing
registration if it's in the interest of the security of India (e.g., designs related to
atomic energy, defense).
●​ Procedural Requirements for Design Registration (Sections 3-9 overview):
○​ Formal Requirements (Section 3):
■​ Application in the prescribed format with the requisite fee. This
establishes the priority date.
■​ Complete details: name, address of proprietor (head office for service),
nationality.
■​ Declaration of ownership (client authorizes the lawyer).
■​ Representation Sheet: Crucial for showing design elements. Requires
photographs/drawings from multiple angles (4 copies). Must clearly depict
what is sought to be protected.
○​ Who Can Apply (Section 5): Individuals, legal persons. Nationality is important
for reciprocal arrangements (Section 44). Joint proprietorship needs clear
disclosure.
○​ Class of Goods: Application is for one class of goods. Multiple classes require
separate applications.
○​ Statement of Novelty: Must be drafted carefully – not too broad or confusing.
This is where legal expertise is key to secure registration and prevent cancellation.
●​ Registration Process & Examination:
○​ The Controller may examine or appoint a technical expert examiner.
○​ Examiner's Role:
■​ Checks formalities.
■​ Substantive review: compliance with Section 2(d), not hit by Section
4/5/35/46, not functional, etc.
■​ Raises objections if claims are too broad, generic, or lack novelty.
○​ Applicant's Response to Objections:
 ■​ Can withdraw the application.
■​ Can appear for a hearing (within 3 months of objection) to contest or
amend the claim.
■​ Total time to resolve objections is roughly 6+3 months from filing to
retain priority.
■​ Amended application filed via Form 18.
○​ Registration & Publication: If successful, a design certificate is issued, and the
design is published in the Patent Office Gazette, making it public knowledge.
●​ Register of Designs (Section 10):
○​ A public record kept at the Patent Office with details of proprietors, notifications,
etc. Can be maintained electronically.
○​ Serves as prima facie evidence of entries.
○​ Inspection (Section 17): "Any person" can inspect the register (online or
in-office) and get certified copies (on paying a fee), typically for evidence in legal
proceedings. This is the main window of transparency in an otherwise closed
examination process.
●​ Disclosure of Copyright in Design (Section 15 of Copyright Act - linked to Section 21
of Designs Act):
○​ If a design is capable of registration under the Designs Act but isn't, copyright in
that design ceases if the article to which it's applied is reproduced more than 50
times by an industrial process. This is a critical point of overlap/conflict.
○​ Section 21 (Designs Act): Exhibition of a design (e.g., to test the market) before
or during registration requires prior notification to the Controller. Application for
registration must then be made within 6 months of the first exhibition to retain
novelty. This aims for transparency regarding who exhibited and applied.
●​ Design Thinking & Societal Impact: The lecture touched upon how design is moving
beyond pure aesthetics to solve societal problems (e.g., sustainability, accessibility,
efficient resource use), using examples like Elon Musk's tiny homes and innovations in
materials for battery life. This involves "design thinking" to address user needs and
market gaps.
 Designs - 20th March

This lecture focused on the broader context of Intellectual Property (IP), particularly how it
intersects with economic power, international relations, and public policy.

Key Discussion Points:

●​ Defining Offensive and Public Policy in IP: The lecture began by questioning how IP
registries (for copyright, designs, trademarks) determine what is considered "offensive"
or against "public policy". This is a sensitive issue, especially in the current global
climate.
●​ IP in the International Arena:
○​ India's position as a global producer and supplier is contrasted with international
backlash and the behavior of economic powers like America.
○​ The discussion touched upon the role of TRIPS (Trade-Related Aspects of
Intellectual Property Rights) and the continuous monitoring of compliance by
member countries.
○​ IP is increasingly seen as a tool of economic power rather than just rights and
liabilities, with states and multinational corporations (MNCs) being significant
players. MNCs can even act unilaterally against countries.
○​ The lecture drew parallels between the current period (2025) and the post-1995
era, questioning if similar compromises will be made by emerging economies.
○​ The India-China dynamic is seen as serving Western interests more than those of
the two nations themselves.
○​ Technology owners are gaining significant power, even influencing governments.
●​ Specific Indian Context:
 ○​ The shift of the patent office to Dwarka, Delhi, and the practical responses from
Indian IP offices were mentioned.
○​ The debate between religion and science in India, particularly in the context of
gene editing and cloning (e.g., should man become God?).
○​ India's independent stance in scientific policy, not being reliant on the West, was
highlighted.
○​ The importance of lawyers being critical but also recognizing legal merits within
India, especially when presenting arguments internationally.
○​ A specific case regarding a surname ("Sutia") from Assam, which sounds like an
offensive word in Hindi, was discussed to illustrate the complexities of
determining offensiveness and the tension between secularism and religious
sentiments. The core trademark question should be whether it confuses the
customer, not whether it offends them.
○​ The challenge of IP imperialism, where dominant languages and cultures can
overshadow local ones.
○​ The responsibility of researchers when dealing with localized businesses and
potential language barriers, ensuring that information isn't misrepresented, even
with good intentions.
●​ Design Law Specifics - Introduction to Separability:
○​ The primary challenge in design law is severing "art" from "commerce". The
traditional view separates artists from those who sell designs, but this distinction
is subjective and practically difficult.
○​ A registrable design must be uncommon and not a "common design".
○​ The courts struggle to determine when an artistic work becomes less visually
appealing to be sold commercially, especially since any article of commerce
inherently has some use and needs to look good to be sellable.
○​ The concept of "separability" was introduced as a key theme for understanding
design law.
●​ Section 15 of the Copyright Act, 1957:
○​ This section deals with copyright in designs that are registered or capable of being
registered under the Design Act.
 ○​ Clause 1: Copyright does not subsist in any design registered under the Design
Act, 2000.
○​ Clause 2: Copyright in a design capable of being registered under the Design Act,
but not so registered, ceases as soon as any article to which the design has been
applied has been reproduced more than 50 times by an industrial process.
○​ This means an unregistered design (capable of registration) is protected under
copyright until it's reproduced more than 50 times. After the 50th reproduction, if
not registered as a design, the copyright protection ceases, and it may fall into the
public domain.
○​ The intent is to prevent co-terminus protection under both IP regimes and to
encourage registration under design law if commercial exploitation is intended.
○​ If a work is purely artistic workmanship with no intention of design registration, it
remains under copyright protection. The 50-item limit applies when selling it as a
commercial entity without design registration.
○​ The legislation aims to protect commercial use of designed articles. Registration
under the Design Act is necessary before the 51st article is sold if design
protection is desired.
○​ The law distinguishes between protecting "pure art" and "design for commercial
works".
○​ The tools used to create designs (e.g., molds, stencils) are generally not
protectable as designs themselves, as mechanical devices are often excluded; the
finished article is what's typically protected.
○​ Section 15 aims to:
■​ Urge judges to consider the legislative intent: protect proprietors of new
designs.
■​ Protect owners of unregistered (but registrable) designs under copyright
law temporarily.
○​ The creator's intention is key: if they intend to protect it under design law, they
must register it (ideally before 50 reproductions) and forego copyright.
●​ Comparing Design and Copyright Protection:
 ○​ Copyright infringement can be harder to prove due to principles like "sweat of the
brow" vs. "originality," making remedies more reliant on precedents. Design
registration provides a stronger, more definite monopoly for mass production.
○​ Most countries require design registration for protection (a key exception being
the EU's Community Design Right for unregistered designs).
○​ Design protection is for a limited term (e.g., 10 years, extendable to 15 in India),
while copyright lasts for the life of the author plus a significant period (e.g., 60
years).
○​ The first owner in copyright is the author; in design, registration makes the
proprietor the first owner, indicating intent to sell.
○​ Design registration is for a specific class of goods, while copyright can cover
various adaptations (book, movie, etc.).
●​ Practical Advice for Design Protection & Case Study Approach:
○​ The line between art and commerce is blurring, and courts should recognize the
clear legislative intent to protect designs meant for commercial use.
○​ A case-by-case analysis is often necessary, comparing the design to competitors'
products within the same class of goods (e.g., combs, locks).
○​ Accurate and complete representation of the design in the application is crucial.
Failure to disclose a key feature (e.g., a protruding part of a keyhole) that is later
claimed as novel can lead to cancellation of the registration if that feature wasn't
examined.
○​ Key historical cases like Lighting Western Engineering (1911) are important for
understanding the evolution of Indian design law.
○​ The Indian approach to design law is significant internationally, especially as
India is not an OECD country and has a strong stance on traditional knowledge.
The focus is on promoting local manufacturing and commercial tie-ups.

March 26, 2024

Design Law: Priority Rights, Publication, and Infringement (Focus on Reckitt Benckiser
vs. Wyeth)

●​ Priority Rights (Recap): Allows an applicant to claim an earlier filing date from another
convention country if applying within a specific timeframe (6 months for industrial
designs). Governed by treaties like the Paris Convention. Benefits include preventing loss
of novelty and avoiding a "race to file."
●​ Case: Reckitt Benckiser India vs. Wyeth Ltd.
○​ Subject Matter: Design infringement of a spatula used for applying and
removing hair removal cream (Reckitt's "Veet" vs. Wyeth's "Anne French").
○​ Procedural History:
■​ Single Judge: Held that prior registration abroad (UK, US, Australia for
Reckitt) constituted prior disclosure under Section 4(b) of the Designs
Act, 2000. Found the design was in the public domain before Indian
registration and thus published. Prima facie, no infringement.
■​ Division Bench: Agreed with the single judge's reasoning but noted that
the interrelation between Section 4(b), 19(1)(a), 19(1)(b), and Section 44
(priority rights) needed clarification, especially regarding prior publication
and registration abroad. Referred to a Full Bench.
○​ Reckitt's (Plaintiff) Arguments:
■​ Design could be "new OR original" (either/or). Even if not new, its
application was original and new.
■​ "Publication" is not defined in the Act. Documents submitted by Wyeth
showing alleged prior publication abroad (ads, magazine) did not clearly
depict the spatula's design and thus weren't valid prior publication.
■​ Crucially, prior registration abroad is NOT a ground for cancellation of
an Indian registration under Section 19. Prior registration in India is a
ground. Prior publication (in India or abroad) is a ground. Relied on Gopal
Glass Works.
○​ Wyeth's (Defendant) Arguments:
 ■​ Prior Publication: Alleged Reckitt's design was published abroad
(Amsterdam ad agency communication, Australian magazine "Girlfriend")
before Indian registration, thus lacking novelty/originality under Section 4.
■​ Clear Distinction in Design: Argued their "Anne French" spatula was
visually distinct from "Veet's" (curved vs. angular contour, hourglass vs.
straight/U-shape, presence/absence of cushions/lines).
○​ Full Bench Analysis & Key Legal Interpretations:
■​ Issue 1: Prior Registration Abroad as Ground for Cancellation:
■​ Section 19(1)(a) (Designs Act, 2000) allows cancellation if a
design was previously registered in India.
■​ The 1911 Act (Section 51A) also specified "previously registered
in India."
■​ Section 19(1)(b) (2000 Act) allows cancellation if a design was
published in India or any other country prior to the date of
registration.
■​ Crucial Distinction: Mere registration abroad is NOT a ground
for canceling an Indian registration. However, publication abroad
IS a ground.
■​ Role of Section 44 (Priority Rights): Section 44 is a provision giving
benefit to convention country applicants; it does not create a ground for
cancellation if someone fails to claim priority within 6 months. If
registered in India (even if originally a foreign design), it becomes an
Indian registered design.
■​ Issue 2: Consequence of Failing to Apply Within 6 Months (Section
44): If a convention country applicant fails to apply in India within 6
months of the foreign filing, they lose the benefit of the earlier priority
date; their Indian application date becomes the effective date.
■​ Issue 3: What Constitutes "Prior Publication"?
■​ Not explicitly defined in the Act.
■​ Relied on Gopal Glass Works Ltd.: Publication means the design is
available and accessible to the public in a tangible form, not just a
 document in a design office. It must be something the public can
see and recognize.
■​ Issue 4: Do Foreign Registration Documents Constitute Publication?
No, mere registration documents in a foreign office, not accessible to the
Indian public/registry, do not constitute "prior publication" in India for
cancellation purposes under 19(1)(b). The key is accessibility and
tangibility.
○​ Amicus Curiae/Class Opinion on the Judgment:
■​ The judgment was considered "good law" for its interpretation of
legislative intent, differentiating registration vs. publication, and its
practical approach to what publication means (visual representation
accessible to the public).
■​ It provides certainty for businesses relying on design registration in India,
preventing automatic invalidation by mere foreign registrations.
○​ Critique/Further Points from Class Discussion (Regarding Wyeth's
Arguments):
■​ Wyeth's argument relied on Section 4(b) (prohibiting registration of
published designs) and linked it to 19(1)(b) (cancellation ground for prior
publication).
■​ Section 4(b) offers three ways for prior disclosure: (i) publication in
tangible form, (ii) by use, or (iii) "in any other way."
■​ Wyeth argued the magazine/ad constituted disclosure "in any other way."
Reckitt countered that the design wasn't clearly depicted.
■​ The weakness in Wyeth's argument was not sufficiently pressing the "any
other way" aspect of disclosure under 4(b) or proving sufficient (not
necessarily exact) disclosure that compromised novelty. Even one clear
disclosure could be enough.
●​ Key Takeaways from the Case:
○​ Law is deliberate: Foreign publication is a ground for cancellation; foreign
registration alone is not.
○​ Disclosure (accessibility) is the hinging point for prior art.
 ○​ The party alleging prior publication must prove it sufficiently.
●​ Case: Pentel vs. AMX (Add Gel): (This case was also discussed, focusing on novelty of
pen designs)
○​ Facts: Pentel sued Add Gel (Montex) for infringing its registered design for the
"Energel" pen. Add Gel argued Pentel's design lacked novelty (combination of
existing features, functional elements like grip) and was liable for cancellation
under Section 19.
○​ Single Judge (2018): Ruled against Pentel, stating a pen needs to be significantly
distinguishable ("a ballpoint pen is a ballpoint pen" logic, implying most features
are standard/functional). Viewed components in isolation. Said grip/wedges were
functional.
○​ Division Bench (2019): Overturned the single judge.​

■​ Criticized the "pen is a pen" logic; designs must be assessed as a whole. A

unique combination of existing designs can be new and original.
■​ Functionality: Even if some features are functional (like grip), if there are
other design methods to achieve the same function, and the chosen design
has aesthetic appeal, it's not solely dictated by function.
■​ Estoppel: Montex had secretly applied for registration of a similar design,
estopping them from claiming Pentel's design lacked novelty ("cannot
blow hot and cold").
○​ Settlement (2023): Parties settled outside court; Montex acknowledged similarity
and modified its design.
○​ Relevance of 2018 Judgment (despite being overturned): The "ballpoint pen is
a ballpoint pen" logic was referenced in Crocs USA vs. Liberty Shoes (2020),
where adding a strap to a Croc-like sandal wasn't seen as novel.
○​ Class Analysis (Amicus View on Pentel):
■​ The 2018 judgment was too harsh, setting an overly exacting standard for
novelty (almost patent-like, requiring invention of a new article, not just
new design on an article).
 ■​ It confused "common designs" (which defeat novelty) with making "every
design on a common article" unregistrable.
■​ Design law is about aesthetic/visual impact enhancing a useful article, not
its core function or inventing a new article. The focus should be on
aesthetics and original application.

March 27, 2024

Design Law: Overlap with Copyright (Section 15 of Copyright Act) - Microfibers &
Gemini Cases

●​ Context: Section 15 Copyright Act & Design Protection:

○​ Section 15(1) & 15(2) of the Copyright Act are crucial for understanding the
design-copyright interface.
○​ The 1911 Designs Act didn't mandate registration. The 2000 Act does. This
created issues for designs that were unregistered but potentially protected under
the old regime.
○​ The term "design copyright" or "copyright in the design" (from Designs Act
2000) refers to the rights of a registered design proprietor. "Pure copyright" refers
to protection under the Copyright Act.
●​ The Core Dilemma (Section 15(2) Copyright Act):
○​ If a design is capable of being registered under the Designs Act but is not so
registered, copyright in that design ceases as soon as any article to which the
design has been applied has been reproduced more than 50 times by an industrial
process.
 ○​ This creates a "limbo" for creators of unregistered designs that are commercially
successful (more than 50 reproductions). They might lose copyright protection
and, without design registration, have no design rights either.
●​ Case: Microfibers Inc. vs. Girdhar & Co. (Delivered by Justice S. Muralidhar, often
referred to as a landmark by the class)
○​ Facts: Microfibers (plaintiff) sued for infringement/passing off of their artistic
works (upholstery fabric patterns/designs). These were unregistered designs but
commercially produced (exceeding 50 units).
○​ Plaintiff's Argument (Simplified): Their original artistic works
(paintings/drawings for fabrics) should be protected by copyright, even if applied
to articles and commercially exploited. They argued their works were "pure art"
first, then adapted.
○​ Defendant's Argument (Simplified): These are industrial designs applied to
textile products. Since not registered under the Designs Act and produced >50
times, copyright ceases under Section 15(2). The designs lacked novelty for
design registration anyway.
○​ Court's Holding ("Only Design" Principle):
■​ If an artwork is going to be commercially exploited by application to an
article, the only protection available is under the Designs Act. No
co-terminus protection with copyright.
■​ The court focused on the legislative intent to separate
commercial/industrial application (design) from pure artistic expression
(copyright).
■​ Transformation is Key: An industrial drawing/painting must be
transformed and applied to an article of commerce to become a design.
The industrial process of applying a mold/pattern is not the design; the
applied end product is.
■​ Intention of Creator vs. Legislative Intent: The court found the creator's
fluctuating intention (art vs. commerce) less important than the clear
legislative intent to channel commercially applied artistic works through
the Designs Act (with its limited 15-year protection).
 ■​ Consequence of >50 Reproductions without Design Registration: If a
design capable of design registration is reproduced >50 times without such
registration, copyright ceases (under 15(2)), AND no design rights accrue.
The design falls into the public domain.
■​ The 51st article is copyright-free and design-exclusivity-free.
○​ Takeaways from Microfibers:
■​ Section 2(d) of the Designs Act clearly excludes artistic works;
distinguishes the protected aspects.
■​ Section 15(1) of Copyright Act protects pure copyright (life + 60). Section
15(2) is a residual provision for unregistered designs capable of design
registration, limiting copyright to 50 reproductions.
■​ Distinct stages in design production (industrial object vs. painting vs.
standalone art) determine if a transformation to a commercial design has
occurred. "Only Design" applies to the final, saleable article.
■​ The 51st article (of an unregistered but design-registrable item) enters the
public domain.
■​ A question was raised in class: How does Microfibers apply to "shapes" as
design elements, given shapes are also part of the design definition?
●​ Case: Gemini Industry Corp vs. Rita Mechanical Works (Copyright Board, 2004;
before Microfibers appeal but relevant for context)
○​ Facts: Dispute over a butterfly label registered as an artistic work under
copyright, applied to sewing machines. Petitioners (Gemini) sought expungement
of this copyright registration under Section 50A of Copyright Act, arguing it was
a design reproduced >50 times and thus copyright should cease under 15(2).
○​ Petitioner's Argument (Gemini): The butterfly label on sewing machines is an
ornamental feature (design under 2(d)), applied industrially (>50 times), and
capable of design registration. Thus, 15(2) applies, copyright ceases.
○​ Respondent's Argument (Rita Mechanical): The butterfly label is an artistic
work, not a design that alters the shape/configuration of the sewing machine. It's a
detachable sticker/transfer label for branding/decoration, existing independently.
Mere pasting isn't an "industrial process" integrating it into the machine's
 structure. It also functions as a trademark, which is excluded from design
protection.
○​ Amicus Curiae View (presented in class):
■​ Agreed with the Copyright Board's decision (which likely favored Rita,
upholding copyright).
■​ The butterfly label, if primarily identifying the source, is a trademark and
thus excluded from design definition by Section 2(d) itself. Gemini was
estopped from denying it was a trademark due to a prior concession.
■​ Substantively, a surface decoration like a label doesn't qualify as a design
unless it alters the article's core aesthetic/shape. Relied on Samsonite
(distinction between design shaping an article vs. decorative elements
applied).
■​ The Copyright Board correctly narrowed the scope of what constitutes a
"design" to avoid overlap with trademarks and pure artistic works used for
branding.
○​ Class Discussion Point: If this case went to a design registry (instead of
Copyright Board), would the outcome be the same? Likely yes, if the statement of
novelty for the "design" (butterfly label) couldn't establish it beyond a generic
ornamental application or trademark function.

Designs - 9th April

This lecture focused on the practical aspects of protecting designs, advising clients, and the
specifics of design registration and novelty.

Key Discussion Points:

●​ Role of the Lawyer in Design Protection:

 ○​ Lawyers must understand more than their clients and ask insightful questions. The
advice should demonstrate superior knowledge.
○​ This involves not just statutory interpretation but also looking into the client's
market, competitors, and the commercial realities of their design.
●​ Formal Requirements:
○​ Understanding formal requirements for filing is essential. This includes knowing
what details are needed from the client.
●​ Substantive Aspects - Registrability:
○​ The core issue is registrability, following a five-step process similar to what an
examiner would do:
1.​ Define the design and the key element of property claimed.
2.​ Explain how Section 2(d) (definition of design) aligns with the client's
statement.
3.​ Address Section 4 (prohibitions on registration, e.g., not new or original)
and Section 5 (national security).
●​ Anticipating Examiner Objections & Establishing Novelty:
○​ Be prepared for examiner objections, especially regarding novelty or potential
infringement.
○​ Draft a strong statement of novelty.
○​ Focus on the visual test: What aspects of the client's design are visually appealing
and impact registration? The "examiner" in an infringement case is the judge, who
looks at it from a consumer's perspective. Your opinion must be weighty enough
to satisfy the "eye test" due to special design elements.
○​ Describing the Design to the Client (and for the application):
1.​ Identify Aesthetic Aspects: Show it's purely for visual appeal, not for
substantial use or function (e.g., color, shape). Research the client's
marketing literature to align terminology.
2.​ Remove/Distinguish Mechanical Components: Identify and exclude
parts that are standard, functional, or common trade variants. These are
generally not protectable as part of the design's novelty.
 3.​ Identify Standout Features (Commercial Identity): From the
protectable aesthetic aspects, pinpoint the "standout feature" – what gives
the design its commercial identity and novelty in application. This feature
must be clearly described and represented.
●​ Representations (Illustrations/Drawings):
○​ Representations are crucial. What is claimed later must have been shown in the
representations submitted at the time of examination. Be careful to include all
claimed features, including those distinguished from mechanical components.
●​ Prior Art & Market Research:
○​ To identify what is truly "standout," compare it with existing designs in the
market (prior art). This is why prior art searches are essential.
○​ Explain the differences between the prior art designs and the client's design.
Failure to clearly distinguish standout features from existing prior art can be a
reason for cancellation.
●​ Objectivity vs. Subjectivity in "Standout" Features:
○​ Avoid subjective opinions on what is "standout." Essential features (inherently
functional or common) cannot be protected as standout design elements; they
might be mechanical components.
○​ Design protection focuses on elements that create an "accessory effect" or
"ornamentation," not the essential nature of the item (e.g., the fundamental shape
of a comb). The comparison should be based on general/composite appearance,
emphasizing visual appeal over pure functionality.
●​ Distinguishing Design from Copyright/Trademark:
○​ Understand the client's intent. Is the feature intended as a design, or does it
function as a trademark (source indicator) or is it more akin to an artistic work
under copyright? This advice can save clients from infringement costs.
○​ Unregistered designs and the application of Section 15(2) of the Copyright Act (if
reproduced more than 50 times, copyright can be lost if not registered as a design)
were revisited. One's own prior publication/disclosure might not disqualify a
design if it's not accessible prior art for others.
●​ Assignment/Project Requirements:
 ○​ Word count discussions (around 2500 words, with substantive parts like good
design analysis and objections being significant portions).
○​ Formal requirements include filling out forms as if for a client who is unaware of
them.
○​ Comparative analysis with other systems (e.g., Geneva Act for international
context) is needed to explain the Indian system and its nuances to clients familiar
with global standards. For instance, explaining how "shape" is protectable as a
design in India, which might differ from the US emphasis on trademark for
shapes.
○​ The assignment requires a professional approach, thorough research, and clear
articulation, as if reporting to a senior lawyer.
○​ Illustrations are necessary.
○​ The goal is to demonstrate understanding and impress with the quality of research
and application to the client's (hypothetical) item.

General Advice & Expectations:

●​ The assignment is technical and requires preparation; it cannot be done overnight.

●​ The instructor emphasized wanting to see good application of concepts and in-depth
research.
●​ Presentations should be well-prepared, and the instructor is looking for understanding
rather than just performance.

April 10, 2024

Design Law: Functionality vs. Form, Separability, and Infringement Tests (Varsity Brands
& Castrol India)

●​ Case: Varsity Brands vs. Star Athletica (US Supreme Court - on Cheerleader
Uniform Designs)
○​ Context: US copyright law protects pictorial, graphic, or sculptural (PGS)
features of useful articles only if those features can be (1) identified separately
from, and (2) are capable of existing independently of, the utilitarian aspects of
the article. This is the "separability test."
○​ Facts: Varsity Brands (cheerleader apparel) sued Star Athletica for infringing
copyrights in its 2D surface designs (stripes, chevrons, colors) on uniforms.
○​ Lower Courts: Initial ruling found designs not separable (removing them makes
it not a cheerleader uniform). Overturned by 6th Circuit, which proposed a
multi-step separability analysis, focusing on whether the article's utilitarian
function could be fulfilled without the design.
○​ Supreme Court's Separability Test (Conceptual Separability):
■​ A feature incorporated into the design of a useful article is eligible for
copyright protection only if the feature (1) can be perceived as a 2D or 3D
work of art separate from the useful article and (2) would qualify as a
protectable PGS work—either on its own or fixed in some other tangible
medium of expression—if it were imagined separately from the useful
article into which it is incorporated.
■​ The court leaned towards protecting the surface designs as they could be
imagined existing independently (e.g., on a canvas) and didn't make the
uniform itself copyrightable, just the specific arrangement of PGS
elements.
○​ Dissent (Justice Breyer): Argued the designs were essential to the uniform's
identity as a cheerleader uniform and thus not truly separable; extending
copyright could monopolize common design elements in clothing.
○​ Amicus/Class Analysis:
■​ This case highlights the conceptual vs. physical separability debate.
Unlike Indian law's focus on industrial application (>50 units) triggering
Section 15(2) of Copyright Act, US law uses this complex separability
test.
■​ The majority view in Varsity seems to broaden copyright for surface
designs on clothing, which could impact fashion.
 ■​ Indian position (Microfibers): Copyright in a design capable of design
registration ceases after 50 mass productions if not registered as a design.
■​ The question "Does form follow function or function follow form?"
remains central.
●​ Case: Castrol India Ltd. vs. Tide Water Oil Co. (Calcutta HC, Pre-2000 Act - on
Lubricant Containers)
○​ Facts: Castrol (plaintiff) alleged design infringement of its registered design for a
lubricant oil container (GTX2) by Tide Water (defendant). Tide Water launched a
similar container.
○​ Key Legal Provisions (1911 Act referenced):
■​ Design (Sec 2(5) of 1911 Act): Visual features, configuration, excluding
construction methods.
■​ Copyright in Design (Sec 47(1) of 1911 Act): Exclusive right to apply the
registered design.
■​ Cancellation (Sec 51A of 1911 Act): Grounds like lack of novelty.
■​ Piracy (Sec 53 of 1911 Act): Unauthorized application, import, or sale.
○​ Castrol's Design Features: Rectangular container, ending in a mouth, handle
supported by triangles.
○​ Tide Water's Defense: Container design was common, lacked novelty.
○​ Justice Ruma Pal's Infringement Test (Landmark Principles):
■​ Overall Visual Impression, Not Just Individual Features: The court
must assess if the alleged copy is substantially different from the
registered design based on overall visual impression, judged by the eye.
■​ Mere Resemblance is Not Infringement: Some resemblance is expected
if the articles are of the same class. The question is substantial difference.
■​ Essential Features Copied: Infringement occurs if the essential features
of the registered design are copied, not just any feature.
■​ Obvious vs. Fraudulent Imitation:
■​ Obvious imitation: Strikingly similar at first glance.
 ■​ Fraudulent imitation: Deliberately based on the registered
design, may have subtle differences but amounts to imitation on
closer comparison.
○​ Court's Finding: Found Tide Water's container to be an obvious imitation.
Rejected the argument that container design is irrelevant for functional products;
packaging influences consumer choice. Granted injunction.
○​ Significance: Established key tests for design infringement in India, balancing
protection for novel aesthetic features with the understanding that functional
products still have design elements affecting consumer appeal. Section 22 of the
2000 Act mirrors these principles.
●​ Case: Godrej Sara Lee Ltd. vs. Reckitt Benckiser (Supreme Court - Jurisdictional
Issue in Design Cancellation/Infringement)
○​ Facts: Reckitt (insecticide coil design registered in Kolkata) sued Godrej for
infringement in Delhi HC. Godrej filed a written statement in Delhi challenging
design validity AND simultaneously filed a cancellation petition with the
Controller in Kolkata. Controller in Kolkata cancelled Reckitt's design. Reckitt
appealed this cancellation to Delhi HC. Delhi HC held it had jurisdiction. Godrej
appealed to SC against Delhi HC's jurisdiction.
○​ Issues before SC:
■​ Did Delhi HC have jurisdiction to hear an appeal against a Kolkata
Controller's cancellation order?
■​ Should "High Court" in Section 19(2) (appeal from Controller's
cancellation order) mean the HC where Controller is located or where
infringement suit is pending?
■​ Was reliance on 1911 Act provisions appropriate for a 2000 Act matter?
■​ Did pendency of infringement suit in Delhi confer appellate jurisdiction on
Delhi HC for the cancellation order?
○​ Legal Background on Cancellation Jurisdiction:
■​ 1911 Act (Sec 51A): High Court had original jurisdiction for cancellation;
Controller also had power within 1 year on limited grounds. Led to
overlap.
 ■​ 2000 Act (Sec 19): Controller has exclusive original jurisdiction for
cancellation applications. High Court is the appellate body for the
Controller's decision on cancellation.
○​ Godrej's (Appellant) Arguments: "High Court" for appeal under 19(2) means
the HC with territorial jurisdiction over where the cause of action (Controller's
cancellation order) arose – i.e., Kolkata HC. Delhi HC erred in comparing 1911
and 2000 Act provisions. Relied on cases like GSK Noodles and Ambica
Industries (jurisdiction based on where tribunal/cause of action lies for original
proceeding).
○​ Reckitt's (Respondent) Arguments: Delhi HC had jurisdiction because
infringement suit (where design validity was a defense) was already pending
there. To avoid conflicting decisions, Delhi HC was appropriate. Invoked broader
jurisdictional nexus and cause of action principles. Alleged Godrej engaged in
forum shopping by not disclosing the Delhi suit to the Kolkata Controller.
○​ Supreme Court's Holding:
■​ Delhi HC did NOT have jurisdiction to hear the appeal against the Kolkata
Controller's cancellation order.
■​ "High Court" in Section 19(2) refers to the HC within whose territorial
jurisdiction the Controller passed the order (Kolkata HC).
■​ Pendency of infringement suit in Delhi does not confer appellate
jurisdiction for the cancellation order from Kolkata.
■​ The 2000 Act clearly shifted original cancellation power to the Controller.
○​ Significance: Clarified that for cancellation appeals under Section 19, jurisdiction
lies with the High Court having authority over the Controller who made the
decision. Avoids forum shopping and maintains a clear hierarchy (Controller for
original cancellation, respective HC for appeal).​

■​ A distinction was made in class: Pure cancellation suit (Section 19, to

Controller) vs. Infringement suit where cancellation is a remedy/defense
(Section 22, involving High Court if transferred). This case primarily dealt
with the Section 19 appeal route.
 April 16, 2024

Design Law: Infringement, Cancellation Jurisdiction (Post-Commercial Courts Act), and

Overlap with Copyright (More Cases)

●​ Case: Polycab India Ltd. vs. S.D. Containers (Post-Commercial Courts Act era;
jurisdictional complexity involving infringement and cancellation counterclaims)
○​ Facts: Polycab (plaintiff) held registered designs for a container and lid for edible
oils. Sued S.D. Containers (defendant) for design piracy/infringement under Order
39 Rules 1 & 2 CPC. S.D. Containers counterclaimed for cancellation of
Polycab's designs due to prior publication and lack of novelty.
○​ Polycab's Arguments (Plaintiff):
■​ Registered designs are prima facie valid (Section 10). S.D.'s containers
replicate key visual features (integration, stability, surface patterns)
constituting piracy under Section 22(1)(a).
■​ Suffered financial loss (>₹5 crores) and disruption of client relationships.
■​ Jurisdiction lies with the Commercial Court (as both parties are
commercial entities). Counterclaim for cancellation (Section 19) must go
to Controller, not this court.
○​ S.D. Containers' Arguments (Defendant):
■​ Not the manufacturer; purchased containers from Vibha Packaging
(Dubai). Piracy under 22(1)(a) requires the defendant to apply the design;
they didn't. No evidence of acting knowingly under 22(1)(c).
■​ Polycab's designs lack novelty (Section 4(b)) due to prior publication on
Polycab's own website/reports before 2017 registration, and other identical
global designs.
■​ No prima facie case for injunction: design validity uncertain due to prior
publication; harm is monetary (quantifiable); balance of convenience with
S.D. (caught in middle).
 ■​ Jurisdictional/Procedural Point: After counterclaim for cancellation
(under Sec 19 grounds, raised as defense under Sec 22(3)), the case must
be transferred to the High Court (Sec 22(4)). The District Court wrongly
transferred it to Gwalior (no connection). SC later directed transfer to MP
High Court (Indore Bench - correct territorial jurisdiction).
■​ Section 22(5) empowers the High Court (hearing the transferred suit) to
cancel the design and notify the Controller. Thus, the argument that only
the Controller can cancel is wrong when raised as a defense in an
infringement suit.
○​ Court's Analysis (as discussed in class, likely referring to the High
Court/Supreme Court's view on the jurisdictional transfer):
■​ Distinguished pure cancellation suits (Section 19 - to Controller) from
infringement suits where cancellation is a remedy/defense (Section 22).
■​ In an infringement suit, if cancellation is counterclaimed as a defense
(using Section 19 grounds), Section 22(4) mandates transfer to the
appropriate High Court (with territorial jurisdiction over the cause of
action for infringement).
■​ This High Court then has the power to decide on the cancellation and
direct the Controller (Section 22(5)). This aligns with Godrej Sara Lee
regarding avoiding conflicting decisions.
■​ The role of Commercial Courts/Commercial Division of High Courts
becomes relevant here. The "appropriate High Court" for transfer under
22(4) would be the one with territorial jurisdiction and the ability to
handle commercial aspects of IP disputes. If the territorial HC lacks a
commercial division, a designated Commercial Court might be the forum.
○​ Amicus/Class Critique: The ruling correctly interprets the statutes to ensure that
when design validity is challenged in an infringement suit, the High Court (with
commercial competence) decides comprehensively. The initial injunction was
rightly dismissed given doubts about novelty and Polycab not suing the actual
manufacturer.
●​ Case: A. Sira A. Ramalingam Trading as RSRM vs. A.K.A. จํา (Tanya Creations)
(Jewelry Design - Copyright vs. Design)
○​ Facts: Plaintiff (RSRM) claimed copyright infringement of their traditional
temple-inspired jewelry designs (artistic works) by defendant (Tanya), a former
employee. Alleged replication of distinctive, complex, original artistic designs.
○​ Plaintiff's Arguments (RSRM):
■​ Designs are original artistic works (sketches, 3D renderings) under
copyright (Sec 14, 2(c) Copyright Act). Format change (2D to 3D) doesn't
lose copyright.
■​ Section 15(2) Copyright Act (loss of copyright if >50 reproductions of a
design-registrable item without design registration) does not apply because
jewelry designs are "artistic works" explicitly excluded from "design"
definition in Section 2(d) of Designs Act. Relied on Rajesh Masrani.
■​ Defendant (former employee) had access and copied, amounting to trade
secret violation/passing off.
○​ Defendant's Arguments (Tanya):
■​ Plaintiff's designs, being commercially exploited jewelry, should have
been registered under Designs Act. More than 50 reproductions made, so
copyright extinguished by Section 15(2). Relied on Microfibers.
■​ Designs based on common temple/cultural motifs in public domain,
lacking originality for copyright.
■​ No valid copyright to infringe. Trade secret claim lacks specifics.
○​ Court's Holding (likely Delhi HC, aligning with Microfibers):
■​ Affirmed that copyright protects original artistic expression, even if the
underlying idea/motif is from public domain (like temple art). The unique
stylized rendering is the IP.
■​ However, it failed to deeply engage with Section 15(2) regarding the >50
reproductions threshold for jewelry. This was a key critique.
■​ The judgment (as per amicus) implicitly treated jewelry as having an
inherent artistic value where the medium itself is artistic, thus leaning
towards copyright rather than design if not registered as a design. This
 contrasts with items where a design is applied to a purely utilitarian
article.
■​ If the shell necklace example (class discussion) is made for commercial
sale (>50 units), it shifts from artistic enjoyment to commercial identity,
and Section 15(2) would apply, meaning it needs design registration if
protection is sought beyond 50 units.
○​ Amicus Critique:
■​ The court should have scrutinized the >50 reproductions aspect more
rigorously.
■​ Lack of a clear test (like "primary use test" from Rajesh Masrani) to
distinguish artistic work from industrial design for hybrid items (art +
commercial use) leads to ambiguity. Proposed a multi-factor test: original
creative intent, commercial vs. expressive intent, transformation of work.
●​ Case: Tristar Home Appliances vs. Jagdamba Aluminum (Cone-making machine
drawings - Copyright vs. Design)
○​ Facts: Tristar (plaintiff) claimed copyright in drawings for a cone-making
machine. Jagdamba (defendant) allegedly copied these drawings to make similar
machines. Tristar produced >50 machines.
○​ Jagdamba's (Defendant) Argument: Tristar's machine drawings are functional
designs. Since >50 machines produced, copyright is extinguished by Section
15(2). Ownership of drawings also disputed (allegedly belonged to a third party,
Mr. Gupta).
○​ Tristar's (Plaintiff) Argument: Drawings are purely artistic works, not "designs"
under Designs Act because they don't appeal to the eye in a "finished article"
sense (they are for machine construction). Section 15(2) doesn't apply. Drawings
weren't directly applied to the cones (final article); cones are the product, machine
is the means.
○​ Court's Holding (likely favored Jagdamba, finding it a design): The court
seems to have focused on the fact that the drawings led to the industrial
production of >50 machines (articles to which the "design" of the machine was
applied), thus triggering 15(2).
 ○​ Amicus/Class Critique: The court erred. The subject matter was the machine
drawings, not the cones produced by the machine.​

■​ The drawings themselves are intermediate steps/means to an end, not the

"finished article" sold for its visual appeal. (Microfibers: molds/stencils
are not designs).
■​ Tristar wasn't selling the drawings or the machine design commercially;
they were selling the cones.
■​ The court confused the "article" – the machine itself (to which drawing
design is applied) versus the cones (product of the machine). If the
machine itself (as an article with specific design features) was sold >50
times without design registration, 15(2) might apply to the machine's
design. But the copyright claim was for the drawings.
■​ This judgment is seen as potentially bad law because it misapplied
Microfibers and confused intermediate functional drawings with applied
designs on finished commercial articles.
●​ Case: Rohit Dhanda vs. Ritu Kumar (Artistic Patterns on Fabric - Copyright vs.
Design)
○​ Facts: Ritu Kumar (plaintiff, fashion designer) alleged copyright infringement of
her original artistic patterns/sketches applied to garments by defendant, a former
associate. Claimed >50 reproductions.
○​ Plaintiff's (Ritu Kumar) Arguments:
■​ Original sketches are artistic works under Copyright Act.
■​ Section 15(2) doesn't apply as artistic works are excluded from "design"
definition in Designs Act (Sec 2(d)). Relied on Rajesh Masrani.
■​ Violation of trade secrets by former employees.
○​ Defendant's Arguments:
■​ Artistic sketches became designs once applied to garments and
mass-produced (>50 times). Copyright extinguished by 15(2) as designs
weren't registered. Microfibers is binding.
■​ Trade secret claim lacks substance.
 ○​ Court's Holding (Dismissed Ritu Kumar's suit):
■​ Strictly applied Microfibers: once artistic work (patterns) is applied to an
article (garment) and reproduced >50 times for commercial sale, it's a
design. If not registered, copyright ceases.
■​ Rejected trade secret claim due to lack of evidence of specific secrets or
confidentiality breach.
○​ Amicus/Class Critique:
■​ The court correctly followed Microfibers on the 15(2) issue.
■​ However, the case's weakness was Ritu Kumar's counsel not strongly
proving the trade secret/misappropriation aspect, especially regarding
access by former employees. This could have been a stronger line of
argument than relying on copyright for mass-produced, unregistered
designs.
■​ The case highlights the tension for designers: copyright for original sketch
vs. design rights for commercialized garment. Section 15(2) forces a
choice.
■​ The "capable of being registered" phrase in 15(2) is broad; a multi-factor
test considering creative intent, commercial vs. expressive nature, and
transformation might be better for hybrid works (art + applied design).

April 23, 2024 (End Term Review Session)

Exam Preparation, Design Philosophy, and Contemporary Issues

●​ Exam Pattern:
○​ Section A: Essay question (similar to midterm project, covering registration,
cancellation, novelty, legality of design).
○​ Section B & C: Choice between hypothetical problem and opinion/analysis for a
senior lawyer/judge, based on discussed case law.
●​ "Good Design" vs. "Well-Made Design":
○​ The essay might explore this. "Good design" goes beyond mere aesthetics or
being well-made.
○​ Dieter Rams' 10 Principles of Good Design (discussed as a framework):
1.​ Innovative: Solves a problem, not just new for newness's sake.
2.​ Makes a Product Useful: Enhances usability in the consumer's eyes, not
just basic utility.
3.​ Aesthetic: Essential for well-being; purity, not distraction.
4.​ Makes a Product Understandable: Simplifies, self-explanatory, not
abstract.
5.​ Unobtrusive: Neutral, doesn't impose, complements life. (Relates to
"right to repair" - design shouldn't lock users in).
6.​ Honest: Doesn't deceive about value or innovation. (Discloses material
source, adverse effects).
7.​ Long-lasting: Avoids being merely fashionable; timeless. (Sustainable
materials, justifies use).
8.​ Thorough down to the last detail: Completeness, precision, care.
9.​ Environmentally friendly: Conserves resources, minimizes pollution
throughout lifecycle. (No carbon footprint, no landfills).
10.​As little design as possible: Concentrates on essential aspects, back to
purity/simplicity. (Minimalism can be offensive if it strips meaning).
○​ Contemporary "Good Design": Includes sustainability, ethical sourcing (no
sweatshops), honesty (disclosing cultural origins), and addressing societal needs
(design for development).
●​ Startup IP Facilitators (India): Government-authorized agencies/startups that help
artisans and indigenous craftspeople commercialize their designs, ensuring benefit
sharing and protecting cultural identity. This is a semi-formal IP system working
alongside formal IP.
●​ Design Filing Trends in India:
○​ Increase in design filings (resident and foreign) in recent years, suggesting more
interest in the 15-year exclusivity.
 ○​ Decrease in copyright filings.
○​ This shift might indicate a move towards leveraging design protection for
commercial identity and pattern protection, possibly due to clearer (though
shorter) exclusivity compared to copyright complexities for applied art.
●​ Design & Development Agenda: "Good design" must align with a country's
development goals. IP is a tool to incentivize this, not impede it. If formal IP systems
don't serve progress, other innovation models may emerge.
●​ Examples of Award-Winning/Contemporary Designs (Illustrating Good Design
Principles):
○​ Soul Seat Mat (Zero Power Thermal Regulation): A foldable, solar-chargeable
mat for temperature control, aimed at refugees/migrants. Solves a governance
issue (housing, survival) with sustainable, portable design.
○​ Soluboard (Soluble Circuit Boards): Waterproof, dissolves rather than creating
e-waste, safe, recyclable. Addresses e-waste and climate impact.
○​ Aline Cool Lugs (Sustainable Packaging/Transport for Perishables): (Not
detailed, but mentioned in context of good design solving real-world problems).
○​ Hark (Hearing Aid Reimagined): Focuses on user experience and aesthetics to
destigmatize hearing aids.
○​ "One-Piece Peg": A clothes peg designed to pop apart without breaking and be
easily reassembled, promoting repairability and longevity. Contrasts with pegs
designed for obsolescence.
○​ Toy Train Example (Separability): Individual components (engine, bogies) can
be designed. The question is whether the design claim is for individual parts or
the assembled whole, and if parts have standalone commercial identity.
○​ Toy Carrier Truck Example (Accessory vs. Essential): Is the design for the
carrier, the toy cars inside, or the combination? If cars are generic and carrier is
specific, or vice-versa. Relates to spare parts vs. integrated designs.
○​ Teenage Mutant Ninja Turtles / Spice Girls / BTS (Individualized Characters
as Merchandise): Each character has a distinct design, allowing individual sale
and collection, but also forming a set. Individual character is key to commercial
value.
 ○​ Food Design (Cookie Cutters vs. Finished Product): Cookie cutters are molds
(not designs under Microfibers). The finished cookie/cake with a unique applied
pattern/shape could be a design, if it meets novelty and is sold as such.
●​ Enforcement & Piracy (General Harms): Weak enforcement leads to brand dilution,
market confusion, reduced incentive to file, supply chain disruption (grey/black markets),
and potential consumer harm from low-quality fakes.​

○​ Criminal Remedies: Important for design piracy. Sabyasachi case involved

seeking seizure and destruction of fakes due to consumer deception and brand
harm.

April 24, 2024

Design Law: Contemporary Challenges, Well-being, and Technology Integration

●​ The Evolving Role of Design & IP:

○​ Design law is not static; it must adapt to technological advancements and societal
shifts (e.g., AI, data privacy, sustainability).
○​ The traditional North-South IP divide (developed vs. developing countries) is
blurring as production costs and consumer access change.
●​ Case Study: "Aum Voice Prosthesis" (Dr. Vishal Rao - discussed by instructor)
○​ Problem: High cost of voice prosthetics for throat cancer patients in India,
making them inaccessible to many.
○​ Solution: Dr. Rao developed an extremely low-cost (around $1) voice prosthesis
by focusing on essential function and using culturally resonant design thinking.​

■​ He realized the scientific/medical perspective wasn't enough; he needed to

understand the user's experience and cultural context.
■​ He collaborated with traditional Channapatna toymakers to design the
inserter part using wood, making it familiar, lightweight, and effective.
 ■​ The device is named "Aum" (drawing on Indian spirituality/sound) for
international marketing, and "Sushrut" (ancient Indian surgeon) in the US,
grounding it in cultural identity while appealing globally.
○​ IP Strategy: He claimed IP on the shape of the voice box, not the culturally
derived inserter, allowing room for others to innovate while protecting his core
contribution.
○​ Impact: Made voice restoration accessible, demonstrating "design for
development" and responsible innovation. This project involved state
collaboration for distribution in government hospitals.
○​ Significance: Shows how design can solve critical health/social problems
affordably by integrating technology, cultural understanding, and user-centric
approaches, challenging the high-cost model of Western medical devices.
●​ Design for Well-being & Ethical Considerations:
○​ Social Robots/Assistive Technology (Instructor's Project Area):
■​ Companion robots for childcare or eldercare are emerging, especially in
countries with aging populations like Japan.
■​ Design Challenge: The visual appeal and emotional mirroring capabilities
of these robots are crucial for adoption. The design aims to make the robot
"human-like" enough to be accepted.
■​ Ethical Concerns: Data privacy (robots collect vast personal data),
potential for misuse, impact on human relationships, defining "humane"
technology. Regulation struggles to keep pace.
■​ India's data protection laws are currently seen as more advanced than
Europe's in some aspects.
○​ The case of "Sophia" the robot (Saudi Arabian citizenship) raises questions about
AI rights and personhood.
●​ Proprietor Strategies for Design Protection (Beyond Formal Registration):
○​ Due to piracy and weak enforcement, proprietors are proactively using
technology.
○​ Design Management Software: To track products through the supply chain.
 ○​ Digital Ledgers (Blockchain): For transparency, tracking lifecycle, reuse,
modification history.
○​ Embedded Digital Watermarks/NFC/RFID: Invisible marks or chips to prove
authenticity, track origin, and combat counterfeiting, especially in export markets.
○​ Algorithmic Fabric Imprinting & Image Recognition: Using AI to create
unique fabric patterns and use pattern matching to detect copies.
○​ Proactive Customer Service: Informing consumers about authorized
repair/replacement channels to maintain quality control and prevent use of
counterfeit parts.
○​ SIPP (Scheme for Facilitating Start-ups Intellectual Property Protection) in
India: A government initiative to help startups (including artisan groups) protect
and commercialize their IP, often involving technology integration for tracking
and authentication. This makes proprietors "technology proficient."
●​ Economic Impact of Poor Design Enforcement / Piracy:
○​ Reduces incentive to file/innovate if designs are easily copied.
○​ Supply chain disruption, rise of grey/black markets.
○​ Fabrication costs for infringers are low, especially with technologies like 3D
printing (though 3D printing can also be "good fabrication" for legitimate,
cost-effective solutions like custom medical devices or affordable housing
components).
○​ "Fakes" vs. "Fabs" (fabulous replicas/innovations).
●​ Conclusion of Course Themes:
○​ Design law is multi-faceted, involving legal principles, commercial realities,
technological advancements, and ethical considerations.
○​ The Indian Designs Act, 2000, is seen as a well-drafted law that has evolved but
avoids direct conflict with other IPs by clear definitions.
○​ The key is understanding the "performance of the design" (its commercial
identity, visual appeal, novelty) rather than just the designer's fame or the article's
basic function.
○​ "Design for development" and sustainability are increasingly important global
norms.