Registering the look of a product under the Designs Act, 2000

Section 2(d) defines a design by what it covers and by what it leaves out. It covers only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, in two dimensional or three dimensional form or both, 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.

It leaves out any mode or principle of construction and anything which is in substance a mere mechanical device. It also leaves out a trade mark as defined in the Trade and Merchandise Marks Act, 1958, a property mark as defined in section 479 of the Indian Penal Code, and any artistic work as defined in section 2(c) of the Copyright Act, 1957. A logo applied to a bottle is a trade mark question. Where a drawing or an artwork sits on the line, the Cryogas case below shows how the Supreme Court says the line is tested.

The article is defined in section 2(a) as any article of manufacture and any substance, artificial or partly artificial and partly natural, and it includes any part of an article capable of being made and sold separately. A cap, a handle or a spare part that is made and sold on its own can therefore carry its own registration. Under section 2(g), original means originating from the author of the design, and it includes cases which, though old in themselves, are new in their application.

The proprietor is identified by section 2(j). Where the author executes the design for good consideration for another person, that person is the proprietor. Where a person acquires the design or the right to apply it, that person is the proprietor to the extent acquired. In any other case the author is the proprietor. A company that pays an outside studio for a pack shape is therefore the proprietor under the first limb, and it proves that with the written commission.

Section 4(b) bars a design that has been disclosed to the public anywhere in India or in any other country by publication in tangible form, by use or in any other way, before the filing date or, where applicable, the priority date. Section 5(1) repeats the point by allowing registration only of a design not previously published in any country. A product launch, a sale to the public, a printed catalogue or a foreign patent document can each be the disclosure. In Bharat Glass the party attacking the registration relied on a German manufacturer's catalogue, a letter, and a document downloaded from the UK Patent Office website.

Section 4(c) adds a separate bar for a design that is not significantly distinguishable from known designs or a combination of known designs. The Supreme Court's reasoning in Bharat Glass records that the evidence offered against the registration was inconclusive and distinguishable from the registered design, and that the actual glass sheets embodying the two designs had not been compared directly. A challenger or a defender who wants to win on this ground needs the finished articles side by side.

Three provisions give a way out of an apparent disclosure. Section 16 says that three things are not a publication that invalidates the copyright if registration is obtained afterwards: a disclosure by the proprietor to another person in circumstances that would make it contrary to good faith for that person to use or publish the design, a disclosure in breach of good faith by anyone other than the proprietor, and the acceptance of a first and confidential order for articles bearing a new or original textile design intended for registration.

Section 21 protects exhibition at an industrial or other exhibition to which the Central Government has extended the section by notification in the Official Gazette, provided the exhibitor gives the Controller previous notice in the prescribed form and applies for registration within six months from the date of first exhibiting. Section 44 gives priority to a person who applied in the United Kingdom or another convention country, if the Indian application is made within six months of that first application. The same section denies damages for piracy that happened before the actual date of registration in India.

The Controller of Designs is the Controller-General of Patents, Designs and Trade Marks under section 3(1), and the Central Government may appoint examiners under section 3(2). Under section 5(2) the application is in the prescribed form, filed in the patent office in the prescribed manner with the prescribed fee. Under the proviso to section 5(1), the Controller refers it to an examiner on whether the design can be registered and considers the examiner's report before registering.

Section 5(3) allows a design to be registered in not more than one class, and the Controller may decide a doubt about the class. Section 6(1) lets a design be registered for any or all of the articles in a prescribed class, and section 6(2) makes the Controller's decision on which class an article falls in final. Under section 6(3), extending a registered design to other articles in the same class cannot be refused or invalidated merely because the design was previously registered or was applied to the earlier article, but the extension does not lengthen the period of copyright. The classification itself is prescribed and is not printed in the Act.

An application that is not completed within the prescribed time because of the applicant's default or neglect is deemed abandoned under section 5(5). Once registered, the design is registered as of the date of the application under section 5(6). The Controller may refuse registration under section 5(4), and under section 35(1) may refuse a design whose use would in his opinion be contrary to public order or morality. Each refusal is appealable to the High Court under sections 5(4) and 35(2).

After registration the Controller causes the prescribed particulars to be published under section 7, and the design is then open to public inspection. Section 9 provides for the certificate of registration, and section 10 for the register of designs kept at the patent office, which is prima facie evidence of any matter the Act directs to be entered in it. Sections 17 and 18 let any person inspect a design during the existence of copyright and ask whether a registration still exists and for which classes of articles, which makes them the search to run before tooling.

Section 2(c) defines copyright in this Act as the exclusive right to apply a design to any article in any class in which the design is registered. Under section 11(1) the registered proprietor has it for ten years from the date of registration. Under section 11(2), if an application is made to the Controller before those ten years expire, the Controller on payment of the prescribed fee extends the period for a second period of five years from the expiration of the original period.

If the extension fee is not paid, the design ceases to have effect. Section 12 allows the proprietor or the legal representative to apply for restoration within one year from the date on which the design ceased to have effect, with a verified statement of the circumstances. Under section 13 the Controller restores the registration if satisfied that the failure to pay was unintentional and that there was no undue delay in applying, on payment of the unpaid fee and the prescribed additional fee.

Section 14(2) says no suit or proceeding may be commenced for piracy or infringement committed between the date the registration ceased to have effect and the date of restoration, and section 14(1) lets the Controller impose conditions to protect persons who began to use the design in that gap. Diarise the tenth anniversary, because piracy during a lapse cannot be sued on.

Section 15 sets two duties before delivery on sale of articles bearing a registered design. If exact representations or specimens were not furnished with the application, the proprietor must furnish them, and if he does not, the Controller may after notice erase his name from the register and the copyright then ceases. The proprietor must also mark each article with the prescribed mark or words or figures denoting that the design is registered. If he does not, he cannot recover any penalty or damages for infringement unless he shows that he took all proper steps to ensure the marking, or that the infringement took place after the infringer knew or had notice of the copyright.

Section 22(1) makes three things unlawful while copyright subsists. The first is to apply the design, or a fraudulent or obvious imitation of it, to any article in a class in which it is registered for the purpose of sale without the registered proprietor's licence or written consent, or to do anything to enable that. The second is to import for sale an article in the registered class bearing the design or such an imitation without consent. The third is to publish or expose for sale such an article knowing that the design or an imitation has been applied without consent.

For every contravention, section 22(2) gives the proprietor a choice. Under clause (a) the proprietor can claim a sum not exceeding twenty-five thousand rupees, recoverable as a contract debt, but the total sum recoverable under that clause for any one design is capped at fifty thousand rupees. Under clause (b) the proprietor can instead sue for damages and an injunction against repetition. The second proviso says that no suit under the sub-section may be instituted in any court below the court of District Judge. A decree is sent to the Controller under section 22(5) for entry in the register.

A defendant can answer under section 22(3), which makes every ground on which registration may be cancelled under section 19 available as a defence. Section 22(4) then provides that, notwithstanding the second proviso, a suit in which such a ground is taken is to be transferred by the court to the High Court for decision. S.D. Containers v. Mold Tek, below, shows the Supreme Court enforcing that transfer. The Madras High Court's judgment in M.C. Jayasingh v. Mishra Dhatu Nigam Ltd., C.S. No. 562 of 2007, decided on 23 January 2014, shows what follows when the defence is not taken. The defendants had pleaded no section 19 ground, so the court treated the registered design as valid. It still dismissed the suit on infringement. The plaintiff had to show that the defendant's shape or configuration was similar and that the similarities strike the eye, and a prosthesis takes its shape from the bone it replaces, so broad overall similarity was not enough without evidence of copying. The plaintiff had never seen the defendant's product and produced only photographs and a sketch that the court would not rely on.

Design disputes are also commercial disputes under section 2(1)(c)(xvii) of the Commercial Courts Act, 2015, which lists intellectual property rights relating to design among them. That is why the question in S.D. Containers was whether a notified Commercial Court could keep the suit or whether section 22(4) took it away. At the interim stage, the Madras High Court, in the suit brought by Maya Appliances Private Limited (O.A. No. 920 of 2023 in C.S.(Comm.Div.) No. 258 of 2023, decided on 2 April 2024), refused an injunction on registered gas stove designs and a patent. The defendants had filed prior art documents, and whether those matched the designs needed expert evidence and trial. The court ordered the defendants to keep accounts of their sales of the impugned stoves until the suits are decided.

Section 19(1) lets any person interested present a petition to the Controller for cancellation at any time after registration, on five grounds: the design was previously registered in India, it was published in India or elsewhere before the date of registration, it is not new or original, it is not registrable under the Act, or it is not a design as defined in section 2(d). Section 19(2) provides an appeal from the Controller's order to the High Court, and lets the Controller refer any such petition to the High Court, which then decides it. No tribunal sits between the two: the Controller decides first and the High Court hears the appeal. In Paresh Ajitkumar Kapoor v. Controller of Patents and Designs and others, AID No. 5 of 2023, decided on 24 May 2024, the Calcutta High Court set aside a Deputy Controller's cancellation of a registered air cooler design. The Deputy Controller had relied on the design's registration in China and a snapshot of the Chinese register's website. The High Court held that a foreign registration is not itself a ground under section 19(1), that publication must be in tangible form and of the design applied to the same article, and that the unverified two dimensional pictures, with no proved translation, were inadmissible and did not show it. The court said its findings on the merits were prima facie and not binding, and sent the petition back to the Controller to be decided afresh within eight weeks.

Section 36 governs every appeal that the Act sends to the High Court. The appeal is to be made within three months of the date of the Controller's order, and the time taken to obtain a copy of the order is excluded. The High Court may take the assistance of an expert, and its decision is final. The High Court may also make rules for the procedure of proceedings before it.

Which High Court is a separate question. Section 2(e) gives High Court the meaning in the Patents Act, 1970, where section 2(1)(i) defines it, in relation to a State or Union territory, as the High Court having territorial jurisdiction there. In Godrej Sara Lee v. Reckitt Benckiser, below, the Controller of Designs at Kolkata had cancelled registrations and the Supreme Court held the appeal lay to the Calcutta High Court and not the Delhi High Court.

Section 31 is a different remedy. The Controller can rectify the register on the application of a person aggrieved by an omission, an entry made without sufficient cause, an entry wrongly remaining, or an error or defect in an entry, with an appeal to the High Court. Section 31(5) says nothing in that section allows the Controller to make an order cancelling a registration as provided in section 19, so a challenge to validity goes through section 19.

Section 15(1) of the Copyright Act, 1957 says copyright under that Act does not subsist in a design registered under the Designs Act, 2000. Section 15(2) says that copyright in a design which is capable of being registered under the Designs Act but has not been registered ceases as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or by another person with his licence.

A shape that is run off a production line and was never registered has copyright protection only until it has been reproduced more than fifty times. After that the owner has no design registration to fall back on and no copyright either. Registering before the first production run keeps the Designs Act remedy of section 22 available, and marking under section 15 of the Designs Act keeps the damages claim intact. In Microfibres Inc. v. Girdhar & Co., RFA (OS) No. 25 of 2006, decided on 28 May 2009, when section 15 still named the Designs Act, 1911 (Act 27 of 2012 later substituted the Designs Act, 2000), a Division Bench of the Delhi High Court held the same: a design that is registrable but unregistered loses copyright under the Copyright Act once the fifty times limit is crossed, while an original artistic work such as a painting keeps its full copyright term even when it is used to produce articles industrially.

The hard cases are drawings and engineering documents, where the owner says the work is an artistic work and the opponent says it is a design that has been industrially applied. In Cryogas Equipment Private Limited v. Inox India Limited, 2025 INSC 483, the Supreme Court declined to settle that on the pleadings and set out a two-step inquiry for trial. The case is summarised below from the designs side.

Section 30 governs who holds the design after a deal. A person who becomes entitled by assignment, transmission or operation of law applies in the prescribed form to the Controller to register his title, and a mortgagee, licensee or other interest holder can apply to have notice of the interest entered. Under section 30(3) an assignment, mortgage or licence is not valid unless it is in writing and the agreement is reduced to an instrument embodying all the terms, and the application to register the title is filed within six months from execution, or within such further period, not exceeding six months in aggregate, as the Controller allows. On entry, the instrument takes effect from the date of its execution. Under section 30(5), an unregistered instrument is not admitted in evidence of title unless the court for reasons recorded in writing directs otherwise.

Before registration, section 8 lets the Controller direct that the application proceed in the name of a claimant who, by assignment or written agreement or operation of law, would be entitled to the design if it were registered. Registered designs bind the Government like any person under section 20. Section 23 applies the Patents Act remedies on certificates of validity and groundless threats of legal proceedings to registered designs, so a cease-and-desist letter on a design should be drafted with the groundless-threats remedy in mind.

Search the register and the published particulars before the tooling order. Record in writing the date and recipients of every disclosure made before filing, since that record is what section 16 needs. File before launch, or inside the six months allowed after a notified exhibition or a foreign filing. Mark the articles as section 15 requires, and keep the certificate, the specimens and dated sales records. Those are the records a piracy suit under section 22 will rest on.