[The Viewpoint] What makes for ‘new or original’: Design protection in India

Novelty or originality in design are central requirements for seeking protection under the law in India. Under the Designs Act, 2000 (“the Act”), for a design to be capable of being registered, it must be new or original. In common usage, the words ‘novelty’ and ‘originality’ are often used interchangeably, but in law, they have nuanced differences that have developed over time. In this note, we reflect on some cases that highlight these requirements in design law.

The term “new” is commonly understood to refer to a design that is not known or is completely new. The term “original” is defined in Section 2(g) of the Act as, “in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application”.

It follows that a "new" design is one that comes into public knowledge for the first time upon registration, whereas an “original” design may not be strictly new, but there is newness or originality in applying an existing design to a particular article which no one thought of before. Courts have recognized that an old design applied to a new article to which it has never been previously applied is protectable, provided it is not merely analogous.

In Asian Rubber Industries v. Jasco, the validity of the plaintiff’s footwear design was challenged on grounds that it was not new or original as it was developed from ‘padukas’, known since centuries. The Court took the view that the plaintiff had no claims of being the inventor of ‘padukas’ but claimed exclusivity in the ‘creative expression’ and the ‘look and feel’ of their products. Further, the look and feel of padukas with the modification of strap to support the foot was not known to have been applied to footwear. Accordingly, the application of the paduka design to footwear would qualify as designs that are old yet original in their application. Hence, the design was covered by the meaning of 'original' under the Act.

In Havells India Limited vs. Panasonic Life Solutions India Pvt. Ltd., the design under challenge was marble/stone pattern printed on fan blades. The defendant contended that no monopoly can be claimed over a concept, i.e., stone/marble print, which is commonplace or exists in nature. However, applying the same principle as in Asian Rubber Industries, the Delhi High Court decided in favour of the plaintiff.

For a design to be considered new or original: (i) it must not have been disclosed to the public, anywhere in India or in any other country, by publication or by use or in any other way, prior to the filing date or priority date, and (ii) it must be significantly distinguishable from known designs or combination of known designs.

The word “published” is not defined in the Act. (Presently, prior publication is determined globally, although under the repealed Designs Act, 1911, this was restricted only to India). In Venus Industries Vs Magppie Exports, the Controller held that while there is no statutory definition of publication in the present or repealed Design Acts, any design, made available to any person in India who is free to use or disclose it, is treated as published.

It is pertinent to note that prior registration of a design in India, would also amount to publication. However, a prior registration in a foreign country may not amount to prior publication. In Reckitt Benckiser India Ltd. vs. WYETH Ltd., the full bench of Delhi High Court unanimously held that a mere registration abroad would not be a ground for cancellation of the design in India unless it is shown that publication was prior to the registration date of the same or similar design in India.

Moreover, prior publication must be in a ‘tangible form’ and in Bharat Glass Tube Limited vs. Gopal Glass Works Limited, the Court observed that two things must be disclosed in the prior publication: the design itself, and the same article to which the design is to be applied. To destroy the novelty of a design, the prior published design must be in respect of the same article.

A prior published document which does not explicitly disclose the design, but implicitly suggests how the pattern, shape and/or configuration which constitutes the design is to be applied to an article, could be considered as relevant prior publication. The only requirement is that there must be clear and unmistakable directions present in the document to arrive at the design. In Kamdhenu Limited vs. Aashiana Rolling Mills Ltd., novelty was claimed in the surface pattern of ribs on steel rods. The Delhi High Court held that this pattern was based on prescribed product standards with a reasonable degree of specificity and therefore, it could not be accepted as original or novel.

In order to establish ‘new or original’ there must be a significant change or difference in the design as compared to known designs and mere trade variants may not meet the test of new or original.

In Bright Auto Industries vs. Raj Chawla, the Delhi High Court held that a slight variation in the registered design from a pre-existing design would not qualify for registration. The Court held that ‘substantial difference’ is a question upon which no general principle can be laid down at all and depends on the facts of each case. In some cases, a small variation may be enough to make the design different from an existing design; on the other hand, even large alterations in details may leave two designs the same. In this case, the Court observed that the innovation by adding a curve here or there in a well-recognized shape of an article of common use (here, a rear-view mirror) was not substantial to hold the design new or original; and that a trivial or infinitesimal variation from a pre-existing design will not qualify it for registration.

To determine whether the design is prior published or significantly distinguishable from known designs, the Courts apply the “eye test” or “ocular impression” to determine the visual effect and appeal of the designs. This test is applicable for judging novelty and originality, as well as for determining infringement.

For infringement, the ocular comparison of the infringing design vis-à-vis the registered design is from the perspective of the “eye of purchaser”. However, when determining novelty or originality of a design against a prior known design, the eye should be an “instructed eye” or an eye of a person aware of the known designs and the common trade variants.

In order to qualify as ‘new’ or ‘original’, a design must be substantially different from existing designs and should not be a mere trade variant. This determination is based on the ‘ocular impression’ of an informed person who is capable of discerning between common design variations and something substantial.  In order to challenge the novelty or originality of a registered design, the prior publication must be tangible, in that it must disclose the design applied to the same article.

Sneha Agarwal is a Partner at Obhan & Associates.