IPR
Topic 64 What is Design
Topic 64 — What is a Design: Subject Matter and Originality
At the heart of design law lies a deceptively simple question: what counts as a "design"? Section 2(d) of the Designs Act 2000 provides the statutory definition, but the boundaries — particularly between aesthetic and functional features, between "shape" and "configuration", between "pattern" and "ornament" — have generated substantial Indian and international jurisprudence. Section 2(g) defines "original" — a separate and equally important threshold for protection. Section 4 sets out the prohibitions: not new/original, prior disclosure, not significantly distinguishable, scandalous/obscene. The Bombay HC in Pidilite v. Astral (13 June 2024), the Calcutta HC in UST Global v. Controller (20 March 2023, GUIs), and the Bombay HC in Travel Blue v. Miniso (31 July 2025) have substantially developed the operational boundaries. This topic walks through every aspect of design subject matter, the originality test, the functional-vs-aesthetic distinction, the GUI breakthrough, and the 2024-25 jurisprudence.
1. The Five Components of Design
Section 2(d) lists five aesthetic categories that can constitute a "design":
1 SHAPE 3D form | 2 CONFIGURATION 3D arrangement | 3 PATTERN repeating motif |
4 ORNAMENT decorative element | 5 LINES/COLOURS 2D composition |
A. Shape and Configuration
Shape and configuration both relate to 3D form, but with subtle distinction:
- Shape — the overall 3D contour of the article (the silhouette of an iPhone).
- Configuration — the arrangement of components in 3D (the layout of a multi-component product).
✅ Shape vs. configuration in practice A bottle has a "shape" — its overall contour. A chess set has a "configuration" — the arrangement of pieces relative to each other. A computer mouse has both — its overall shape (curved, ergonomic) and its configuration (button placement, scroll wheel position). Many design registrations cover both shape and configuration; the operative test is whether either or both contribute to ocular appeal. |
B. Pattern and Ornament
Pattern and ornament both relate to 2D decorative elements:
- Pattern — repeating motif applied to surface (textile patterns, wallpaper, decorative tiles).
- Ornament — decorative non-functional element (chair leg carving, vase decoration, watch face details).
C. Composition of Lines or Colours
The 2000 Act explicitly added "composition of lines or colours" — protecting:
- Distinctive colour combinations applied to articles.
- Linear graphic designs.
- Modern graphic design contexts including potentially GUIs and icons.
2. The "Judged Solely by the Eye" Test
A. The Operational Standard
The phrase "appeal to and are judged solely by the eye" is the foundation of design law. The standard:
- Visual appeal — the design must please the eye in some way.
- Eye-only test — judged by visual perception, not technical measurement.
- Average consumer perspective — the relevant person is the ordinary purchaser, not a designer or technical expert.
- Holistic assessment — the design assessed as a whole, not by dissecting individual features.
📖 Pidilite Industries Ltd. v. Astral Limited, 2024 (Bom HC, 13 June 2024) Facts — Pidilite (M-SEAL PV SEAL) sued Astral for copying its registered container design. Astral admitted similarity but challenged the registration on grounds of lack of visual appeal, prior publication, and absence of novelty. Holding — Bombay HC reaffirmed that visual or "ocular" appeal is the core of design protection under Section 2(d). The Court held that: (i) A design must appeal to the eye AS A WHOLE — applying objective standard rather than subjective impressions. (ii) Dissecting a design into parts or "mosaicing" prior designs is impermissible — novelty must be assessed on the overall visual impression. (iii) Pidilite's patent filing was confidential and did not visually disclose the product's appearance — so no prior publication. Order — Interim injunction granted restraining Astral from using the impugned design. Significance — Recent (2024) reaffirmation of the "design as a whole" doctrine. Confirms that ocular appeal is the ultimate test of validity. Explicitly rejects "dissection" or "mosaicing" approaches. |
B. The Average Consumer Perspective
Indian courts apply an "average consumer" standard — similar to trademark law's "reasonable consumer with imperfect recollection". The relevant viewer:
- Has ordinary perception, not specialised design training.
- Sees the article in normal use conditions.
- Forms overall impressions, not detailed analysis.
- May have imperfect memory of specific features.
3. Functional vs. Aesthetic — The Boundary
A. The Statutory Bar
Section 2(d) explicitly excludes from "design":
- Mode or principle of construction.
- Anything which is in substance a mere mechanical device.
These exclusions implement a fundamental principle: design law protects aesthetics, not function. Functional features that achieve technical results should be protected by patents (if patentable) or remain in the public domain. Design protection cannot be used to monopolise functions.
B. The "Solely Dictated by Function" Test
✅ Travel Blue v. Miniso (Bom 31 July 2025) — the operative test The Bombay HC in Travel Blue Products v. Miniso Life Style (31 July 2025) clarified the functional/aesthetic boundary: "A design that has eye appeal will be excluded from registration only if its EVERY FEATURE is dictated solely by function. This is the case where there are limited ways to achieve a particular function. However, consider a textured knife handle that improves grip. This may still qualify for protection if other visually distinct patterns could serve the same purpose." Key points: · Designs are not excluded merely because they have some function. · They are excluded only if EVERY feature is functionally dictated. · Where alternative aesthetic solutions exist for the same function, the design is protectable. · This protects functional-aesthetic articles like watches, bottles, electronic devices. |
C. International Comparators
Jurisdiction | Functionality Test |
|---|---|
India | Excluded only if EVERY feature dictated solely by function (Travel Blue 2025). |
EU (CDR Article 8(1)) | Features solely dictated by technical function excluded. |
US (TrafFix v. MDI 2001) | Features essential to use or purpose, OR affect article cost/quality, excluded. |
UK | Features solely dictated by technical function excluded. |
4. Section 2(g) — "Original" Definition
‘Original [Section 2(g)]’ — 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. |
A. Two Distinct Requirements
1 AUTHOR ORIGIN created by the author | 2 NEW APPLICATION old design, new context |
- Author origin — the design must originate from the author (not copied from elsewhere).
- New application — old designs may be original if applied in new contexts.
✅ "New in application" — the unique Indian doctrine Section 2(g) is unusual internationally. Most patent and design jurisdictions require absolute novelty — a design previously published anywhere is not protectable. India's "new in application" formulation is more flexible — even a known design pattern can be original if applied to a new article. For example, a traditional rangoli pattern applied to a smartphone case for the first time may be "original" in the design law sense, even though the pattern itself is old. This protects the application but not the underlying motif. |
B. Author of the Design
The "author" is the person who created the design. In commercial contexts:
- Industrial designer working under contract — the contracting party (employer/commissioner) typically owns the design.
- Employee designer — employer owns by virtue of employment relationship.
- Independent designer — designer owns unless contractually assigned.
5. Section 4 — Detailed Analysis of Registration Prohibitions
A. Section 4(a) — Not New or Original
A design that is not new (anticipated by prior public availability) or not original (copied from another) cannot be registered.
B. Section 4(b) — Prior Disclosure
Section 4(b) "... has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration..." |
Section 4(b) implements absolute novelty — disclosure ANYWHERE in the world destroys novelty. The disclosure can be:
- Publication in tangible form — magazines, books, brochures, online publications.
- Use in public — sale, demonstration, exhibition.
- Other modes — third-party patent applications, trade publications.
📖 Paresh Ajitkumar Kapoor v. Controller of Patents & Designs, May 2024 (Cal HC) Facts — Industrial air cooler design registration was cancelled by the Controller. The design had appeared on a foreign website. Plaintiff appealed to Calcutta HC. Holding — Calcutta HC held that merely displaying a design on a foreign, unverified website does not constitute prior publication under Section 4(b). The Court set aside the cancellation, noting that: (i) Foreign registration alone does not justify cancellation. (ii) Photographs submitted as evidence were insufficient — they did not clearly depict the design in 3D or its application to the article. (iii) Prior publication must be evidenced through reliable, verifiable sources. Significance — 2024 clarification on prior publication standard. Foreign websites and photographs are insufficient without verification of authenticity, date, and clear visual depiction. |
C. Section 4(c) — Not Significantly Distinguishable
A design must be significantly distinguishable from known designs (or combinations of known designs). Mere variations or trivial modifications do not qualify. The test:
- Compare the new design to closest prior art.
- Identify the differences.
- Assess whether the differences are "significant" — i.e., substantial enough to differentiate visually.
- Trivial modifications — minor proportional changes, adding ornamentation — typically fail.
D. Section 4(d) — Scandalous or Obscene
Designs containing scandalous or obscene matter are unregistrable. The standard parallels Section 9(2)(c) of the Trade Marks Act 1999 — public order and morality test.
6. GUIs and Modern Design Subject Matter
A. The Calcutta HC Breakthrough
📖 UST Global (Singapore) Pte Ltd v. Controller of Patents & Designs, 2023 (Cal HC, 20 March 2023) Facts — UST Global applied for design registration of a Graphical User Interface (GUI). The Controller refused, holding that GUIs and icons are not capable of registration under the Designs Act. Holding — Calcutta High Court (Justice Ravi Krishan Kapur) reversed the refusal. Key holdings: (i) A GUI is a 2D design whose novelty can be judged as soon as the device is turned on. (ii) The process of applying a GUI to a finished article is a "mechanical and manual process" within the definition of "industrial process" in Section 2(d). (iii) GUIs are "applied" to articles (smartphones, tablets, screens) through software — qualifying as designs. (iv) The source code embedded in the device produces the GUI through illuminating pixels electronically — this is industrial application. Significance — GROUND-BREAKING decision. Confirmed GUI registrability under Indian Designs Act. Opens the door for digital design protection. Aligns India with EU and US practice (where GUI design protection is well-established). |
B. Implications for Digital Design
Post-UST Global, GUI design registrations have grown rapidly:
- Apps icons can be registered as designs.
- Distinctive UI layouts (dashboards, navigation patterns) protectable.
- Mobile app interfaces can claim design protection alongside copyright.
- Wearable device displays (smartwatch faces) are emerging registrable subject matter.
✅ Filing GUIs — practical guidance For GUI design applications: · File in Locarno Class 14 (or 32 for icons). · Provide multiple views — different states/screens of the GUI. · Use solid lines for protected features; dashed lines for unprotected device frame. · Include the device on which GUI is displayed (typically smartphone outline). · Distinguish from prior similar GUIs through unique visual elements. · Combine with copyright protection (GUIs are also protectable as artistic works). · Combine with trademark protection where the GUI also functions as source identifier. |
7. Designs vs. Trade Dress vs. Copyright
Feature | Design (Designs Act 2000) | Trade Dress (TM Act 1999) | Artistic Work (Copyright Act 1957) |
|---|---|---|---|
Subject | Aesthetic features of articles | Source-identifying packaging/get-up | Original artistic creation |
Test | Visual appeal; new/original | Distinctiveness; secondary meaning | Originality (low threshold) |
Term | 10 + 5 = 15 years | 10 years renewable indefinitely | Life + 60 years (artistic works) |
Registration | Required | Available; not always required (passing off) | Optional |
Function | Limit on functional features | Limit on functional features (Section 9(3)) | Limit on industrial application (Section 15(2)) |
Industrial application? | Yes — by design | Yes — by trade use | Yes — but converts to design after 50 reproductions (Section 15(2)) |
A. Section 15(2) of Copyright Act 1957 — The Crossover
Section 15(2) of Copyright Act 1957 "Copyright in any design, which is capable of being registered under the Designs Act, 1911 (which has been since replaced by the Designs Act, 2000), but which has not been so registered, shall cease 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, with his licence, by any other person." |
Section 15(2) is critical. It provides that copyright in industrial designs lapses after 50 reproductions if not registered as a design. This forces creators of industrial designs to choose:
- Register as a design — protected for 15 years; copyright extinguished post-50-reproductions.
- Do not register as design — copyright lasts life + 60 years, but lapses after 50 reproductions.
8. Practical Considerations
✅ Twelve points for design subject-matter strategy Identify the aesthetic features clearly — shape, configuration, pattern, ornament, lines/colours. Avoid focus on functional features — emphasis on visual/ocular appeal. For functional articles (smartphones, watches), identify aesthetic elements that differentiate from function. For GUIs, file in Locarno Class 14 with multiple state-specific drawings. For 2D patterns, ensure repeat unit is clearly defined. For 3D designs, provide multiple views — front, back, top, side, bottom, perspective. Use disclaimers to exclude trademarks, mechanical features, or non-design elements. For known designs in new applications, leverage Section 2(g) "new in application" doctrine. Document originality — sketches, design briefs, dated documents establish authorship. For commercial designs, ensure proper assignment from individual designer to company. Plan for combination filings — design + trademark + copyright where applicable. For Section 4(b) prior disclosure, conduct search of foreign databases, trade publications, online platforms. |
🎯 EXAM POINTERS — TOPIC 64
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