Case Law Shaping Indian Design Jurisprudence
CASIO KEISANKI KABUSHIKI KAISHA D/B/A CASIO COMPUTER CO. LTD. Vs RIDDHI SIDDHI RETAIL VENTURE AND ANR. [Delhi High Court, 7th February 2023]
Casio sued defendants for selling “Nexus32” keyboards that allegedly copied Casio’s registered design (Design No. 224547). The defendants argued Casio’s design lacked novelty and resembled other keyboards in the market, but the Delhi High court granted Casio an ex-parte ad-interim injunction restraining the defendants from manufacturing or selling their “Blueberry Nexus32” keyboards.
Relying on the “eye of the common purchaser” test, the court held that a prima facie case of design piracy under Section 22 of the Designs Act, 2000 was made out. The defendants’ plea of prior publication was rejected for want of credible evidence at the interim stage, and the court reiterated that trivial variations cannot negate infringement, ultimately extending interim relief in favour of Casio and affirming robust protection for registered industrial designs against deceptive look-alikes.
UST GLOBAL (SINGAPORE) PTE LTD Vs THE CONTROLLER OF PATENTS AND DESIGNS AND ANR. [Calcutta High Court, 20th March 2023]
Design Application No. 298921 titled “Touch Screen” was filed by UST Global (Singapore) Pte Ltd in 2017 for a Graphical User Interface (GUI). The Controller of Patents and Designs rejected the application, holding that the GUI was visible only when the device was turned on and was created through software development rather than an industrial process, making it ineligible for design registration.
UST Global appealed to the Calcutta High Court, arguing that a GUI is an aesthetic feature applied to an article, capable of industrial manufacture, and influences consumer perception. The Court noted that the GUI, being a two-dimensional design, can be visually judged when the device is on, and that embedding the software into hardware qualifies as an industrial process under Section 2(d) of the Designs Act, 2000.
Relying on Re: Apple Computer Inc.’s Design Applications, the Court held that GUIs integrated into devices can be registered as designs. It also observed that similar registrations exist in the USA and EU. Accordingly, the High Court set aside the Controller’s order and remanded the matter for fresh consideration.
This decision is a key development for digital design protection in India, signaling wider acceptance of GUIs and other visually appealing software-based features as registrable designs.
THE RARING CORPORATION AND ANR Vs. NEOGIE ENGINEERING WORKS PVT LTD
[Calcutta High Court, 20th June2023]
The plaintiffs, owners of a registered design for a “Sonic Nozzle” used in dust-suppression systems, alleged that the defendant’s nozzle copied the essential visual features of their design. The defendant argued that the nozzle’s shape was purely functional and that similar designs had been previously published. The Calcutta High Court rejected both defences, holding that the function could be achieved through alternative shapes and that no credible prior publication was shown. Applying the “overall visual impression” test, the Court found substantial similarity between the products and granted an interim injunction restraining the defendants from manufacturing or selling the impugned nozzle.
PARESH AJITKUMAR KAPOOR VS CONTROLLER OF PATENTS AND DESIGNS AND ORS.
[Calcutta High Court, 24thMay 2024]
The Calcutta High Court held that merely displaying a design on a foreign, unverified website does not constitute prior publication under Section 4(b) of the Designs Act, 2000. The Court set aside the cancellation of an industrial air cooler design, noting that foreign registration alone cannot justify cancellation in India. Photographs submitted as evidence were deemed insufficient to prove prior publication, as they did not clearly depict the design in three dimensions or its application to the article. The Court emphasized that prior publication must be tangible and clearly demonstrate the design’s application. It remanded the matter for further consideration and cautioned that the power to cancel a registered design should be exercised carefully.
India and the Design Law Treaty (DLT)
The Design Law Treaty (DLT): A Global Game-Changer
Historic Adoption
On November 22, 2024, the World Intellectual Property Organization (WIPO) successfully concluded negotiations and adopted the Design Law Treaty during a diplomatic conference in Riyadh, Saudi Arabia. Also known as the Riyadh Design Law Treaty (RDLT), this landmark agreement represents nearly two decades of international negotiations aimed at harmonizing procedural aspects of design law worldwide.
India signed the Final Act of the DLT on November 27, 2024, signaling its commitment to strengthening its intellectual property (IP) ecosystem and fostering inclusive growth, particularly for small and medium-sized enterprises (SMEs), startups, and independent designers.
Core Objectives and Benefits
The DLT aims to create a more streamlined, harmonized process for filing and protecting design rights globally. Key provisions include:
- Standardized Application Requirements: Establishing a closed list of permissible elements for industrial design applications, prohibiting contracting parties from requiring additional elements, thus reducing administrative burdens.
- Filing Date Requirements: Specifying minimal requirements for establishing a filing date, ensuring timely protection to prevent loss of rights due to procedural delays.
- Flexible Deadlines: The treaty introduces relaxed time limits for filings and submissions, offering applicants greater flexibility.
- Reinstatement of Lost Rights: Mechanisms allow applicants to recover rights lost due to missed deadlines under certain conditions.
- Multiple Designs in One Application: Applicants can file multiple designs in a single application, saving time and costs.
- Priority Claims: The treaty permits correction or addition of priority claims, enhancing flexibility.
- Grace Period: The DLT offers a 12-month grace period following the first disclosure of a design, meaning that prior disclosure will not affect its validity for registration, which is particularly beneficial for individual designers and smaller entities who may inadvertently disclose their designs before filing.
- Deferred Publication: Applicants can keep designs unpublished for at least six months after securing a filing date, a provision not currently available in Indian law.
- Electronic Systems: The treaty encourages the implementation of electronic filing systems for designs and the electronic exchange of priority documents, aligning with initiatives like India’s Digital India.
- Simplified Recording of Assignments and Licenses: Streamlined procedures for recording changes in ownership, such as assignments and licenses, reduce administrative burdens.
India’s Role and Commitment
India’s signing of the Final Act of the DLT reflects its proactive stance in the global IP ecosystem, building on its robust growth in IP filings. India ranks among the top 10 globally for industrial designs, with a 25% increase in design applications in 2023 and a 120% rise in domestic design filings over the past two years. By signing, India expresses intent to align with international standards, though ratification or accession is required to become a contracting party. The treaty complements India’s existing IP initiatives, such as the Startup India program, the Startups Intellectual Property Protection (SIPP) scheme, and the National IPR Policy 2016.
The DLT is expected to benefit Indian designers, SMEs, and startups by simplifying access to international markets and reducing procedural complexities. The treaty’s focus on protecting traditional knowledge aligns with India’s efforts to safeguard its cultural heritage, potentially allowing requirements for disclosing traditional cultural expressions in design applications. However, India may face challenges in implementation, such as amending the Designs Act, 2000, to incorporate provisions like deferred publication or a broader grace period, which are currently limited or absent in Indian law.
Expectations for 2025-26
The upward trajectory in design registrations is anticipated to continue into 2025-26, supported by ongoing governmental efforts and evolving technological landscapes. Looking ahead, several trends and developments are expected to shape the next financial year:
- Higher Volume of Cross-Border Filings: With the DLT coming into effect, more multinational corporations are likely to consider India as a priority jurisdiction for design protection.
- Policy Reforms and Procedural Simplification: India may implement reforms to further align its design registration process with the DLT requirements, possibly reducing pendency times.
- Legislative Amendments: India may need to amend the Designs Act, 2000 and Designs Rules to bring them in line with DLT formalities
- Designs as Business Assets: Businesses, especially in consumer-facing industries, will increasingly use design registrations not just for protection but as strategic IP assets for valuation, investment, and licensing.
- Awareness and Outreach: Awareness campaigns and professional engagement will continue to bring more MSMEs and startups into the design registration fold.
- Innovation Ecosystem: India’s ambition to become a global leader in innovation and patenting will foster a continuously supportive environment for IP protection, including industrial designs.
Challenges in Design Protection: What to Watch in 2025
While India’s design protection framework is strengthening, businesses must remain vigilant against persistent challenges. Key issues to monitor include:
- Rampant Infringement on Online Marketplaces: The proliferation of unregistered sellers makes it easy for designs to be replicated and sold without authorization, posing a significant threat to original creators.
- Navigating the Copyright-Design Overlap: The intricate relationship between design rights and copyright law, particularly concerning artistic works applied to industrial products, continues to present legal complexities. The landmark ruling in Cryogas Equipment Private Limited v. Inox India Limited and Others [Judgement dated 15 April 2025], highlights this ongoing judicial scrutiny.
- Enforcement Disparities in Tier-2 and Beyond: Despite legislative advancements, effective enforcement of design rights remains a concern in non-metro and smaller jurisdictions, requiring proactive legal strategies.
Impact: Design registration alone does not guarantee protection—it must be backed by active enforcement.
Implication: Businesses should partner with IP law firms experienced in pan-India design litigation and protection.
Frequently Asked Questions (FAQs)
1. What is design registration in India, and why is it important?
It protects the visual aspects of products, helping companies secure exclusive rights, prevent imitation, and enhance brand differentiation.
2. How can businesses benefit from registering industrial designs in India?
They gain legal protection, market exclusivity, and potential licensing opportunities. It also strengthens overall IP strategy.
3. What industries are leading in design registrations in India?
The three dominant sectors that account for nearly half of all design filings in India are Textiles and Accessories, Tools and Machines, Health and Cosmetics.
4. What is the Design Law Treaty (DLT)
The Design Law Treaty (DLT), adopted in Riyadh in November 2024, aims to harmonize and simplify global procedures for design registration. It reduces administrative hurdles and ensures faster, standardized filings across member countries. India is expected to align domestic processes with DLT in the coming years.
5. How will DLT impact Indian businesses and innovators?
Simplified filing process for international design registrations. Lower costs and faster timelines for protecting designs globally. Beneficial for export-driven sectors (textiles, handicrafts, automobiles, electronics). Encourages Indian startups and SMEs to compete internationally with stronger IP protection.
