Novelty and Originality of Designs

1. The statutory bars

Section 4 says that a design which:

1. is not new or original; or
2. 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; or
3. is not significantly distinguishable from known designs or combination of known designs; or
4. comprises or contains scandalous or obscene matter,

shall not be registered. Section 5(1) adds that the Controller registers a new or original design “not previously published in any country” and not contrary to public order or morality.

2. “New or original”

Section 2(g) defines “original” as originating from the author of the design, and including cases which, though old in themselves, are new in their application. So there are two routes:

• New: the shape or pattern has not been seen before.
• Original: the shape or pattern is old (a traditional motif, a known form) but its application to this kind of article is new. A paisley pattern is old; applied for the first time to the casing of a mobile phone, it can be original.

The two words are disjunctive in section 4(a), but the courts read them together with section 4(c): even a new application must be significantly different from what is known. Trade variants (a known shape with small changes that a trader would make in the ordinary course) are not enough.

3. Prior publication

Under the Designs Act, 1911 novelty was local: publication in India mattered. The 2000 Act moved to worldwide (absolute) novelty: disclosure “anywhere in India or in any other country”, by any means. Publication includes display in a catalogue, sale, exhibition, use, or a picture on a website.

In Reckitt Benckiser (India) Ltd. v. Wyeth Ltd. (Delhi High Court, Full Bench, 2013) the question was whether a design shown in a foreign patent specification or design registration abroad counts as prior publication. The Full Bench held that it does: publication abroad, including through a foreign registry that is open to the public, defeats novelty, both at registration and in cancellation under section 19(1)(b).

The question is always whether the prior document discloses the same design applied to the same kind of article with enough clarity that a person could make it. A vague sketch or a different article does not anticipate.

4. Bharat Glass Tube v. Gopal Glass Works

In Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008 INSC 565, Gopal Glass had registered designs for patterns on glass sheets. Bharat Glass petitioned for cancellation, relying on material from abroad, including a design said to have been published in the United Kingdom. The Controller and the Calcutta High Court refused cancellation, and the Supreme Court dismissed the appeal. The Court held that:

• the purpose of design law is to protect the novel shape or pattern of an article, which must be judged by the eye as applied to the article;
• a prior publication must show the design as applied to the same article, so that what the customer sees is the same; a design shown on a different article, or a pattern on paper, is not the same thing; and
• the design had not been shown to have been applied to glass sheets before, so the registration stood.

The case is the leading Supreme Court authority on novelty in designs and is usually cited for the proposition that novelty is tested in relation to the article.

5. Whose eye?

Indian courts adopt the eye of the instructed customer, or the average consumer of that article, and compare the designs as wholes, not feature by feature. The English authority usually cited is Benchairs Ltd. v. Chair Centre Ltd. (1974) on the look of the whole, together with Amp Inc. v. Utilux Pty. Ltd. (House of Lords, 1971), where eye appeal was held to mean appeal to the eye of the customer, and electrical terminals whose shape was dictated by function were held not registrable.

6. Grace period and exhibitions

Indian law has no general grace period for a designer’s own disclosure. The Act protects only exhibition at notified exhibitions, where the design may be shown before filing provided the application is made within the time allowed. The EU, by contrast, allows a twelve-month grace period for the designer’s own disclosure, and the EU unregistered design itself arises from disclosure. Indian designers who show work at trade fairs or online before filing therefore risk losing novelty: a common practical problem for start-ups and textile houses.

7. Scandalous or obscene matter

The fourth bar is rarely litigated. It overlaps with the public-order and morality proviso in section 5(1). It should be read narrowly, in line with free-expression standards under Article 19(1)(a) and 19(2).

8. Criticism

• Absolute novelty without a grace period is harsh on small designers, who often test products on social media first.
• The “significantly distinguishable” standard is vague; outcomes depend on the judge’s eye.
• Prior-art searching for designs is weak because images are hard to search; examiners mostly search the Indian register, so many registrations fall later in cancellation.

How this is examined

Set as “Explain the requirements of novelty and originality for registration of a design” or as part of the registration question. Quote section 4 in full, define “original” under section 2(g), discuss Gopal Glass Works and Reckitt Benckiser, and finish with the EU and US tests. A problem question may give you a design shown at a foreign trade fair before filing: the answer is that worldwide disclosure bars registration.