Unlike patents or trademarks, Indian design jurisprudence has been shaped almost entirely by the High Courts — principally Delhi, Bombay and Calcutta — with the Supreme Court intervening only occasionally. Appeals from cancellation proceedings lie directly to the High Courts under Section 19 read with Section 36 of the Designs Act, 2000, so there is no significant tribunal-level precedent to navigate. The six decisions below map the doctrinal battlegrounds that decide real cases today: novelty and prior publication, the design–copyright overlap, infringement analysis, functionality, composite suits, and the still-unsettled interface between design registration and trade-dress passing off. For each, this guide sets out the background, statutory provisions, judicial reasoning, subsequent treatment — including the 2025 Supreme Court orders in the Crocs saga — and the practical takeaway for product businesses.
In this guide
1. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657
Background
Gopal Glass Works registered a diamond-pattern design (No. 190336) for figured glass sheets, produced using embossing rollers sourced from a German manufacturer. A competitor sought cancellation under Section 19, arguing the pattern was already known abroad: the German company had used the roller pattern since 1992 and comparable design records existed with the UK registry. The Assistant Controller cancelled the registration; the Calcutta High Court restored it; the challenger appealed to the Supreme Court.
Statutory provisions
Sections 4 (prohibition of registration of designs lacking novelty or previously published), 19 (cancellation) and 2(d) (definition of "design") of the Designs Act, 2000.
What the court held
Novelty and originality attach to the design as applied to the article in question — here, glass sheets — not to the abstract pattern or the tool (the roller) used to create it. Since nobody had previously produced glass sheets bearing this pattern, and the internet print-outs of foreign registry records did not reliably prove prior publication of the design as applied to such sheets, the registration stood. The Court also placed the burden of proof in cancellation proceedings squarely on the challenger, holding that it is not discharged by tangential or ambiguous evidence.
Subsequent treatment
This remains the Supreme Court's principal pronouncement under the Designs Act, 2000, routinely invoked for both the "application to article" test and the burden-of-proof rule — including in later Delhi High Court decisions such as ITC Ltd. v. Controller of Patents and Designs (2017) and throughout the Crocs litigation. As the apex authority, it stands undiluted.
Practical impact
For registrants, the article-specific conception of novelty means a known pattern can still support a valid registration when applied to a new article — an important filing-strategy lever. For challengers, cancellation petitions must be built on precise, well-authenticated prior art showing the same design applied to the same or analogous article, not on generic foreign records.
2. Microfibres Inc. v. Girdhar & Co., 2006 (32) PTC 157 (Del); affirmed 2009 (40) PTC 519 (Del) (DB)
Background
Microfibres, a US upholstery-fabric manufacturer, sued for copyright infringement of floral and leaf motifs reproduced on fabric — without having registered them as designs in India. The defendants argued that because the motifs had been industrially applied and reproduced more than fifty times, any copyright had ceased under Section 15(2) of the Copyright Act, 1957.
Statutory provisions
Section 15 of the Copyright Act, 1957 (interface with design law), Section 2(c) (artistic work), and Sections 2(d) and 11 of the Designs Act, 2000.
What the court held
Where an original artistic work is capable of being registered as a design and is industrially applied to an article but is not so registered, copyright in it ceases once the article has been reproduced more than fifty times by an industrial process. The Division Bench drew a structural distinction: a work created as pure art (a painting or drawing) retains its full copyright term even if later exploited industrially, whereas a work conceived for mass industrial application to ornament an article belongs to the design regime and cannot indefinitely claim the longer copyright term by styling itself an "artistic work".
Subsequent treatment
This is the foundational Indian authority on the design–copyright overlap and has been consistently followed by later Delhi High Court benches — including Rajesh Masrani v. Tahiliani Design (AIR 2009 Delhi 44), Pranda Jewelry v. Aarya 24 Kt., and Ritika Pvt. Ltd. v. Biba Apparels (on fashion garments). Its Section 15(2) framework has hardened into settled law over a decade and a half without departure.
Practical impact
Businesses in textiles, fashion, jewellery and consumer products face a genuine election: register the design before industrial exploitation, or risk losing all protection after the fifty-first reproduction. Copyright is not a fallback for unregistered product designs. Timely design registration, aligned with product launch calendars, is the only safe course.
3. Whirlpool of India Ltd. v. Videocon Industries Ltd., Bombay High Court, decided 27 May 2014
Background
Whirlpool held registered designs for a distinctive washing-machine shape and alleged that Videocon's competing model was a fraudulent or obvious imitation under Section 22 of the Designs Act. Videocon — itself holding a design registration for its machine — raised a threshold defence: can an infringement suit lie against a registered proprietor at all?
Statutory provisions
Sections 11 (copyright in registered design), 19 (cancellation) and 22 (piracy of registered design) of the Designs Act, 2000, alongside the common law of passing off.
What the court held
The monopoly conferred by Section 11 is expressly subject to the other provisions of the Act, including Section 22, which makes piracy actionable against "any person" — including another registered proprietor. On the merits, applying the settled visual-comparison test (drawn from Castrol India v. Tide Water Oil and Kemp & Co. v. Prima Plastics) — judging the designs through the eye of the ordinary purchaser and asking whether the essential novel features appear in the defendant's product — the court found Videocon's design an obvious imitation, granted an injunction, and also upheld the parallel passing off claim.
Subsequent treatment
The decision aligned Bombay with the Delhi High Court's Full Bench view in Micolube India v. Rakesh Kumar (2013) that registration is no shield against an infringement suit; a divergent view attributed to the Calcutta High Court means the registrant-versus-registrant question has not been finally settled by the Supreme Court. Its restatement of the "fraudulent or obvious imitation" test, by contrast, is the standard formulation applied nationwide.
Practical impact
Obtaining your own design registration does not immunise a product from an infringement claim by an earlier registrant — pre-launch clearance against prior registrations remains essential. On the enforcement side, the ocular, purchaser's-eye comparison means well-prepared visual evidence (side-by-side imagery, novelty statements) often decides the interim stage.
4. Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir, 2014 (58) PTC 428 (Del)
Background
Steelbird held a registered design for a helmet featuring a beak-shaped visor and obtained an ex parte interim injunction against a competitor. The defendants moved to vacate, showing that materially similar beak-shaped helmet designs had been previously published and used in India and abroad, and arguing the shape was in any event functionally driven.
Statutory provisions
Sections 2(d) (design must appeal to and be judged solely by the eye), 4(a)–(c) (design must be new or original, not previously published, and significantly distinguishable from known designs) and 22 of the Designs Act, 2000.
What the court held
The injunction was vacated. A design is not "new or original" where a materially similar design has been previously published or used, and Section 4(c)'s requirement of being "significantly distinguishable from known designs or combinations of known designs" is not satisfied by trivial variation. The court also engaged the functionality principle: features dictated purely by the function the article performs fall outside design protection, since the statute protects only features judged solely by the eye.
Subsequent treatment
Steelbird is a standard citation for the novelty/originality threshold and was expressly relied upon in ITC Ltd. v. Controller of Patents and Designs (2017) on the meaning of "original". It sits alongside the Full Bench guidance in Reckitt Benckiser (India) Ltd. v. Wyeth Ltd. (2013) among the most-cited authorities in current design litigation, and its functionality reasoning continues to be applied in shape-of-product disputes.
Practical impact
Design filings built on minor tweaks to known trade shapes are vulnerable — both at the injunction stage and in cancellation. Applicants should document what is genuinely new in the visual appearance and avoid claiming features the market will recognise as functional necessities; defendants, conversely, should marshal prior publications early, since they can dissolve an interim injunction.
5. Mohan Lal v. Sona Paint & Hardwares (2013), overruled by Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. (2018)
Background
In Mohan Lal, a three-judge Full Bench held that a design infringement claim (rooted in the statutory monopoly of registration) and a passing off claim (rooted in goodwill and misrepresentation) were distinct causes of action that could not be combined in a single composite suit — relying on the Supreme Court's decisions in Dabur India v. K.R. Industries and Dhodha House v. S.K. Maingi. Plaintiffs were forced to file two parallel suits on the same facts. The Bombay High Court declined to follow this in Cello Household Products v. Modware India (2017), and the conflict was referred to a five-judge Special Bench in Carlsberg.
Statutory provisions
Order II Rule 3 of the Code of Civil Procedure, 1908 (joinder of causes of action), Section 22 of the Designs Act, 2000, and the common law of passing off preserved by Section 27(2) of the Trade Marks Act, 1999.
What the court held
Carlsberg expressly overruled Mohan Lal on the joinder point: Dabur and Dhodha House concerned territorial jurisdiction, not joinder of causes of action, and had been wrongly applied. Order II Rule 3 CPC permits uniting multiple causes of action against the same defendant in one suit, and avoiding multiplicity of litigation and inconsistent findings strongly favours a single composite suit for design infringement and passing off, subject to case management by the trial court.
Subsequent treatment
Carlsberg is the settled, universally followed position; every design-cum-passing-off suit in India is now filed on that footing. Its observations on when passing off can be claimed over design subject matter — the "larger legal formulations" — became the contested terrain in the Crocs litigation, but the composite-suit holding itself has not been disturbed.
Practical impact
Rights holders can pursue registration-based and goodwill-based claims in one proceeding, halving cost and eliminating the risk of inconsistent findings. Pleadings should nonetheless keep the two causes of action analytically distinct — different tests, different evidence — to withstand case-management scrutiny.
6. Crocs Inc. USA v. Bata India Ltd. (Delhi HC Single Judge 2019; Division Bench, 1 July 2025; Supreme Court, 14 November 2025)
Background
Crocs sued Bata, Liberty, Relaxo, Action, Aqualite and others alleging both infringement of its registered clog design (Design No. 197685 of 2004) and passing off — contending that the clog's shape, configuration and perforation pattern had acquired source-identifying trade-dress significance beyond the registration. In a parallel track, Crocs' design registration was cancelled in 2019 for lack of novelty and prior publication, a finding never successfully overturned and later reflected in costs orders against Crocs in the infringement suits.
Statutory provisions
Sections 2(d), 19 and 22 of the Designs Act, 2000 (including the exclusion of trademarks from the definition of "design"), and Section 27(2) of the Trade Marks Act, 1999 preserving the common-law action for passing off.
What the courts held
The Single Judge (February 2019) dismissed the passing off suits at the threshold: allowing a passing off claim over the very shape registered as a design would create a "dual monopoly" defeating the Designs Act's time-limited scheme, absent "something extra" beyond the registered design. On 1 July 2025, a Division Bench (C. Hari Shankar and Ajay Digpaul, JJ.) reversed, holding that passing off is an independent common-law remedy preserved by Section 27(2) of the Trade Marks Act: a design registration does not extinguish the right to sue in passing off where the shape functions as a source identifier, and the suits were restored for trial. On 14 November 2025, the Supreme Court (Sanjay Kumar and Alok Aradhe, JJ.) dismissed the manufacturers' special leave petitions, noting that the Division Bench had merely revived the suits for trial, directing the trial court to decide uninfluenced by the appellate observations — and expressly keeping the question of law open.
Subsequent treatment
This is the most closely watched, and still unsettled, interface question in Indian design law. The maintainability position currently favours claimants, but commentators — including the Supreme Court Observer — have noted the tension between the Division Bench's approach and the Designs Act's exclusion of trademark subject matter, and the apex court has deliberately left the substantive doctrine for another day. The parallel holding that prior publication defeats a design registration regardless of commercial success remains settled and consistently applied.
Practical impact
Product businesses should treat design registration and trade-dress strategy as complementary, not alternatives: registration delivers certain, time-limited exclusivity, while cultivated, well-evidenced consumer association with a product's shape can support passing off protection that outlives it — though the doctrinal foundation remains open at the highest level. Defendants in shape-imitation suits, conversely, can no longer expect threshold dismissal of passing off claims, making early evidence on distinctiveness and alternative design freedom critical. The cancellation of Crocs' own registration is equally instructive: pre-filing novelty diligence, including the applicant's own prior disclosures abroad, is indispensable.
Summary: current status of each judgment
| Judgment | Forum & year | Core principle | Status (as of July 2026) |
|---|---|---|---|
| Bharat Glass Tube v. Gopal Glass Works | Supreme Court, 2008 | Novelty judged as applied to the article; burden on challenger | Settled; consistently followed |
| Microfibres v. Girdhar & Co. | Delhi HC (DB), 2009 | Design–copyright overlap; Section 15(2) cut-off after 50 reproductions | Settled; consistently followed |
| Whirlpool v. Videocon | Bombay HC, 2014 | Suit lies against another registrant; obvious-imitation test | Imitation test settled; registrant-vs-registrant point not yet resolved by SC |
| Steelbird v. S.P.S. Gambhir | Delhi HC, 2014 | Novelty threshold; functionality exclusion | Settled; cited approvingly (ITC v. Controller, 2017) |
| Mohan Lal → Carlsberg | Delhi HC FB 2013 / Special Bench 2018 | Composite suit for design infringement + passing off | Carlsberg settled law; Mohan Lal overruled on joinder |
| Crocs v. Bata | Delhi HC 2019/2025; SC Nov 2025 | Design registration vs trade-dress passing off; prior publication | Suits revived for trial; substantive question of law expressly kept open by SC |
Read our related guides on landmark patent judgments and landmark trademark judgments, or learn more about our design services, copyright services and IP litigation practice.
Frequently Asked Questions
How is novelty of a registered design judged in India?
Under Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. (2008) 10 SCC 657, novelty and originality attach to the design as applied to the specific article for which it is registered — not to the abstract pattern or the tool used to create it. The burden of proving prior publication or lack of novelty in a Section 19 cancellation lies on the challenger and is not discharged by ambiguous or tangential evidence.
Can copyright and design protection coexist for the same work in India?
Only within limits. Under Microfibres Inc. v. Girdhar & Co. (Delhi High Court, Division Bench, 2009), where an artistic work is capable of registration as a design but is not registered, Section 15(2) of the Copyright Act, 1957 extinguishes its copyright once the article to which the design is applied has been reproduced more than fifty times by an industrial process. An original artistic work such as a painting retains full copyright, but the design derived from it and applied industrially does not.
Can I combine a design infringement claim and a passing off claim in one suit?
Yes. A five-judge Special Bench of the Delhi High Court in Carlsberg Breweries A/S v. Som Distilleries (2018) overruled Mohan Lal v. Sona Paint (2013) and held that a composite suit joining design infringement and passing off is maintainable under Order II Rule 3 CPC, avoiding multiplicity of proceedings. This is now the settled position across India.
Can a shape registered as a design also be protected as trade dress through passing off?
This is the live question in the Crocs v. Bata litigation. On 1 July 2025 a Delhi High Court Division Bench held that Crocs' passing off suits over its design-registered clog shape are maintainable, since passing off is a common-law remedy preserved by Section 27(2) of the Trade Marks Act, independent of the Designs Act. On 14 November 2025 the Supreme Court declined to interfere, expressly keeping the question of law open — so the maintainability position currently favours claimants, but the doctrinal issue awaits final resolution at trial and, potentially, a future apex-court ruling.
Can a design infringement suit be filed against another registered design proprietor?
Yes, per the prevailing view. In Whirlpool of India Ltd. v. Videocon Industries Ltd. (Bombay High Court, 2014), following the Delhi High Court's Full Bench view in Micolube India v. Rakesh Kumar (2013), the court held that the monopoly under Section 11 of the Designs Act is subject to the rest of the Act, so a Section 22 suit lies against 'any person', including another registrant — though a divergent view has been expressed by the Calcutta High Court and the point has not yet been settled by the Supreme Court.
Disclaimer: This article is a general professional overview prepared by IntellexIP Advocates for informational purposes only. It does not constitute legal advice, and no attorney–client relationship is created by reading it. Case status and citations should be independently verified against certified judgment texts before reliance in any proceeding. For advice on a specific matter, please contact our team.