Designs That May Not Be Registered
Chapter Nine
Syllabus topic 1.2, "Introduction, Novelty and Originality"
Pages 35 to 37 of 683
In one line
Beyond novelty, a design is refused if it is not significantly distinguishable from what is already known, if it is scandalous or obscene, or if the Controller thinks its use would be contrary to public order or morality.
The provisions
Section 4(c): a design which "is not significantly distinguishable from known designs or combination of known designs" shall not be registered.
Section 4(d): a design which "comprises or contains scandalous or obscene matter" shall not be registered.
Section 35(1): "The Controller may refuse to register a design of which the use would, in his opinion, be contrary to public order or morality."
Section 35(2): "An appeal shall lie to the High Court from an order of the Controller under this section."
Section 5(1) repeats the last of these in positive form, requiring the design to be "not contrary to public order or morality".
Section 4(c): significantly distinguishable
This is the ground that does the most work in practice. A design may be genuinely new, in the sense that nobody has made exactly this article before, and still fail, because it is not significantly different from what is known.
Two comparators.
- Known designs. The design is compared with a single earlier design.
- Combination of known designs. The design is compared with the result of putting two or more known designs together. This is the harder test, and it defeats a great many applications: taking the handle from one product and the body from another produces nothing significantly distinguishable.
Its source is TRIPS. Article 25.1 permits Members to "provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features". Section 4(c) is India taking up that permission almost word for word.
Its content is the trade-variation rule. The Division Bench in Crocs Inc. USA v. Bata India Ltd., 2019 SCC OnLine Delhi 6808, Delhi High Court, 24 January 2019, worked in chapter 70, held that a mere trade variation of an existing design does not entitle its originator to protection, and that a design simulating a well-known or naturally occurring object is unprotectable. That is section 4(c) in action.
What "significantly" means
There is no statutory definition and no Indian test. The working approach the tribunals take has three steps.
- Identify the known designs in the field, from the register and from the trade.
- Ask what the design adds. Is the difference one an ordinary purchaser of that article would notice and treat as a different look?
- Discount what the field forces. In a field where everything is much the same, small differences count for more; in an open field they count for less. This is sometimes called the crowded-art principle and it is borrowed from patent and trade mark practice.
Designs That May Not Be Registered
Section 4(d): scandalous or obscene matter
The words are not defined and there is no reported Indian decision under this clause. The chapter says so rather than inventing authority.
Two things can be said with confidence.
It is about the design, not the article. The clause bars a design that comprises or contains scandalous or obscene matter. It does not let the Controller refuse a design because the article it is applied to is objectionable.
It is a bright-line bar, not a discretion. Section 4 says such a design "shall not be registered". Contrast section 35, where the Controller "may" refuse.
Section 35: contrary to public order or morality
This is a separate power and it is discretionary. The Controller may refuse a design "of which the use would, in his opinion, be contrary to public order or morality".
Three differences from section 4(d), and MU can ask for them.
| Section 4(d) | Section 35 | |
|---|---|---|
| Directed at | The matter in the design | The use of the design |
| Nature | Mandatory: shall not be registered | Discretionary: the Controller may refuse |
| Standard | Scandalous or obscene | Contrary to public order or morality |
| Appeal | Through the ordinary route, section 36 | Expressly given by section 35(2) to the High Court |
"Public order" is a wider idea than obscenity. It is the phrase used in Article 19(2) of the Constitution and in section 3(b) of the Patents Act, 1970, and it covers a use that would disturb public tranquillity or offend the general good, not merely one that offends taste.
The appeal in section 35(2) matters. A refusal on this ground is a value judgment by an officer, so Parliament gave an express right of appeal to the High Court rather than leaving it to the general provision.
A worked example
Three applications reach the Controller on the same morning.
One: a bathroom tap whose handle is a slightly longer version of a shape already registered by a rival, with the same profile and the same knurling. Refused under section 4(c). It is not significantly distinguishable from a known design. Following Crocs, a trade variation creates no novelty.
Two: a set of playing cards whose backs carry an explicit image. Refused under section 4(d). The design comprises obscene matter, and the bar is mandatory.
Three: a design for a novelty article whose shape reproduces a religious symbol in a way likely to cause serious offence, applied to an ashtray. Here section 35 is the right provision. The matter is not obscene, but the Controller may form the opinion that the use would be contrary to public order or morality and refuse. The applicant may appeal to the High Court under section 35(2).
Designs That May Not Be Registered
What this is not
Section 4(c) is not an inventive-step test. It does not ask whether the design was obvious to a skilled person; it asks whether it looks significantly different. There is no inventive step in design law.
Section 35 is not a general power to refuse a design the Controller dislikes. It is confined to use contrary to public order or morality, and it is appealable.
A refusal under section 4 is not the same as cancellation under section 19. Section 4 operates before registration; section 19 undoes a registration afterwards. But the grounds overlap: section 19(1)(d), "the design is not registrable under this Act", carries section 4 into a cancellation petition, which chapter 180 works out.
Quick revision
- Section 4(c): not significantly distinguishable from known designs or a combination of known designs. Source: TRIPS Article 25.1. Content: the trade-variation rule from Crocs.
- Section 4(d): comprises or contains scandalous or obscene matter. Mandatory bar; no reported Indian decision.
- Section 35(1): the Controller may refuse a design whose use would in his opinion be contrary to public order or morality; section 35(2) gives an appeal to the High Court.
- Section 4 refuses; section 19 cancels; and section 19(1)(d) lets the section 4 grounds be run again after registration.
Test yourself
1. State section 4(c) and give its international source. A design which is not significantly distinguishable from known designs or a combination of known designs shall not be registered. Its source is Article 25.1 of the TRIPS Agreement, which permits Members to provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features.
2. Distinguish section 4(d) from section 35. Section 4(d) is a mandatory bar aimed at scandalous or obscene matter in the design. Section 35 is a discretionary power to refuse where the use of the design would in the Controller's opinion be contrary to public order or morality, and it carries an express appeal to the High Court under section 35(2).
3. A design combines the spout of one known jug with the handle of another. Is it registrable? Probably not. Section 4(c) allows the comparison to be made against a combination of known designs, and taking two known features and putting them together will usually not be significantly distinguishable.
4. Where does an applicant refused under section 35 go? To the High Court, under section 35(2).
The rest of this subject
These notes are cut from the University's printed syllabus. Open the syllabus itself, or the past papers, for the same subject.