Novelty and Originality

Section 4(a) says "new or original", not "new and original". In practice the courts read the two together, because a design that is genuinely old in the same application will fail on section 4(b) or section 4(c) even if the applicant thought of it himself.

The Supreme Court's own gloss, in Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, is that the expression "new or original" appearing in section 4 "means that the design which has been registered has not been published anywhere or it has been made known to the public", and that it "means that it had been invented for the first time or it has not been reproduced by anyone".

How a court actually compares two designs

Four working rules, each drawn from the cases.

One: compare the finished articles, not the drawings. This is the central holding of Bharat Glass Tube.

Two: judge by the eye. No expert evidence about manufacturing tolerances. Section 2(d) says "judged solely by the eye", and the court looks.

Three: the eye is an instructed one. The comparison is made by a person who knows the trade, because a lay eye may miss what is common in a field and what is unusual.

Four: a mere trade variation is not enough. A small change to something already known does not make a new design. This is the holding of the Division Bench in Crocs Inc. USA v. Bata India Ltd.

The cases

Facts. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, arose out of figured glass sheets. Gopal Glass Works bought embossing rollers from a German firm, Dorn Bausch Gravuren GmbH, and used them to press a pattern into glass sheets sold as Diamond Square. It registered the pattern as design number 190336 in class 25-01 on 5 November 2002. Bharat Glass Tube applied to the Controller under section 19 to cancel the registration, saying the design was not new or original and had been published in India and abroad. Its evidence was the German firm's catalogue, a letter from the German firm saying it had developed the roller design in 1992, and a print-out from the United Kingdom Patent Office website showing a 1992 United Kingdom registration in another company's name. The Assistant Controller cancelled the registration; a single judge of the Calcutta High Court set that order aside.

Held. The appeal was dismissed with costs of fifty thousand rupees. The burden of showing that a registered design is not new or original lies on the party seeking cancellation, and it was not discharged. Evidence that a German company made and sold engraving rollers carrying a pattern did not show that the pattern had ever been reproduced on glass sheets by anyone. A print-out of a foreign registration did not show what the finished article looked like. What section 2(d) protects is a feature applied to a finished article and judged solely by the eye, so the comparison must be of the finished articles. Placing the two glass sheets side by side, there was no comparison between them.

Why it matters here. It settles three things at once: the burden lies on the challenger, the comparison is of finished articles, and a document showing a design on paper is not proof that the design was ever applied to the article.

Facts. Crocs Inc. USA v. Bata India Ltd., decided by a Division Bench of the Delhi High Court on 24 January 2019, concerned registered designs for moulded clogs. Crocs sued several footwear makers for design infringement and separately for passing off the shape. The single judge refused interim injunctions, holding that the designs lacked novelty because they were already in the public domain before registration, and de-linked the passing off suits from the design suits.

Held. The appeals were dismissed. The designs Crocs relied on were repetitions of age-old designs with variations in the strap and the like. A design that simulates a well-known or naturally occurring object is unprotectable, and a mere trade variation of an existing design does not entitle its originator to protection through registration. The de-linking of the suits was not appropriate, and the court recorded that the direction in Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares, AIR 2013 Delhi 143, about composite suits had by then been overruled in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., AIR 2019 Delhi 23.

Why it matters here. It is the modern statement of the trade-variation rule, and it shows how prior publication and lack of novelty are proved in practice.

A worked example

Sagar Steelware registers in 2024 the design of a pressure cooker lid with eight radial ribs and a wing handle.

A competitor applies to cancel. It produces (a) a 2019 catalogue from an Italian maker showing a lid with eight radial ribs and a bar handle, and (b) an Indian registration from 2015 for a lid with six radial ribs and a wing handle.

How does the Controller approach it?

First, section 4(b). Was the design disclosed to the public anywhere before Sagar's filing date? The Italian catalogue is a publication in tangible form in another country. If the lid it shows is the same design, the registration fails.

Second, comparison of finished articles. Following Bharat Glass Tube, the Controller must look at the lids, not only at the catalogue photographs, and must ask whether the visual appeal is the same.

Third, section 4(c). Even if neither prior design is identical, is Sagar's lid "significantly distinguishable from known designs or a combination of known designs"? Eight ribs from the Italian lid plus a wing handle from the 2015 Indian registration is a combination of known designs, and if the combination adds nothing the registration fails on this ground alone.

Fourth, trade variation. Following Crocs, going from six ribs to eight is the kind of variation that does not create novelty.

Fifth, burden. Following Bharat Glass Tube, the burden is on the competitor. If it produces only the catalogue and no evidence that a lid answering that description was ever made, the burden is not discharged.

What this is not

Novelty is not judged against India alone. Section 4(b) says "anywhere in India or in any other country". The 1911 Act was different. Answering as though only Indian publication counts is a serious error.

Novelty is not judged at the date of registration. It is judged at the filing date, or the priority date where a Paris Convention priority is claimed under section 44.

Originality is not effort. Working hard on a shape that already exists gives you nothing.

"New or original" is not "inventive". There is no inventive-step requirement in design law. A trivial but genuinely new appearance is registrable.

Limits and criticism

Section 4(c) is the widest ground and the least defined. "Significantly distinguishable" has no statutory test, and it lets a tribunal refuse a registration that is technically new. It is drawn from Article 25.1 of TRIPS, which permits it.

There is no pre-grant opposition. A person who wants to challenge a design cannot do it before registration. He must wait and apply under section 19, which chapter 180 works out. That is a real weakness in the Indian system compared with the trade mark and patent systems, both of which allow opposition.

Section 4(d) is almost never used. No reported Indian decision turns on scandalous or obscene matter in a design.

Quick revision

• Section 4 bars four things: not new or original; disclosed to the public anywhere before the filing or priority date; not significantly distinguishable from known designs or their combination; scandalous or obscene.
• New: not existing before, anywhere in the world. Original, section 2(g): originating from the author, and includes what is old in itself but new in its application.
• The comparison is of the finished articles, judged solely by the eye, by an instructed eye.
• A trade variation of a known design is not new.
• The burden of proving want of novelty is on the person attacking the registration.
• Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, and Crocs Inc. USA v. Bata India Ltd., Delhi High Court Division Bench, 24 January 2019.

Test yourself

1. State the four grounds in section 4. Not new or original; 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 before the filing or priority date; not significantly distinguishable from known designs or a combination of known designs; comprises or contains scandalous or obscene matter.

2. Who bears the burden in a cancellation petition on the ground of want of novelty, and what authority do you cite? The petitioner. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, where the Supreme Court held the burden was not discharged because the complainant produced correspondence about rollers but no evidence that the pattern had been reproduced on glass sheets by anyone.

3. A design registered for tiles in 1990 is applied to a table top for the first time in 2025. Is it original? Potentially yes, under the second limb of section 2(g), which includes cases "though old in themselves yet are new in their application". But it must still pass section 4(b), disclosure to the public, and section 4(c), significant distinguishability, on the facts.

4. Against what date is novelty judged? The filing date of the application, or where applicable the priority date, which is the date of the earlier convention application relied on under section 44.

5. Explain the trade-variation rule with authority. A small variation of an existing design does not make it new. In Crocs Inc. USA v. Bata India Ltd., the Division Bench held that a mere trade variation of an existing design does not entitle its originator to protection through registration, and that a design simulating a well-known or naturally occurring object is unprotectable.