A design can have both functional and aesthetic elements. Protection is granted if the design is not dictated solely by function and there exist alternative designs to achieve the same function.

The Bombay High Court recently addressed a dispute concerning allegations of design piracy and passing off between Travel Blue Products India Pvt. Ltd. (TBPL) and Miniso Lifestyle Pvt. Ltd. (Miniso). The case centred around the registered design of TBPL’s ‘Travel Blue Tranquility Neck Pillow’, with TBPL seeking to restrain Miniso from manufacturing or marketing deceptively similar neck pillows. The Court at the admission stage had granted an ad-interim injunction in favour of TBPL and was of the view that the aesthetic and visual appeal of the rival products was identical, and the impugned product was an obvious imitation and a replica or near replica of TBPL’s registered design. Miniso sought to set aside the injunction. This note discusses the contentions raised by the parties and the order passed by the High Court.

Background and Contentions

Contentions of Travel Blue Products India Pvt. Ltd. (TBPL)

1. TBPL is engaged in marketing travel accessories, designed an innovative neck pillow registered under design number 281315, with protections extended until 2030.
2. TBPL has also secured international registrations in the USA, China, and Australia.
3. TBPL alleged that the Defendants launched a neck pillow identical in shape, configuration, and colours (grey, blue, purple, pink) to their registered design, both in retail stores and online, constituting piracy and passing off.
4. TBPL argued that their registered design enjoys a presumption of validity under Section 10(4) of the Designs Act, 2000, which cannot be overturned by mere allegations of functionality.
5. TBPL emphasized that their design’s aesthetic appeal, including shape and configuration, is protected, and functional features like foldability or storage do not affect this protection.
6. TBPL relied heavily on the precedent set by Whirlpool of India Ltd. vs. Videocon Industries Ltd, which states that if a function can be achieved by multiple forms, the design is registrable and protected.

Contentions of Miniso Lifestyle Pvt. Ltd. (Miniso).

1. Miniso contested TBPL’s claims, arguing that the Plaintiffs’ design includes a distinctive “neck pillow with pocket,” and that Miniso’s product lacks this feature.
2. Miniso stated that its design was independently developed and visually different and also claimed that the functional aspects mentioned by TBPL, such as foldability, storage, and memory foam, are not considered protectable features under the Designs Act.
3. Miniso contended that TBPL’s registered design is not novel due to prior art.
4. Miniso relied on the recent Supreme Court decision in Cryogas Equipment Pvt. Limited vs. Inox India Limited, which introduced a “dominant purpose” test, focusing on whether the design’s dominant aspect is functional rather than aesthetic.
5. Miniso argued that TBPL’s design is predominantly functional (ergonomic shape, pocket) and that prior registrations and products with similar shapes exist, undermining novelty.
6. Miniso further contended there is no passing-off as they use distinct packaging and trademarks, and colour alone cannot be monopolized.

Rejoinder contentions of Travel Blue Products India Pvt. Ltd. (TBPL)

TBPL countered that:

1. The Cryogas decision does not displace the established “only mode/option” test but rather reinforces the functionality test within the Designs Act framework.
2. Their design’s aesthetic appeal is dominant and that the pocket is a mechanical appendage without significant visual impact.
3. They have substantial sales and promotional expenses to establish reputation and goodwill.

Court’s Findings

The Court considered the central issue as whether TBPL’s design was protectable under the Designs Act, 2000, or invalid due to functionality or lack of novelty.

1. Visual Comparison: Miniso’s product is almost indistinguishable from TBPL’s neck pillow design, featuring elevated sides and dipping curves. The rival goods were identical or substantially similar in shape, configuration, features, fabric, and colour.
2. Pleadings on Cancellation: Miniso’s case focused on the pillow’s pocket and certain functional aspects, but it did not properly plead that the design was entirely unregistrable. Arguments that extended beyond these pleadings could not be considered at this stage.
3. Novelty & Prior Registration: To invoke cancellation under Section 19(1) of the Designs Act, defendants must demonstrate prior registration or publication. Miniso’s reliance on international registrations without supporting details was insufficient. The only Indian registration cited was not visually or structurally similar to TBPL’s design. The Court mentioned that the prior publication must be in some brochure, book, or journal with clear illustrations depicting the design for it to constitute a ground for cancellation. Reliance on international registrations without specific pleadings or material details was not enough to challenge the validity of the Plaintiff’s design registration in India.
4. Functionality Test: The Court clarified that both the “only option test” and the functionality inquiry ultimately examined whether a design is solely functional. When a design incorporates both functional utility and unique aesthetic value, it merits protection. In TBPL’s case, the tranquillity pillow had sufficient aesthetic appeal to qualify as a Design under Section 2(d). The Plaintiff’s design passes the functionality test as it has a distinct aesthetic appeal and is not the sole possible design to perform the function.
5. Passing Off: TBPL established goodwill and reputation through substantial sales, promotions, international recognition, and enforcement actions. Miniso’s imitation was likely to deceive consumers, with minor variations insufficient to distinguish the goods.

Court Ruling

Considering the above the Court upheld the interim injunction:

1. Restraining Miniso and associated parties from infringing TBPL’s registered design or any obvious imitation.
2. Prohibiting manufacture, sale, marketing, advertising, or dealing in the impugned design or deceptively similar products.
3. Directing removal of all online listings of the infringing product on e-commerce and social media platforms pending final disposal of the suit.

Comment

The ruling reinforces the principle that functional benefits do not automatically negate design protection where a product also possesses distinctive visual appeal.