By Renu Bala and Shivam Malvi
Introduction
In the field of intellectual property, the delicate balance between functional utility and aesthetic innovation often determines the designs’ protections. The case of Travel Blue Products India Private Ltd. & Anr. v. Miniso Life Style Pvt. Ltd. & Anr[1]., exemplifies this tension, converting a simple travel neck pillow neck into a battleground for piracy allegations. Decided by the Bombay High Court on July 31, 2025, it underlines how visual appeal can succeed over claims of functionality and unproven prior art, offering significant direction for design registrants and enterprises.
The Design Act, 2000 (herein referred to as the Act) – Design Protection, Cancellation and Piracy
A “design” covers the shape, configuration, pattern, ornament or composition of lines/colours applied to an article 2D/3D or both, so long as the finished article’s appeal is purely visual; mechanical principles, trademarks and artistic works are excluded.[2] Once registered, the design’s copyright lasts 10 years, extendable to 15 years.[3]
A rival mark may attack that registration through a cancellation petition under section 19[4] on grounds that the design was:
- Previously registered in India;
- Published anywhere before the filing date;
- Not new or original;
- Outside the statutory definition of section 2 (d) of the Act or
- Not registrable.
Piracy is defined in Section 22[5] of the Act. During the copyright term, anyone who, without the license applies the design or its fraudulent or obvious imitation to similar goods or imports such goods, constitutes piracy. In any piracy suit, all grounds for cancellation under Section 19 can be raised in defence.[6]
The two key tests in Design Disputes
Courts use two upfront tests in design disputes:
- Eye to Eye Test
- Functionality Test
First being the Eye to Eye Test which places the registered product and the alleged imitation side by side and ask, whether an ordinary prudent buyer would see them as viewing the same overall and if yes, then it constitutes as obvious imitation and infringement.
Second being the Functionality Test which looks at why the shape exists, if that shape is the only practical way to make the product work, then the design is purely functional and loses protection however, if the same function could be delivered by visibly different shapes, the design remains protectable.
Travel Blue Products v. Miniso Life Style[7] – Why Functionality Couldn’t Sink This Design Win?
- The Plaintiffs, Travel Blue Products India Pvt. Ltd. and Travel blue Limited (plaintiff no. 2) are engaged in marketing and selling travel accessories including the “Travel Blue Tranquility Neck Pillow”. Plaintiff No. 2 designed this neck pillow in 2015 and obtained design registration in India on March 09, 2016, bearing No. 281315 under 06-09 for a “Neck Pillow with Pocket”. The registration was extended until October 19, 2030 and moreover, the plaintiff also holds international registrations.
- The design features a unique shape and configuration included elevated sides, dipping curves and a pocket with novelty claimed in the overall shape and configuration. In August 2024, the plaintiffs discovered that the defendants, Miniso Life Style Pvt. Ltd., were selling an identical similar travel neck pillow in the same colours via retail stores in Mumbai and online platforms.
The plaintiffs alleged that the defendants’ product was a fraudulent imitation of their registered design leading to piracy under the Act and passing-off. The plaintiffs filed the suit seeking injunction. The court granted an ad-interim relief on September 24, 2024 restraining the defendants, thereafter the defendants filed an affidavit in reply contesting claims, arguing the design was functional, not original due to prior art and that no infringement or passing-off occurred; so finally the interim application was taken up for final disposal
The 2 main issues involved in the case were:
Is the plaintiffs’ design validly registered under the Design Act, 2000, or invalid due to functionality or prior art?
- The defendants argued that the design was predominantly functional as shown by the Plaintiff’s pleadings, promotions and customer reviews emphasizing utility. They invoked the “dominant purpose” test from Cryogas[8] case, arguing it overrode the “only option” test from Whirlpool India v. Videocon[9] On prior art, the defendants cited international registrations and e-commerce listings from 2011 onward, claiming the registration was granted only due to the distinctive pocket and prior publication invalidated it under Section 19 (1) (a) or (b) of the Act[10].
- The plaintiffs argued that the design was aesthetic with incidental functional benefits and registrable if alternative existed to achieve the same function. Cryogas[11] was distinguished as relating to copyright-design overlap and further submitted that the international registrations did not prove prior publication in India, novelty resided in the overall shape not just the pocket.
Thus, the court held that the design was prime facie validly registered under Section 2 (d)[12] of the Act as it possessed aesthetic appeal judged by eye. The defendant’s functionality argument was inadequately and contradicted by their acceptance of the design’s visual appeal; the “only option” test from Whirlpool[13] applied as the same function could be achieved through various shapes, indicating it was not purely functional. The court stated that the Cryogas[14] reinforced but did not replace this test emphasizing assessment of dominant aspects. Further the court stated that no prime facie case was made out for cancellation on prior art as defendant failed to prove registration in India under Section 19 and that the pocket was a mechanical appendage not central to novelty.
Whether the Defendant’s neck pillow constitutes piracy of the registered design under Section 22 of the Design Act, 2000 and whether their actions amount to passing-off by causing confusion and damaging the Plaintiffs’ goodwill?
- The plaintiffs submitted that the defendants’ product was an obvious imitation, identical in shape configuration and colours as evidenced by tabular comparisons and physical inspection. They further contended that this established piracy and passing-off given the plaintiff’s goodwill from sales, promotions and market presence since 2015 is likely causing consumer deception.
- The defendants contended that no piracy was constituted as their product differed and was independently developed. They argued that no passing off remedy existed as they used distinct “MINISO” branding and packaging and that mere similarity was insufficient without false representation and colours were not monopolizable.
To this the court held that a prime facie case of piracy was established under section 22[15] of the Act, as physical comparison showed the products were substantially similar or identical, judged by the eye as an obvious imitation as per the Whirlpool case[16]. Further the court observed that minor variations were insufficient and the defendants’ 2022 entry indicated dishonest adoption. Further the court stated that on passing-off, the goodwill was proved via sales, promotions, global presence and prior actions against infringers; overall similarity was likely to confuse consumers, amounting to misrepresentation and damage; so the balance of convenience favored the Plaintiffs, warranting them an interim injunctions.
Conclusion
This ruling reinforces design protection in India by prioritizing aesthetic appeal over incidental functionality, harmonizing tests from Whirpool and Cryogas[17] to affirm that designs with visual novelty merit monopoly even if serving utility. It curbs imitation in competitive sectors like travel accessories, clarifying prior art thresholds under section 19[18] of the Act and reinforcing the ocular test for piracy. Therefore, it underscores that aesthetic innovation deserves robust safeguards, while pure functionality remains unprotected promoting fair competition and IP vigilance in global markets.
Anoushka Keswani, Legal Intern at S.S.Rana & Co. has assisted in the research of this article.
[1] Travel Blue Products India Private Ltd. & Anr. v. Miniso Life Style Pvt. Ltd. & Anr., IA (L) No. 28407 of 2024.
[2] The Designs Act, No. 16 of 2000, § 2(d)-“ “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)..”.
[3] The Designs Act, No. 16 of 2000, § 11- “Copyright on registration—(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration. (2) If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copy-right for a second period of five years from the expiration of the original period of ten years.”
[4] The Designs Act, No. 16 of 2000, § 19- “Cancellation of registration.— (1)Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:—(a)that the design has been previously registered in India; or(b)that it has been published in India or in any other country prior to the date of registration; or(c)that the design is not a new or original design; or(d)that the design is not registerable under this Act; or(e)that it is not a design as defined under clause (d) of section 2…”.
[5] The Designs Act, No. 16 of 2000, § 22 (1)- “Piracy of registered design – (1) During the existence of copyright in any design it shall not be lawful for any person– (a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied”.
[6] The Designs Act, No. 16 of 2000, § 22 (3) – “Piracy of registered design – (3) In any suit or any other proceeding for relief under sub-section (2), ever ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence.”
[7] Travel Blue Products India Private Ltd. & Anr. v. Miniso Life Style Pvt. Ltd. & Anr., IA (L) No. 28407 of 2024.
[8] Cryogas Equipment Pvt. Ltd. v. Inox India Ltd., 2025 SCC OnLine SC 780 and retrieved from- https://www.ipstars.com/NewsAndAnalysis/Navigating-the-crossroads-of-copyright-and-design-the-cryogas-vs-inox-saga/Index/10690.
[9] Whirlpool of India Ltd. v. Videocon Industries Ltd., 2014 SCC OnLine Bom 565.
[10] The Designs Act, No. 16 of 2000, § 19- “Cancellation of registration.—(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:— (a) that the design has been previously registered in India; or (b) that it has been published in India or in any other country prior to the date of registration;”
[11] Cryogas Equipment Pvt. Ltd. v. Inox India Ltd., 2025 SCC OnLine SC 780 and retrieved from- https://www.ipstars.com/NewsAndAnalysis/Navigating-the-crossroads-of-copyright-and-design-the-cryogas-vs-inox-saga/Index/10690.
[12] The Designs Act, No. 16 of 2000, § 2(d)-“ “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)..”.
[13] Whirlpool of India Ltd. v. Videocon Industries Ltd., 2014 SCC OnLine Bom 565.
[14] Cryogas Equipment Pvt. Ltd. v. Inox India Ltd., 2025 SCC OnLine SC 780 and retrieved from- https://www.ipstars.com/NewsAndAnalysis/Navigating-the-crossroads-of-copyright-and-design-the-cryogas-vs-inox-saga/Index/10690.
[15] The Designs Act, No. 16 of 2000, § 22- “Piracy of registered design.—(1) During the existence of copyright in any design it shall not be lawful for any person— (a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or (b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or (c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article..”
[16] Whirlpool of India Ltd. v. Videocon Industries Ltd., 2014 SCC OnLine Bom 565.
[17] Cryogas Equipment Pvt. Ltd. v. Inox India Ltd., 2025 SCC OnLine SC 780 and retrieved from- https://www.ipstars.com/NewsAndAnalysis/Navigating-the-crossroads-of-copyright-and-design-the-cryogas-vs-inox-saga/Index/10690
[18] The Designs Act, No. 16 of 2000, § 19- “Cancellation of registration.—(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:— (a) that the design has been previously registered in India; or (b) that it has been published in India or in any other country prior to the date of registration; or (c) that the design is not a new or original design; or (d) that the design is not registrable under this Act; or (e) that it is not a design as defined under clause (d) of section 2.”