Introduction
When we talk about a product’s design, we’re looking at two main aspects: how it looks, i.e., its aesthetic features, and how it functions, i.e., its functional features. According to Indian law, a design can be protected based on its aesthetic features and not on its functionality. Recently, the Bombay High Court put these principles into practice during a legal battle between Travel Blue Products India Pvt. Ltd. (TBPL) and Miniso Lifestyle Pvt. Ltd. (Miniso).
Background
Travel Blue specializes in travel accessories, and one of their standout products is the “Travel Blue Tranquility Neck Pillow.” They’ve secured the design of Tranquility neck pillow (Design No. 281315), which gives them legal protection until October 19, 2030. Additionally, TBPL has registered this design in several other countries, including the USA, China, and Australia.
Recently, TBPL accused Miniso of selling neck pillows that bear a striking resemblance to their registered design, featuring similar shapes, configurations, and colors. They claimed that Miniso’s product was copy of their design. TBPL argued that this constituted design piracy and passing off, which misleads consumers into thinking Miniso’s pillow is actually theirs.
TBPL argued that once the design is registered, there is presumption of validity under Section 10(4) of the Designs Act, 2000. They also emphasized that even if the product has some functional features (such as foldability or memory foam), those are product features, not design features – that should not lead to the entire design losing its protective status. TBPL relied on the long-standing “only mode/option” test, reaffirmed by Indian courts, including Whirlpool vs Videocon, which states that if a function can be achieved through many alternative designs, then the design is still registrable and protectable.
Respondent’s Submissions
The Respondents submitted that although the Plaintiff’s pillow includes a convenient pocket, their own design does not; this, they assert, creates a material distinction between the two. They maintained that the mere presence of a pocket differentiates the overall visual appearance. Further, the Respondents argued that the Plaintiff’s design is largely functional, focusing on aspects such as ergonomics, foldability, ease of storage, and memory foam—features which, they argued, cannot be monopolized through design registration.
The Respondents also argued that the Plaintiff’s design lacked novelty because similar designs already exist in prior art. They placed reliance on older designs and international registrations to suggest that the shape and configuration were not original. They further cited the Supreme Court ruling in Cryogas Equipment Pvt. Ltd. v. Inox India Ltd., contending that the “dominant purpose” or “functional utility” test should apply, and that TBPL’s design served a functional rather than aesthetic purpose.
Finally, they asserted that there was no case of passing off, as their packaging, branding, and trade dress were sufficiently distinct. They argued that a single color or minor similarity is insufficient to grant exclusive rights. They argued that similarities in colour cannot amount to passing off, and consumers would not be confused because Miniso sells under its own brand name.
Plaintiffs Response
The Plaintiff responded by clarifying that the “functional utility” test from Cryogas does not replace earlier legal tests, including the “only mode/option” test; rather, both must be read together. They emphasized that their design is principally aesthetic: the pillow has distinct curves, contours, and elevated sides that appeal to the eye.
TBPL also clarified that the pocket in their design is merely a mechanical appendage and is not the basis of novelty. The novelty resides in the shape and configuration of the pillow itself, which is exactly how the design certificate describes it. The pocket does not substantially contribute to the overall appearance.
The Plaintiff further argued that they have made significant investments in sales, marketing, and branding, which have built up a reputation such that the public recognizes the design and associates it with the Plaintiff. They argued that this recognition (goodwill) supports their claim, especially in the context of passing off, because even if there are similarities, the distinct association should protect their brand and rights.
The Decision
The Bombay High Court examined whether Miniso’s design infringed TBPL’s registered design and whether TBPL was entitled to protection.
- Visual Similarity: The Court held that Miniso’s pillow was prima facie an obvious imitation of the registered design. The rival products were physically produced in Court, and it was “nigh impossible to differentiate” between them in terms of shape, contours, configuration, and colours.
- Pleadings & Cancellation: Miniso had argued that TBPL’s design should be cancelled due to lack of novelty and excessive functionality. However, the Court noted that Miniso had not properly pleaded a cancellation case nor produced the necessary evidence to support such a challenge. Simply placing international design registrations was insufficient.
- Novelty and Prior Art: Under Section 19(1) of the Designs Act, cancellation requires valid proof of prior publication or prior registration in India or any country. Miniso’s references did not show that the same visual design existed earlier. The Court found that the alleged prior art designs had different contours and shapes and were not similar to TBPL’s design..
- Functionality Test: The Court reaffirmed that a design does not lose protection merely because it has some functional features. It applied the Whirlpool “only mode/option” test:
- If a function can be achieved through multiple alternative designs, then the design is not dictated by function.
- TBPL’s design has multiple alternative shapes available in the market; hence aesthetic choice was involved.
- The pillow’s visual features were not purely functional.
Cryogas did not overrule Whirlpool. Rather, the Supreme Court confirmed that functionality must be assessed as part of determining whether the design appeals to the eye.
- Passing Off: TBPL established sufficient goodwill (sales of approx. INR 3.95 crores and promotional expenses of INR 25 lakhs). The Court found that consumers could easily mistake Miniso’s product for TBPL’s due to the striking overall similarity. Miniso’s differing packaging did not matter because the goods are displayed without packaging in retail, making the product’s appearance the primary identifier.
Given the above findings, the Court upheld the interim injunction in favor of TBPL and restrained Miniso and its associated parties from manufacturing, selling, marketing, advertising, or engaging in any activities related to products that clearly imitate TBPL’s neck pillow design, and all online listings for the products in question, whether on e-commerce platforms or social media, were ordered be taken down until a final decision is reached.
Why The Judgement Matters
This judgment reinforces some important legal principles in design law:
- Even if a design has some functional features, it may still be protected if there is aesthetic appeal and if alternate designs are possible.
- The “dominant purpose” test (functional vs aesthetic) is important, but it doesn’t replace earlier tests like whether the design is the only mode or option for the function.
- Goodwill and reputation play a big role in “passing off” claims. Even small similarities can mislead consumers, particularly when a design is well known.
- Anyone challenging a design must produce specific, clear visual evidence of earlier identical or nearly identical designs.
Conclusion
This decision serves as a reminder that design enforcement in India is not a theoretical right—it is a commercially meaningful one. For companies operating in high-volume consumer markets, the case highlights a practical shift: courts are increasingly willing to protect visual identity in everyday products, even where the underlying article is simple or commonplace. Investing in thoughtful registrations, clean representations, and early enforcement pays real dividends. And for businesses relying on “inspiration” from market leaders, this judgment makes the commercial risk explicit: in a crowded retail environment where differentiation is thin, copying the look and feel of a competitor’s product is a legally significant misstep that courts will not hesitate to restrain.