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Supreme Court of India
Cryogas Equipment Private Limited vs Inox India Limited on 15 April, 2025
Author: Surya Kant
Bench: Surya Kant
2025 INSC 483 REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
Civil Appeal No. ____ / 2025
(Arising out of Special Leave Petition (C.) No. 28062 / 2024)
Cryogas Equipment Private Limited ….Appellant(s)
versus
Inox India Limited and Others ….Respondents
WITH
Civil Appeal No. ____ / 2025
(Arising out of Special Leave Petition (C.) No. 28017 / 2024
LNG Express India Private Limited ….Appellant(s)
versus
Inox India Limited and Others ….Respondents
Signature Not Verified
Digitally signed by
ARJUN BISHT
Date: 2025.04.15
15:24:12 IST
Reason:
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JUDGEMENT
SURYA KANT, J.
Leave granted.
2. The captioned appeals arise from a common judgement dated
22.10.2024 delivered by the High Court of Gujarat at Ahmedabad
(High Court) in a dispute between the parties primarily concerning
an alleged copyright infringement, whereby the 4th Additional
District Judge at Vadodara’s (Commercial Court) order dated
03.05.2024 allowing an application under Order VII Rule 11 of the
Code of Civil Procedure, 1908 (CPC) was set aside, and the Suit
filed by Respondent No. 2 was restored to its original number
(Impugned Judgement).
3. The parties to the appeal are, inter alia embroiled in a dispute
concerning the purported infringement of intellectual property (IP)
rights in relation to the designing and manufacturing of the internal
parts of Cryogenic Storage Tanks and Distribution Systems which
are mounted on Trailers and Semi-Trailers, to effectively transport
industrial gases, liquified natural gas (LNG) and such like
substances.
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A. FACTS
4. That being so, given the shared sequence of events underlying these
two appeals, this presents an appropriate juncture for a detailed
examination of the factual matrix.
4.1. The dispute between the parties arose when Respondent No. 1 in
these appeals, Inox India Limited (Inox), filed Trademark Suit No.
3/2019 (Suit) before the Commercial Court against the Appellants,
i.e. Cryogas Equipment Private Limited (Cryogas) and LNG Express
India Private Limited (LNG Express), on 24.09.2018. Inox primarily
alleged that Cryogas, LNG Express, and others had infringed two
distinct types of copyright: (i) the drawings of LNG Semi-trailers
developed by Inox (Proprietary Engineering Drawings); and (ii)
the details, processes, descriptions and narrations written by Inox
employees in creating the Proprietary Engineering Drawings
(Literary Works). These IPs were supposedly developed by Inox to
meet the specific requirements for storing and transporting
sophisticated LNG Semi-trailers suitable for Indian roads.
4.2. In this Suit, Inox sought relief in terms of: (i) a declaration that
Cryogas, LNG Express and others have infringed Inox’s Proprietary
Engineering Drawings, IP and Literary Works; (ii) a permanent
injunction restraining Cryogas, LNG Express and the other
associated parties from using or reproducing any drawings or
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works similar to that of Inox’s Proprietary Engineering Drawings or
Literary Works; (iii) a permanent injunction against the use of any
IP or know-how associated with manufacturing the impugned
products; (iv) an order directing Cryogas, LNG Express and others
to surrender all infringing materials for destruction, including
drawings, trailers, labels and other items using the Proprietary
Engineering Drawings; and (v) an award of damages amounting to
Rs. 2 Crores for copyright infringement.
4.3. In addition, Inox filed an application under Order XXXIX Rules 1
and 2 of the CPC, seeking an ad interim injunction to restrain
Cryogas, LNG Express, and others from infringing its IP rights and
confidential information during the pendency of the Suit.
4.4. In response thereto, LNG Express moved its application under
Order VII Rule 11 of the CPC, seeking rejection of the Suit on the
ground that it was not maintainable under Section 15(2) of the
Copyright Act, 1957 (Copyright Act). It primarily contended that
the Proprietary Engineering Drawings, for which Inox claimed
copyright protection, fell within the definition of a ‘design’ under
Section 2(d) of the Designs Act, 2000 (Designs Act). It argued that
Inox had lost copyrights for the said drawings by failing to register
them under the Designs Act. Furthermore, LNG Express asserted
that copyright does not subsist in any design that is registered or
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capable of being registered under the Designs Act once it has been
reproduced more than fifty times by an industrial process, either
by the copyright owner or any authorised licensee. Specifically, it
contested Inox’s claim of generating revenue amounting to Rupees
122 crores, arguing that such proceeds could only have been
realised through the sale of Cryogenic Semi-trailers manufactured
by an industrial process and using the Proprietary Engineering
Drawings in excess of the stipulated threshold of fifty
reproductions. In this context, LNG Express assailed that
protection could not be sought under the Copyright Act by virtue of
Section 15(2), and the Suit thus falls at the threshold.
4.5. The Commercial Court, on 01.04.2022, allowed the application filed
by LNG Express under Order VII Rule 11 of the CPC, consequently
rejecting Inox’s plaint and its application for interim injunction.
Inox filed two appeals before the High Court challenging the orders
of the Commercial Court. On 13.03.2024, the High Court, through
a common order set aside the Commercial Court’s order, holding
that it erred in allowing the application under Order VII Rule 11 of
the CPC, which had led to the rejection of both the plaint and the
prayer for interim injunction. The High Court remanded the matter
to the Commercial Court for fresh consideration, restoring the Suit
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to its original number and directing it to adjudicate the pending
applications concurrently while issuing separate orders for each.
4.6. Subsequently, on 03.05.2024, in compliance with the High Court’s
directions, the Commercial Court reconsidered the aforementioned
applications. By way of separate orders, it allowed LNG Express’
application under Order VII Rule 11 of the CPC, resulting in the
rejection of the plaint, and consequently dismissed Inox’s
application for ad interim injunction.
4.7. Inox once again approached the High Court, challenging the
Commercial Court’s orders dated 03.05.2024 through separate
appeals. The High Court, in turn, vide the Impugned Judgment, set
aside the Commercial Court’s orders based on the following
rationale and has issued: (i) The Commercial Court erred in law by
presuming that the Proprietary Engineering Drawings qualified as
a ‘design’ under Section 2(d) of the Designs Act and stood utilised
to manufacture a product more than fifty times through an
industrial process, thereby excluding it from protection under the
Copyright Act; (ii) LNG Express’ application under Order VII, Rule
11 of the CPC was rejected, and the Suit was restored to its original
number; (iii) Inox’s interim injunction application under Order
XXXIX Rules 1 and 2 of the CPC was reinstated; and (iv) The
restored interim injunction application was directed to be decided
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by the Commercial Court on its merits independently and as
expeditiously as possible, preferably within eight weeks.
4.8. Hence, the instant appeals. We may clarify at this stage that after
reserving our judgment on 29.01.2025 and pending the present
proceedings, the Commercial Court was permitted to proceed with
hearing the parties on the interim application in accordance with
the High Court’s directions. However, the passing of the final order
was directed to remain in abeyance.
B. CONTENTIONS ON BEHALF OF THE APPELLANTS
5. Mr. Shyam Divan, learned Senior Counsel appearing for Cryogas
and LNG Express, vehemently argued that the High Court erred in
setting aside the Commercial Court’s order dated 03.05.2024,
which had allowed their application under Order VII Rule 11 of the
CPC. In support of his contentions, he advanced the following
submissions:
(a) Inox filed the Suit seeking protection of the Proprietary
Engineering Drawings under the Copyright Act, alleging that
Cryogas and LNG Express had infringed its IP rights in both
the artistic elements of the drawings and the literary
components detailing the processes and descriptions therein.
Inox further sought to restrain Cryogas and LNG Express from
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converting the two-dimensional industrial drawings of
cryogenic Semi-trailers into three-dimensional
representations. However, these pleas ought to be outrightly
rejected as they have been raised as an afterthought to
circumvent the applicability of Section 15(2) of the Copyright
Act. Admittedly, Semi-trailers can only be manufactured
through an industrial and mechanical process.
(b) LNG and Cryogenic Semi-trailers worldwide are designed in
accordance with international standard-setting bodies such as
the American Society of Mechanical Engineers (ASME) and the
Pressure Equipment Directive (PED). Given that these trailers
are used for transporting cryogenic liquids, their design must
comply with country-specific regulations, while international
standards prescribe detailed guidelines on design parameters,
material selection, and internal components. Accordingly, all
relevant stakeholders, including the parties herein, adhere to
PED stipulations and the guidelines issued by the Ministry of
Road Transport and Highways of India.
(c) The Suit is barred under Section 15(2) of the Copyright Act, as
the Proprietary Engineering Drawings, for which Inox claims
copyright infringement, are capable of being registered under
the Designs Act. The copyright protection for such drawings
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would cease to subsist in view of Section 15(2) of the Copyright
Act once Semi-trailers are reproduced or manufactured more
than fifty times through an industrial process.
(d) The right to protect IP in terms of the Proprietary Engineering
Drawings would, however, be available to Inox under the
Designs Act, provided the said drawings were registered under
it. Furthermore, ‘Semi-trailers’ or ‘Road Vehicle Trailers’
manufactured by Inox fall within the classification under
Schedule III of the Designs Act, specifically Class 12-10.
Consequently, to claim an IP infringement, Inox should have
registered the Proprietary Engineering Drawings under the
(e) The objective of the Copyright Act is to protect artistic works
such as paintings, sculptures, and other forms of creative
expression for extended periods. In contrast, the Designs Act
is intended to safeguard industrial designs for a limited
duration to facilitate commercial exploitation. The
Legislature’s intent was thus to provide protection for
industrial designs, such as the Proprietary Engineering
Drawings, under the Designs Act rather than the Copyright
Act, so as to ensure that such works are regulated within the
appropriate legal framework.
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(f) Inox has failed to disclose in its plaint before the Commercial
Court the number of Semi-trailers it has produced through an
industrial process. Instead, it has engaged in strategic drafting
by selectively revealing that it has generated revenue of Rupees
122 crores, seemingly to circumvent the legal effect of Section
15(2) of the Copyright Act. However, such revenue can be
reasonably inferred to result from the production of more than
fifty Semi-trailers, thereby triggering the bar under Section
15(2) of the Copyright Act. Inox cannot rely on evasive drafting
to create a misleading impression of a valid cause of action.
These contentions were buttressed by relying on the ratio laid
down in decisions such as Shri Mukund Bhavan Trust and
others v. Shrimant Chhatrapati Udayan Raje Pratapsinh
Bhonsle.1
(g) Inox has erroneously asserted that the Proprietary Engineering
Drawings are not capable of registration as ‘designs’ under
Section 2(d) of the Designs Act on the ground that the products
manufactured using these drawings lack visual appeal, as they
pertain to the inner vessel of the Semi-trailer, which remains
concealed. This claim ought to be rejected, as the drawings fall
within the category of designs capable of registration under the
1 (2024) SCC OnLine SC 3844.
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Designs Act but have not been registered. Moreover, it is
incorrect to suggest that the Semi-trailers lack visual appeal,
given that the drawings also encompass the external shape
and components of a Semi-trailer. In any case, the question of
visual appeal is inherently subjective and cannot be a
determinative factor for considering an application under
(h) The scope of inquiry before the Commercial Court in the Suit
is limited to determining whether the Proprietary Engineering
Drawings are capable of registration under the Designs Act
and, if they have not been so registered, whether they lose the
protection of the Copyright Act once applied to articles through
an industrial process. The question of such drawings being
subject to the limitations imposed by Section 15(2) of the
Copyright Act is a pure question of law, which should be
decided based on a prima facie appraisal of the averments in
the plaint, without the necessity of adducing further evidence.
(i) Lastly, Inox’s assertion that the plaint also pertains to the
alleged theft of confidential information and trade secrets by
Respondent Nos. 3 and 4, ought to be rejected at the threshold.
The plaint contains no specific prayers regarding such claims,
and any alleged breach of this nature arising from a common
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law right would be actionable before a civil court rather than a
Commercial Court, which inter alia may only adjudicate
matters related to IP rights. Moreover, a perusal of the plaint
reveals that the Suit has been filed for copyright infringement
under Section 62(2) of the Copyright Act, which falls within the
jurisdiction of the Commercial Court.
C. CONTENTIONS ON BEHALF OF RESPONDENT NO. 1
6. Mr. Chander M. Lall and Mr. J. Sai Deepak, Learned Senior
Counsels representing Inox, refuted the claims put forth by
Cryogas and LNG Express and instead adduced the following
submissions:
(a) The Suit pertains to two distinct categories of copyright: the
Proprietary Engineering Drawings and the Literary Work.
Consequently, the reliefs sought in the Suit are also distinct in
nature. As a result, each IP claim should be assessed
independently, with due consideration given to its unique
characteristics and legal implications.
(b) Industrial drawings, such as the Proprietary Engineering
Drawings, fall within the definition of ‘artistic works’ under
Section 2(c) of the Copyright Act. An artistic work can be
denied copyright protection by invoking Section 15(2) of the
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Copyright Act only if such work is either registered or capable
of being registered under the Designs Act. Moreover, the
Proprietary Engineering Drawings pertain to the internal
components of a cryogenic container and are excluded by the
exception under Section 2 of the Designs Act, which states that
a registrable design ‘does not include any mode or principle
of construction or anything which is in substance a mere
mechanical device’. Furthermore, these drawings lack visual
appeal, a necessary criterion for a ‘design’ under the Designs
Act. Accordingly, Section 15(2) of the Copyright Act is
inapplicable, and the Proprietary Engineering Drawings
cannot be deemed capable of registration under the Designs
Act.
(c) The Literary Work in question is not subject to the bar under
Section 15(2) of the Copyright Act. The Commercial Court erred
in concluding that the Literary Work, including details,
processes, and descriptions, is merely a reference to the
Proprietary Engineering Drawings and the information
contained therein. Such an interpretation incorrectly assumes
that all the rights asserted in the plaint are intrinsically linked
to the Proprietary Engineering Drawings. This approach is
inconsistent with fundamental principles of copyright law,
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which recognise that each category of copyright protection is
distinct and must be assessed independently.
(d) The infringement arising from the theft of confidential
information constitutes a distinct legal issue and is not subject
to the limitations imposed by Section 15(2) of the Copyright
Act. Courts have consistently recognised that confidential
information is a separate legal concept possessing independent
value, warranting protection under common law principles.
Accordingly, the misappropriation of confidential information
should be assessed on its own merits.
(e) The issues concerning the three IPs in question are distinct
and separate, a fact that the Commercial Court failed to
appreciate while allowing LNG Express’ application under
Order VII Rule 11 of the CPC. The Commercial Court proceeded
under the erroneous assumption that an ‘original artistic work’
automatically loses protection under the Copyright Act once it
is applied to an article through an industrial process. The
Commercial Court further failed to consider the true meaning
and scope of ‘design’ under the Designs Act. That apart, the
claims concerning the infringement of the Literary Work and
the theft of confidential information fall outside the purview of
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Order VII Rule 11 of the CPC and could not have been
summarily rejected.
(f) The determination of whether the original artistic work
qualifies as a ‘design capable of being registered’ under the
Designs Act cannot be made while deciding an application
under Order VII Rule 11 of the CPC. At this stage, the
jurisdiction of the court is limited to conducting a prima facie
inquiry to ascertain whether or not the plaint discloses a cause
of action. The issue at hand involves a mixed question of law
and fact and thus requires a full trial wherein both parties can
present evidence before a conclusive finding can be drawn.
(g) Inox, in its Suit, has also sought an injunction restraining
Cryogas, LNG Express, and others from converting the two-
dimensional Proprietary Engineering Drawings into three-
dimensional objects. The Local Commissioner’s Report dated
26.09.2018 provides substantive evidence in this regard,
revealing that several files containing Inox’s proprietary
materials—including inspection reports, general test plans,
shop weld plans, quality control programs, and drawing design
calculations—were found at the premises of LNG Express and
Cryogas. These documents pertain to the quality control
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processes of Inox’s proprietary materials and products, further
substantiating the claim of unauthorised use.
D. ISSUES
7. Having perused the factual matrix and on consideration of the rival
contentions advanced by the parties, it is patently clear that the
singular issue which invites our analysis, revolves around the
maintainability of the application under Order VII Rule 11 of the
CPC. However, given the abstruse nature of the underlying dispute,
stemming from a fundamental dissonance in the parties’
interpretations of the applicability of the Designs Act, we deem it
appropriate to adjudicate and analyse the following issues:
i. What are the parameters for determining whether a work or an
article falls within the limitation set out in Section 15(2) of the
Copyright Act, thereby classifying it as a ‘design’ under Section
2(d) of the Designs Act?
ii. Whether the High Court erred in setting aside the order of the
Commercial Court and thus rejecting the application under
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E. ANALYSIS
E.1 Issue No. 1: The parameters for determining whether a work or
an article falls within the limitation set out in Section 15(2) of the
Copyright Act
8. We may clarify at the very outset that the discussion herein would
be limited to determining the distinction between a ‘design’ under
the Designs Act and an ‘artistic work’ that might warrant copyright
protection. To be precise, we are not, either expressly or implicitly,
addressing the merits of the case. This examination has been
prompted by the intrinsic disagreement posited by the parties in
terms of the applicability of the Designs Act. Such a divergence in
interpretation brings to light an interesting juxtaposition and
perhaps a grey area which has not been seemingly addressed by
this Court in the past. In this context, we find it appropriate to
bridge this gap by conducting a conclusive analysis through a two-
pronged approach: (i) examining the current IP statutory
framework in India; and (ii) evaluating the criteria considered and
tests adopted across various jurisdictions. Finally, based on these
two aspects, we seek to set out (iii) the definitive factors to be
considered to ascertain whether an article ought to be conferred
protection under the Copyright Act or the Designs Act within the
confines of Section 15(2) of the Copyright Act.
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E.1.1. The current IP statutory framework
9. IP rights are fundamentally aimed at excluding or preventing others
from possessing, using, or alienating the protected IP, thereby
enabling the owner to benefit from the product of their intellect. In
India, IP rights encompass a broad spectrum of intangible
properties, including Patents, Trademarks, Copyrights, Designs,
and Geographical Indications, each governed and protected by
distinct Statutes. These legislations enable creators or inventors to
earn recognition and receive financial benefits from their
innovations in a manner which balances them with public interest.
However, for the purposes of the present analysis, our examination
will be confined to the intersection between the Copyright Act and
the Designs Act.
10. In India, copyright is governed by the Copyright Act, 1957, which
was enacted to safeguard the rights of copyright owners, including
for commercial exploitation and to encourage the creation of
innovative works. Copyright is a statutory and negative right,
preventing unauthorised copying of copyrighted material. Under
Section 14 of the Act, copyright owners are granted a bundle of
exclusive rights, including the right to reproduce, issue copies,
perform in public, and create translations and adaptations.
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11. The term ‘copyright’ has been defined under Section 14 of the
Copyright Act to mean “the exclusive right subject to the
provisions of the Act, to do or authorise the doing of any of
the following acts in respect of a work or any substantial part
thereof, namely…” It espouses the protection of works in terms of:
(i) literary, dramatic or musical work, not being a computer
programme; (ii) a computer programme; (iii) an artistic work; (iv) a
cinematograph film; and (v) a sound recording. To put it in more
clear terms, the language employed in the provision reads as
follows:
“14. Meaning of Copyright—For the purposes of this Act,
“copyright” means the exclusive right subject to the provisions
of this Act, to do or authorise the doing of any of the following
acts in respect of a work or any substantial part thereof,
namely:—
(a) in the case of a literary, dramatic or musical work, not being
a computer programme,—
(i) to reproduce the work in any material form including the
storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies
already in circulation;
(iii) to perform the work in public, or communicate it to the
public;
(iv) to make any cinematograph film or sound recording in
respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the
work, any of the acts specified in relation to the work in sub-
clauses (i) to (vi);
(b) in the case of a computer programme,—
(i) to do any of the acts specified in Clause (a);
(ii) to sell or give on commercial rental or offer for sale or for
commercial rental any copy of the computer programme:
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Provided that such commercial rental does not apply in respect
of computer programmes where the programme itself is not the
essential object of the rental.
(c) in the case of an artistic work,—
(i) to reproduce the work in any material form including—
(A) the storing of it in any medium by electronic or other means;
or
(B) depiction in three-dimensions of a two-dimensional work;
or
(C) depiction in two-dimensions of a three-dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies
already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to adaptation of the work any of the acts
specified in relation to the work in sub-clauses (i) to (iv);
(d) in the case of a cinematograph film,—
(i) to make a copy of the film, including— (A) a photograph of
any image forming part thereof; or (B) storing of it in any
medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for
such rental, any copy of the film;
(iii) to communicate the film to the public;
(e) in the case of a sound recording,—
(i) to make any other sound recording embodying it including
storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for
such rental, any copy of the sound recording;
(iii) to communicate the sound recording to the public.”
12. The enactment of the Designs Act in 2000, established a distinct
protection regime for designs in India. The Designs Act seeks to
minimise overlap with the Copyright Act by defining the term
‘design’ under Section 2(d) as “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
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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).” This
aspect of IP thus focuses on the utility of work, as well as its visual
appeal and aesthetic, making it an important factor in determining
consumer preference or commercial viability.
13. It must be borne in mind that Section 2(d) of the Design Act,
reproduced above, expressly bars the inclusion of ‘artistic works’
encapsulated under Section 2(c) of the Copyright Act. To further
illuminate, the expression ‘artistic work’ has been defined in the
Copyright Act which reads as follows:
“2. Interpretation.— In this Act, unless the context otherwise
requires—
….
(c) “artistic work” means,—
(i) a painting, a sculpture, a drawing (including a diagram,
map, chart or plan), an engraving or a photograph, whether or
not any such work possesses artistic quality;
(ii) a work of architecture; and
(iii) any other work of artistic craftsmanship;”
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14. Despite the clear language employed in these provisions, a small
vantage point of intersection exists wherein a ‘design’ shares
commonalities with ‘artistic works’ such as paintings or drawings,
that may be accorded copyright protection. This similitude is aptly
illustrated in the Venn Diagram below. We may, however, hasten
to caveat that this is only an illustrative image and is not exhaustive
in nature.
15. This penumbra seems to have been synopsized and, to some extent,
amplified in Section 15(2) of the Copyright Act. We say so, for the
reason that the provision itself enumerates that “copyright in any
design, which is capable of being registered under the Designs
Act, 2000 but which has not been so registered, shall cease
as soon as any article to which the design has been applied
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has been reproduced more than fifty times by an industrial
process by the owner of the copyright or, with his licence, by
any other person.”
16. We must also bear in mind that Section 15(1) of the Copyright Act
explicitly states that a ‘copyright’ shall not subsist in a ‘design’
protected under the Designs Act. This provision thus establishes
that once a ‘design’ is registered, any copyright protection ceases to
exist. Whereas, as already recapitulated, Section 15(2) of the
Copyright Act clarifies that any design which is capable of being
registered under the Designs Act, if not registered, then the
copyright protection in such design would terminate once that
design is applied to any article and reproduced in excess of 50 times
by an industrial process, either by the owner or a licensee.
17. The lines perhaps seem blurred owing to the inherent overlap
between copyrightable artistic works and designs. To put it more
simply, there may be some designs that could be entitled to
copyright protection, and conversely, there can be certain artistic
works which lose their copyright protection when industrially
applied. This perplexity is further augmented on account of there
being an express interdiction on designs from seeking any long-
term copyright protection.
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E.1.2. Parameters adopted across various jurisdictions
18. To resolve this legal conundrum, it is essential to establish clear
parameters distinguishing works eligible for protection under the
Designs Act versus the Copyright Act. In this vein, we turn to
established jurisprudence and comparative legal frameworks, and
have thus examined: (i) the approach adopted by Courts in India;
(ii) the factors employed by courts in the United States of America
(US); and (iii) broader international principles that provide
guidance on the interplay between copyright and design protection.
19. By synthesising these perspectives, we aim to formulate a definitive
test that will provide clarity on the scope of protection afforded
under the respective Statutes.
E.1.2.1 Approach adopted by Courts in India
20. The test applied by various High Courts in India to resolve the
intersection between the Copyright Act and the Designs Act can be
categorised into two distinct approaches:
i. Interpretation of Section 15(2) of the Copyright Act: This involves
pulling back the curtains on the overlaps or intersections
between the two Statutes and ascertaining whether an article
would qualify protection under the Copyright Act for being an
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‘original artistic work’ or whether it would earn protectionunder the Designs Act.
ii. Examination of the ‘Functional Utility’ of the Article: This
requires an assessment as to whether the article serves a
functional purpose beyond mere artistic expression. If the
primary characteristic of the work is its functional utility
rather than aesthetic appeal, it would not qualify to seek
protection under the Designs Act.
E.1.2.1.1 Interpreting Section 15(2) of the Copyright Act
21. It has already been explained in paragraphs 16 and 17 of this
judgement, that a ‘design’ defined under Section 2(d) of the Designs
Act cannot be afforded protection by the Copyright Act under the
guise of it being an ‘artistic work’. While there obviously seems to
be a narrow intersection between ‘artistic works’ and ‘designs’,
particularly in the case of paintings, sculptures or drawings,
Section 15(2) attempts to obfuscate these overlaps and create a
marked distinction so as to prevent any unintended
disconcertment. The crux of the issue thus lies in correctly
classifying an article as either a ‘design’ under the Designs Act or
an ‘artistic work’ under the Copyright Act.
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22. This interface between the two legislations was addressed
extensively by the Delhi High Court in Microfibres Inc v. Girdhar,2
where the dispute concerned the copyright infringement in the
manufacture and sale of certain patterns of upholstery fabric by
the defendant therein. The plaintiff, an American company, claimed
exclusive rights to the drawings applied on the fabric, stating that
they had sought copyright registration for the same and sought
damages from the defendant.
23. The Delhi High Court denied the plaintiff any protection under the
Copyright Act. It based its decision on the following definitive
factors: (i) the plaintiff’s work is not a piece of art in itself in the
form of a painting, despite there being labour and innovativeness
applied to put a particular ‘configuration’ in place. This
configuration comprises of motifs and designs, which by
themselves are not original; (ii) The object of such an arrangement
was to put them to industrial use and does not have any utility or
independent existence of itself; (iii) Fabric designs on textile goods
have been classified as proper subject matter of design protection
by inclusion under Class 5 of the Design Rules, 2001; (iv)
Legislative intent is also to be kept in mind, which is to protect the
creator of the work for a certain period for commercial exploitation.
2 2006 SCC OnLine Del 60.
Page 26 of 56
Protection under the Copyright Act is for the lifetime of the author
and an additional period of sixty years, which is not so in the case
of the Designs Act, where the period is much lesser; (v) ‘Artistic
work’ defined under Section 2(c) of the Copyright Act has been
excluded from the definition of ‘design’ under Section 2(d) of the
Designs Act to exclude for instance, works such as the painting of
M.F. Hussain; (vi) It is apparent that it is the Designs Act which
would give protection to the plaintiff in this case and not the
Copyright Act, as the work in question cannot be labelled as an
‘artistic work’.
24. The Delhi High Court followed and affirmed the ratio in Microfibres
I (supra) in subsequent judgements, such as in Dart Industries
Inc and another v. Techno Plast and others,3 where the
controversy concerned the plaintiffs, who were manufactures of
‘Tupperware’ products, alleging that the defendants had infringed
their copyright and design rights by producing strikingly similar
products. The High Court held that no copyright protection would
subsist once a design had been registered under the Design Act.
That was a case concerning product drawings meant to create the
ultimate product design, for which the copyright claim in the said
drawings was rejected.
3 2007 SCC OnLine Del 892.
Page 27 of 56
25. The High Court in this context further enunciated as follows:
“44. No doubt, the plaintiff has tried to argue that for creating
the same designs, the defendant would have applied the
technique of ‘reverse engineering’ inasmuch as striking
resemblance to the Tupperware Products could have been
achieved by the defendants by circumventing the tedious and
lengthy process used for manufacture of the Tupperware
Products by using computer techniques possibly by 2D or 3D
scanning. This is a matter which would require evidence. May
be on the basis of evidence led ultimately plaintiff is successful
in showing that there is a copyright in the product drawings
and the defendants have copied the said drawings thereby
violating the copyright rights in creating their own products
striking similar to the Tupperware Products. However, prima
facie, it seems that once the drawings are made for
creating the ultimate product design, the copyright in
the said drawings cannot be claimed under the
Copyright Act. May be this is the reason that Section 15
of the Copyright Act provides that once a design is
registered under the Designs Act, copyright therein
shall not subsist. Such a copyright in any design ceases
even when any article to which the design has been
applied has been reproduced more than 50 times by an
industrial process by the owner of the copyright. The
underlying message is that copyright in an industrial
design is governed by the Designs Act, 2000. If a design
is registered under that Act it is not legible for
protection under the Copyright Act. In such cases after the
design is registered under the Designs Act, the protection given
is not copyright protection but a true monopoly based on
statute inasmuch as such designs were never protected by the
common law. Exception may be in those cases where
copyright had come into existence in respect of artistic
drawings and subsequently those drawings were used
as models or patterns to be multiplied by any industrial
process. There, if the drawings became capable of registration
as a design it would not result in copyright being fortified [See
Warner Brothers v. Roadrunner, 1988 FSR 292]. However, if
the intended industrial use of the work was contemporaneous
with its coming into existence, Section 15 of the Copyright Act
would apply. I may hasten to clarify that it is not suggested
that if any design is registered, copyright under no
circumstance exist in the drawings. Section 15 lays down that
on registration of a design under the Designs Act, the copyright
shall not subsist in that design and not in the drawings.
Therefore, it is possible that when the moulded plastic article
of novel shape is made from a working drawing, as in thePage 28 of 56
instant case, the drawing may qualify as an original work
entitled to copyright protection and, at the same time, a
registered design for the shape of the article would be
protected under the Designs Act. If an unauthorised copy is
made of the article, it may constitute an indirect copy of the
drawing and therefore may infringe the copyright.”
[Emphasis supplied]
26. Similarly, in Mattel, Inc v. Jayant Agarwalla,4 the plaintiff Mattel
alleged that the defendant had infringed their copyright by copying
the design of their board game and creating an electronic game
called ‘Scrabulous’. Mattel further argued that all versions of their
game, since 1932, qualified as ‘artistic works’ under Section 2(c) of
the Copyright Act and were protected in India under the
International Copyright Order, 1991. On the contrary, the
defendant contended that Mattel’s game board, being a three-
dimensional article, could not be protected under the Copyright Act
and ought to have been registered as a design under the Designs
Act. A Learned Single Judge of the High Court, having duly
considered the competing claims and relying on Microfibres I
(supra), declined ad interim injunction to the plaintiff on the basis
that its board game had been reproduced more than fifty times,
along with its alphabetical tile pieces, without any registration
having taken place under the Designs Act.
4 2008 SCC Online Del 1059.
Page 29 of 56
27. Meanwhile, Microfibres I (supra), which was being relied on in
several such decisions, was appealed before a Division Bench of the
Delhi High Court vide Microfibres Inc v. Girdhar and Co,5
contending that the subject works qualified as original ‘artistic
works’ within Section 2(c) of the Copyright Act and that no artificial
distinction between works which are pure artistic works and those
which are not could be drawn. In particular, the appellant
questioned the finding of the Single Judge that the artistic work in
question did not have the ability to stand by itself as a piece of art
and had no independent existence.
28. The Division Bench of the High Court, having considered these
contentions, dismissed the appeal and summarised its conclusions
as follows:
“46. We thus summarise our findings as follows:—
a. The definition of ‘artistic work’ has a very wide connotation
as it is not circumscribed by any limitation of the work
possessing any artistic quality. Even an abstract work, such
as a few lines or curves arbitrarily drawn would qualify as an
artistic work. It may be two-dimensional or three-dimensional.
The artistic work may or may not have visual appeal.
b. The rights to which a holder of an original artistic work is
entitled are enumerated in Section 14(c) of the Copyright Act.
c. It is the exclusive right of the holder of a Copyright in
an original artistic work to reproduce the work in any
material form. For example, a drawing of an imaginary
futuristic automobile, which is an original artistic
work, may be reproduced in three-dimensional material
form using an element, such as a metal sheet.
5 2009 SCC OnLine Del 1647.
Page 30 of 56
d. The design protection in case of registered works
under the Designs Act cannot be extended to include the
copyright protection to the works which were
industrially produced.
e. A perusal of the Copyright Act and the Designs Act and
indeed the Preamble and the Statement of Objects and
Reasons of the Designs Act makes it clear that the legislative
intent was to grant a higher protection to pure original
artistic works such as paintings, sculptures etc and
lesser protection to design activity which is commercial
in nature. The legislative intent is, thus, clear that the
protection accorded to a work which is commercial in
nature is lesser than and not to be equated with the
protection granted to a work of pure art.
f. The original paintings/artistic works which may be
used to industrially produce the designed article would
continue to fall within the meaning of the artistic work
defined under Section 2(c) of the Copyright Act, 1957
and would be entitled to the full period of copyright
protection as evident from the definition of the design
under Section 2(d) of the Designs Act. However, the
intention of producing the artistic work is not relevant.
g. This is precisely why the Legislature not only limited the
protection by mandating that the copyright shall cease under
the Copyright Act in a registered design but in addition, also
deprived copyright protection to designs capable of
being registered under the Designs Act, but not so
registered, as soon as the concerned design had been
applied more than 50 times by industrial process by the
owner of the copyright or his licensee.
h. In the original work of art, copyright would exist and the
author/holder would continue enjoying the longer protection
granted under the Copyright Act in respect of the original
artistic work per se.
i. If the design is registered under the Designs Act, the
Design would lose its copyright protection under the
Copyright Act. If it is a design registrable under the
Designs Act but has not so been registered, the Design
would continue to enjoy copyright protection under the
Act so long as the threshold limit of its application on
an article by an industrial process for more than 50
times is reached. But once that limit is crossed, it would lose
its copyright protection under the Copyright Act. This
interpretation would harmonise the Copyright and the Designs
Act in accordance with the legislative intent.
47. Thus, we find no merit in this appeal and the same is
dismissed but with no order as to costs.”
[Emphasis supplied]
Page 31 of 56
29. The Delhi High Court’s view in Microfibres II (supra) has found
favour with other High Courts, also, such as the Bombay High
Court in Pranda Jewelry Pvt. Ltd. v. Aarya 24 KT,6 and the
Kerala High Court in Fun World and Resorts (India) Pvt. Ltd. v.
Nimil KK.7
E.1.2.1.2 The aspect of Functional Utility
30. In order to fully appreciate the scope of ‘functional utility’, it is
imperative first to have a complete grasp on the objects and
purpose of the Designs Act. In this regard, we may usefully refer to
a decision of this Court in Bharat Glass Tube Ltd. v. Gopal Glass
Works Ltd., which laid down as follows:8
“26. In fact, the sole purpose of this Act is protection of
the intellectual property right of the original design for
a period of ten years or whatever further period
extendable. The object behind this enactment is to
benefit the person for his research and labour put in by
him to evolve the new and original design. This is the sole
aim of enacting this Act. It has also laid down that if design is
not new or original or published previously then such design
should not be registered. It further lays down that if it has
been 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 prior to the filing date, or where applicable, the
priority date of the application for registration then such
design will not be registered or if it is found that it is not
significantly distinguishable from known designs or
combination of known designs, then such designs shall not be
registered. It also provides that registration can be cancelled
under Section 19 of the Act if proper application is filed before
the competent authority i.e. the Controller that the design has
been previously registered in India or published in India or in
6 2015 SCC OnLine Bom 958.
7 2020 SCC OnLine Ker 219.
8 (2008) 10 SCC 657.
Page 32 of 56
any other country prior to the date of registration, or that the
design is not a new or original design or that the design is not
registerable under this Act or that it is not a design as defined
in Clause (d) of Section 2. The Controller after hearing both the
parties if satisfied that the design is not new or original or that
it has already been registered or if it is not registerable, cancel
such registration and aggrieved against that order, appeal
shall lie to the High Court. These prohibitions have been
engrafted so as to protect the original person who has
designed a new one by virtue of his own efforts by researching
for a long time. The new and original design when
registered is for a period of ten years. Such original
design which is new and which has not been available
in the country or has not been previously registered or
has not been published in India or in any other country
prior to the date of registration shall be protected for a
period of ten years. therefore, it is in the nature of
protection of the intellectual property right. This was
the purpose as is evident from the statement of objects
and reasons and from various provisions of the Act. In
this background, we have to examine whether the design
which was registered on the application filed by the
respondent herein can be cancelled or not on the basis of the
application filed by the appellant…”
[Emphasis supplied]
31. This Court further acknowledged that the term ‘design’ had been
extensively interpreted by English Courts, considering that the
expression was pari materia with the definition consecrated in the
Indian context. This alignment is particularly relevant as English
jurisprudence has long employed the ‘functional utility’ test to
ascertain whether a work would be entitled to protection under
English law, especially under the English Registered Designs Act,
1949—a test subsequently adopted by some of the High Courts in
India.
Page 33 of 56
32. The question of ‘functional utility’ in the context of design was first
addressed by the House of Lords in Amp v. Utilux, wherein the
dispute between the parties involved the infringement of designs
relating to a single electrical terminal and to a number of terminals
joined together in line.9 The controversy therein pertained to
whether the features or the shape of the terminals were solely
dictated by function or if they appealed to the eye. Lord Reid (for
himself and Lord Donovan) opined that:
“There must be a blend of industrial efficiency with
visual appeal. If the shape is not there to appeal to the
eye but solely to make the article work then this
provision excludes it from the statutory protection.
I would add to avoid misunderstanding that no doubt in the
great majority of cases which the Act will protect the designer
had visual appeal in mind when composing his design. But it
could well be that a designer who only thought of
practical efficiency in fact has produced a design which
does appeal to the eye. He would not be denied
protection because that was not his object when he
composed the design.”
[Emphasis supplied]
33. This decision was the first to draw a distinction in designs between
‘features’ and ‘shapes’ that were construed to be ‘aesthetically
appealing’ to the eye of the consumer, in comparison to features
that existed merely for ‘purely functional purposes’. This
demarcation based upon functional utility was further relied upon
by the Judicial Committee of the Privy Council while interpreting
the English Registered Designs Act, 1949, in Interlego A.G v. Tyco
9 [1972] RPC 103.
Page 34 of 56
Industries Inc and others.10 This line of distinction on the basis
of features being eye-appealing or merely due to functional utility,
as developed by English courts, has been subsequently employed
by some of the High courts in India.
34. The Delhi High Court first addressed the issue of functional utility
in Smithkline Beecham Plc. v. Hindustan Lever Ltd,11 where the
plaintiff sought a declaration of ownership over toothbrush designs
to prevent the defendants from infringing upon them. The Single
Judge examined whether the ‘S’-shaped design of the toothbrush
was primarily functional or aesthetic. Applying the functional
utility test, the court determined that while the design offered some
aesthetic appeal to consumers, its primary purpose was functional.
As a result, the High Court ruled in favour of the defendant and
denied design protection to the plaintiff.
35. The Madras High Court thereafter applied the functional utility test
in Tractors and Farm Equipment Ltd. v. Standard Combines
Pvt. Ltd.,12 following the precedent set in Smithkline (supra). The
case involved allegations of infringement and passing off relating to
certain tractor models, parts, and fittings. In reviewing whether the
Trial Court was correct in rejecting the plaint, the High Court held
10 [1988] UKPC 3.
11 1999 SCC OnLine Del 965.
12 2012 SCC OnLine Mad 5470.
Page 35 of 56
that serious questions remained regarding whether the specific
parts or shapes were functional or aesthetic. Additionally, it needed
to be determined whether the original drawings warranted
protection under the Designs Act or the Copyright Act.
Consequently, the Madras High Court ruled that the plaint could
not be rejected at the threshold. This decision by the Single Judge
thereafter came to be reaffirmed by a Division Bench of the Madras
High Court in 2014.13
36. The Smithkline (supra) decision itself was reaffirmed by a Full
Bench of the Delhi High Court in Mohan Lal v. Sona Paint and
Hardwares.14 This case involved a dispute over the infringement
of novel and distinguishable mirror frames and addressed the
broader legal question of whether a passing off action could be
combined with a claim under the Designs Act, although not
relevant to the present discussion.
37. The Bombay High Court also commented on the standard of the
functional utility test in Whirlpool of India Ltd. v. Videocon
Industries Ltd.,15 wherein it has put forth that the ‘conundrum of
functionality may be resolved by taking note of the fact that it would
13 Standard Corporation India Ltd. v. Tractors and Farm Equipment Ltd, 2014 SCC OnLine
Mad 850.
14 2013 SCC OnLine Del 1980.
15 2014 SCC OnLine Bom 565.
Page 36 of 56
make no impact on the article’s functionality, if the function could be
performed by the use of another shape as well’.
38. Interestingly, the Bombay High Court, in Photoquip India Ltd. v.
Delhi Photo Store,16 appears to have adopted a conjunctive
approach by interpreting Section 15(2) of the Copyright Act
alongside the test of functional utility. While adjudicating the
plaintiff’s claim for an injunction to restrain the defendant from
infringing its copyright in artistic works, a Learned Single Judge
succinctly held that:
“29. What is that to which Section 15(2) refers? It speaks
only of a ‘design’, and not an ‘artistic work’. It has no
application to the latter, but only to the former. Section
2(d) of the Designs Act makes this plain, for it excludes
from the definition of design all ‘artistic works’. Therefore,
the Defendants’ argument must necessarily be that the Plaintiff’s
drawings are not artistic works at all, but are designs. Following
the Interlego decision, Mrs. Justice Dalvi held in Indiana Gratings
that to be registrable under the Designs Act (even if not actually
registered), the shape or configuration of the whole article is to
be considered, for it is this of which a commercial monopoly is
sought. The design and the article must, of necessity, be
taken as a whole. If there is a part of it that is functional,
that stands excluded from the definition of a design. The
exclusionary intent extends only to that which has no
appeal but describes or portrays purely functional
features. If it does, it is not a ‘design’. It may then enjoy
copyright as an ‘artistic work’. This inclusion under the
Copyright Act is not to be confused, as regrettably Mr. Grover
does, with the question of ‘visual appeal’ for the purposes of the
Designs Act. As in Indiana Gratings, the present Plaintiff’s
drawings are skilled diagrams that do not reflect any finished
products, let alone a finished product of any ‘visual’ or aesthetic
appeal. They only serve a functional purpose. They are not,
therefore, designs.”
[Emphasis supplied]16 2014 SCC OnLine Bom 1088.
Page 37 of 56
39. No decision of any other High Court or this Court expressing a
discordant view has been cited before us. We thus safely proceed
on the premise that the test of functional utility is integral to
determining whether an article or work qualifies for protection
under the Designs Act and its continued relevance, as recently held
by the Delhi High Court in TTK Prestige Ltd. v. KCM Appliances
Pvt. Ltd.17
E.1.2.2 Factors employed by courts in the US
40. The analysis of ‘functional utility’ for determining eligibility for
design protection closely parallels the ‘conceptual separability’
standard established by American Courts. Under this standard,
courts assess whether the artistic aspect of an article can be
distinguished from its utilitarian or functional component. This
approach aligns with the tests applied by Indian High Courts,
which exclude functional or utilitarian subject matter from
protection under the Designs Act.
41. While American jurisprudence does not treat the distinction
between artistic works and designs in the same manner as Indian
law, there are notable similarities in the parameters used to
separate the functional aspects of a work from its artistic or
aesthetic features and thus conclusively determine whether a work
17 2023 SCC OnLine Del 2129.
Page 38 of 56
is entitled statutory protection. One of the first such cases
employing an approach of separating artistic expression from a
utilitarian article was Mazer v. Stein.18 The US Supreme Court in
that dispute examined the validity of copyrights granted to the
respondents for statuettes of male and female dancing figures made
of semivitreous china. The Court ruled that while the copyright
owners could not prevent others from using statuettes of human
figures in table lamps, they could prohibit direct copying of their
specific copyrighted statuettes.
42. Though the court in Mazer (supra) did not explicitly use the term
‘conceptual separability’, but that was seemingly the foundation to
bifurcate an artistic expression from a utilitarian article. In fact,
the position of law developed in Mazer (supra) was subsequently
incorporated by the US Congress in the Copyright Act, 1976, which
postulated that:
“Pictorial, graphic, and sculptural works” include two-
dimensional and three-dimensional works of fine, graphic,
and applied art, photographs, prints and art reproductions,
maps, globes, charts, diagrams, models, and technical
drawings, including architectural plans. Such works shall
include works of artistic craftsmanship insofar as their
form but not their mechanical or utilitarian aspects are
concerned; the design of a useful article, as defined in this
section, shall be considered a pictorial, graphic, or sculptural
work only if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural features that can
be identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article.”18 Mazer v. Stein, 347 U.S. 201, 74 S. Ct. 460, 98 L. Ed. 630 (1954).
Page 39 of 56
“A “useful article” is an article having an intrinsic
utilitarian function that is not merely to portray the
appearance of the article or to convey information. An
article that is normally a part of a useful article is considered
a “useful article”.”
[Emphasis supplied]
43. With the insertion of the notion of ‘conceptual separability’ into the
statutory framework, a phase of continuous evolution was
undergone to define the scope and extent of this concept. For
instance, in Esquire Inc v. Ringer,19 the Court of Appeals for the
District of Columbia Circuit assessed the House Report of the 1976
Act and enumerated that ‘the overall design or configuration of a
utilitarian object, even if it is determined by aesthetic as well as
functional considerations, is not eligible for copyright’.
44. Thereafter, while adjudicating Kieselstein-Cord v. Accessories by
Peral Inc,20 the Court of Appeals for the Second Circuit qualified
that the test of ‘conceptual separability’ is not a brightline rule but
involves a degree of subjectivity. It introduced a primary-subsidiary
approach, surmising that the test of ‘conceptual separability’ would
be satisfied if the artistic features of a design are ‘primary’ to its
subsidiary utilitarian function. However, in Carol Barnhart Inc.
v. Economy Cover Corp, the Second Circuit further held that
19 Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978).
20 Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980).
Page 40 of 56
‘conceptual separability’ would be met if the artistic features of the
design were not essential to the article’s utilitarian function.21
45. During this time, Circuit Courts relied on the works of scholars and
academicians to conclusively put forth that considering the
dominant characteristic of industrial design is the non-aesthetic
and utilitarian concerns, copyrightability ultimately should depend
on the extent to which the work reflects artistic expression
uninhibited by functional considerations.22 It was also laid down
that a direct assessment needs to be conducted in this regard to
exclude the general realm of industrial design while preserving the
exclusive rights in ‘applied art’.
46. Having said that, the Fifth Circuit sought to adopt a unique
approach and followed the ‘Likelihood of Marketability Approach’
wherein conceptual separability would exist if there is a substantial
likelihood that even if the article had no utilitarian use, it would
still be marketable to some significant segment of the community
merely owing to its aesthetic qualities.23 It thus seems that there
was a time when multiple tests were applied by American Courts to
determine the copyrightability of useful articles.
21 Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985).
22 Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir.1987);
Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir. 2004).
23 Galiano v. Harrah’s Operating Co., 416 F.3d 411, 419 (5th Cir. 2005).
Page 41 of 56
47. The US Supreme Court, resolved these inconsistencies finally in
2017, vide Star Athletica LLC v. Varsity Brands Inc,24 by
establishing a clear test for the protection of features incorporated
into the design of a useful article. It held that to be eligible for
copyright protection, the feature would have to: (i) be perceived as
a two or three-dimensional work of art separate from the useful
article; and (ii) it would qualify as a protectable pictorial, graphic
or sculptural work, either on its own or fixed in some other tangible
medium or expression, if it were imagined separately from the
useful article into which it is incorporated. In laying down these
parameters, Star Athletica (supra) also abandoned the distinction
created between ‘physical’ and ‘conceptual separability’, which had
been adopted by some courts based on the copyright framework’s
legislative history. The US Supreme Court thus axiomatically
reconciled the various inconsistencies in interpretation and
established a uniform standard for analysing ‘conceptual
separability’.
E.1.2.3 Broader International Principles
48. In our effort to definitively address the overlap between ‘design’ and
‘artistic works’, we have already explored their treatment by the
courts in India, as well as in the US. As an apotheosis to this
24 Star Athletica, L. L. C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 197 L. Ed. 2d 354 (2017).
Page 42 of 56
sojourn, we also deem it essential to explore broader international
principles and frameworks that regulate these aspects.
49. Public international law has played a crucial role in setting and
enforcing minimum standards for IP rights among States. The
earliest multilateral agreement in this regard was the Paris
Convention for the Protection of Industrial Property, 1883 (Paris
Convention).25 However, while Article 5quinquies of the Paris
Convention requires Members to establish a standard of protection
for industrial designs, it does not explicitly provide any guidance in
terms of harmonizing design protection with the copyright regime.
50. Subsequently, the Berne Convention for the Protection of Literary
and Artistic Works, 1886 (Berne Convention), was established to
set legal principles for the protection of ‘literary and artistic works’;
across multiple jurisdictions.26 While industrial designs are
mentioned within this broad classification, the Berne Convention
primarily allows States to develop sui generis protection for such
designs through their domestic laws. Notably, it does not elaborate
25 Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at
Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November
6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on
July 14 1967.
26 Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886,
completed at Paris on May 4, 1896, revised at Berlin on November 13, 1908, completed at
Berne on March 20, 1914, revised at Rome on June 2, 1928, revised at Brussels on June 26,
1948, and revised at Stockholm on July 14, 1967 (with Protocol regarding developing
countries).
Page 43 of 56
on the overlap between design protection and copyright, leaving the
matter largely to municipal legislation.
51. The most major development in the realm of multilateral treaties
on IP rights, however, came with the adoption of the Agreement on
Trade Related Aspects of Intellectual Property Rights, 1995
(TRIPS).27 In comparison to the Paris Convention or the Berne
Convention, TRIPS discusses ‘industrial designs’ in a far more
comprehensive manner. Articles 25 and 26 of the TRIPS recognise
that Members may employ the test of ‘functional utility’ to exclude
designs that are built on technical or fundamental consideration
and require a minimum protection duration of 10 years, a provision
which is also reflected in the Designs Act in India.
52. The relevant provisions of TRIPS have been highlighted as follows:
“Article 25 – Requirements for Protection:
1. Members shall provide for the protection of independently
created industrial designs that are new or original. Members
may provide that designs are not new or original if they do not
significantly differ from known designs or combinations of
known design features. Members may provide that such
protection shall not extend to designs dictated
essentially by technical or functional considerations.
2. Each Member shall ensure that requirements for securing
protection for textile designs, in particular in regard to any
cost, examination or publication, do not unreasonably impair
the opportunity to seek and obtain such protection. Members
shall be free to meet this obligation through industrial
design law or through copyright law.
27 TRIPS, 1869 U.N.T.S. 299 33 I.L.M. 1197.
Page 44 of 56
Article 26 – Protection:
1. The owner of a protected industrial design shall have the
right to prevent third parties not having the owner’s consent
from making, selling or importing articles bearing or
embodying a design which is a copy, or substantially a copy,
of the protected design, when such acts are undertaken for
commercial purposes.
2. Members may provide limited exceptions to the
protection of industrial designs, provided that such
exceptions do not unreasonably conflict with the normal
exploitation of protected industrial designs and do not
unreasonably prejudice the legitimate interests of the
owner of the protected design, taking account of the
legitimate interests of third parties.
3. The duration of protection available shall amount to
at least 10 years.”
[Emphasis supplied]
53. In summation, while international treaties such as the Paris
Convention, the Berne Convention, and TRIPS have played a pivotal
role in shaping IP protections, they do not pointedly address a
unified framework for resolving the overlap between ‘design’ and
‘copyright’ protection. Instead, they allow individual jurisdictions to
formulate their own approaches. TRIPS, in particular,
acknowledges the role of ‘functional utility’ in distinguishing
protectable designs, thereby reinforcing the necessity of a nuanced
approach at the domestic level. Consequently, the harmonisation
of design and copyright protection remains largely a matter of
national legislative policy.
E.1.3. The final piece of the puzzle – the approach to be adopted
54. Having traversed the stratagem adopted across various
jurisdictions and the key considerations that influence them, we
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see light at the end of the tunnel and deem it pertinent to outline
our own definitive parameters that align with our existing IP right
framework.
55. The expression ‘artistic work’ under Section 2(c) of the Copyright
Act has a very wide connotation and may also include abstract
work(s) comprising a few lines or curves arbitrarily drawn, which
could be either two or three-dimensional. It may be clarified that
such a work may or may not have any visual appeal. Further, the
holder of such an artistic work is entitled to draw protection under
Section 14(c) of the Copyright Act, including the exclusive right to
reproduce such work in any material form. Such a reproduction
may also involve depicting a three-dimension work of a two-
dimensional work or vice versa.
56. However, if such reproduction is done by employing an industrial
process, which may be manual, mechanical or chemical, and which
results in a finished article that may appeal to the eye, then ‘the
features of shape, configuration, pattern, ornament or composition
of lines or colours applied to the article by such an industrial
process’, constitutes ‘design’ within the meaning of Section 2(d) of
the Designs Act.
57. It thus seems that the intent of producing an original artistic work
is not determinative of its protection under the Copyright or
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Designs Regime. Rather, the legislative intent is to harmonise the
two Statutes so that while an ‘artistic work’ qualifies for copyright
protection, its commercial or industrial application—i.e., the
‘design’ derived from the original work for industrial production—
is subject to the limitations set out in Section 15(2) of the Copyright
Act. Such a design gets protected only if it is registered under the
58. To further simplify, the original artistic work, which initially enjoys
copyright protection, does not lose the same merely because a
‘design’ derived from it has been industrially applied to create a
product. While the expression ‘artistic work’ has a broad spectrum,
‘design’ is restricted to specific features such as shape,
configuration, pattern, ornamentation, or composition of lines or
colours, applied to an article through an industrial process,
resulting in a finished product that appeals to the eye. These
visually appealing features, when applied industrially, define a
‘design’ under the Designs Act.
59. Our analysis further reveals that the inquiry cannot be concluded
merely by assuming that what does not qualify as an ‘artistic work’,
within the meaning of the Copyright Act, would automatically
receive protection under the Designs Act. While protection under
the Designs Act is not as enduring as that under the Copyright Act,
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it is not granted by default and requires specific criteria to be met.
In this regard, courts in India and globally consistently apply the
test of ‘functional utility’ to determine whether a work qualifies for
protection under the Designs Act.
60. It would therefore be appropriate to espouse the approach already
undertaken by the courts in India, as it not only emulates the best
practices employed by US courts and the principles enshrined in
International Conventions but it also gives due consideration to
contemporaneous laws and legislations. We have thus formulated
a two-pronged approach in order to crack open the conundrum
caused by Section 15(2) of the Copyright Act so as to ascertain
whether a work is qualified to be protected by the Designs Act. This
test shall consider: (i) whether the work in question is purely an
‘artistic work’ entitled to protection under the Copyright Act or
whether it is a ‘design’ derived from such original artistic work and
subjected to an industrial process based upon the language in
Section 15(2) of the Copyright Act; (ii) if such a work does not
qualify for copyright protection, then the test of ‘functional utility’
will have to be applied so as to determine its dominant purpose,
and then ascertain whether it would qualify for design protection
under the Design Act.
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61. The courts, while applying this test, ought to undertake a case-
specific inquiry guided by statutory provisions, judicial precedents,
and comparative jurisprudence. It must be kept in mind that the
overarching objective is to ensure that rights granted under either
regime serve their intended purpose without unduly encroaching
upon the domain of the other. With this approach, we have
attempted to clarify the treatment of works at the intersection of
‘copyright’ and ‘design’ law(s), thereby ensuring coherence and
consistency in the application of IP rights in India.
62. We hasten to add that this Court has undertaken the task of
clarifying the perceived complexities arising from Section 15(2) of
the Copyright Act. In this context, we appreciate the efforts of High
Courts across the country in adopting best practices that align with
our socio-legal framework. Our analysis and examination have
hopefully resolved this legal issue to prevent any further ambiguity
in the future.
E.2 Issue No. 2: The High Court’s rejection of the application under
63. Adverting to the case at hand, the primary contention between the
parties lies in whether or not the High Court erred in setting aside
the Commercial Court’s order, whereby it allowed the application
preferred by LNG Express under Order VII Rule 11 of the CPC.
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64. The Commercial Court allowed LNG Express’s application on the
ground that the ‘Proprietary Engineering Drawings’ qualified as a
‘design’ under Section 2(d) of the Designs Act, and therefore, no
suit for copyright infringement could be maintained in favour of
Inox.
65. However, the High Court, having disagreed with the finding of the
Commercial Court, initially remanded the matter for
reconsideration. When the Commercial Court reiterated its earlier
conclusion, the High Court again intervened and rejected LNG
Express’s application, with a direction to the Commercial Court to
consider Inox’s plea for an interim injunction under Order XXXIX
Rules 1 and 2 of the CPC.
66. This prolonged oscillation between the High Court and the
Commercial Court has brought the parties before us. On a deeper
analysis of the Impugned Judgement, we find that the High Court
has substantiated its conclusions with the following broad reasons:
(a) Section 15(1) of the Copyright Act applies when a design is
registered under the Designs Act, thereby implicitly barring
any claim for copyright protection. However, Section 15(2) of
the Copyright Act requires an inquiry to determine whether the
drawing in question falls within the scope of the Designs Act.
This necessary inquiry implies that a suit cannot be dismissed
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outrightly under Clause (d) of Order VII Rule 11 of the CPC
solely based on a reading of the averments in the plaint.
(b) The core dispute revolves around whether the ‘Proprietary
Engineering Drawings’ qualify as drawings under Section 2(c)
of the Copyright Act or whether they fall within the definition
of a ‘design’ under Section 2(d) of the Designs Act,
necessitating a detailed examination.
(c) The Division Bench of the Delhi High Court in Microfibres II
(supra), has laid down that the term ‘artistic work’ has a broad
scope and may exist independently or as a precursor to a
design. Additionally, a design derived from an artistic work
may enjoy copyright protection, which ceases once it is
industrially applied beyond the threshold set in Section 15(2)
of the Copyright Act. Given these intricate distinctions, a more
detailed analysis is warranted, and such determinations
cannot be made at the very threshold.
(d) Even if the drawing in question is not classified as an original
artistic work, it does not automatically qualify for protection
under the Designs Act. In such cases, it must be assessed
whether the dominant aspect of the design is functional or
whether the design is registrable under the Designs Act,
meaning that when applied to an article through an industrial
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process, the finished product must possess aesthetic appeal
rather than being purely functional.
(e) Section 15(2) of the Copyright Act serves as a limitation on the
protection granted to artistic works under the Act. Allowing
Inox’s claim may result in a cascading effect, potentially
allowing every tracing or drawing to receive copyright
protection while simultaneously being industrially or
commercially exploited through its application to an article.
Such an outcome would likely contravene the intent of the
Legislature.
(f) Ultimately, the determination of whether the ‘Proprietary
Engineering Drawings’ of the inner vessel, which is admittedly
an ‘original artistic work’ under Section 2(c) of the Copyright
Act, continues to enjoy copyright protection or whether such
protection is curtailed by Section 15(2) of the Copyright Act
due to their industrial application, is a significant mixed
question of law and fact.
(g) Order VII Rule 11(a) of the CPC empowers a court to reject a
plaint if the plaintiff fails to disclose a cause of action. In
determining this, the court is not required to delve into
complex legal questions but must simply assess whether the
allegations, if taken as true, establish a cause of action without
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evaluating the likelihood of success. Since the plaintiff
explicitly sought copyright protection over the ‘Proprietary
Engineering Drawings’; the literary work associated with the
internal parts of Cryogenic trailers; and the know-how for their
manufacture or assembly, the rejection of the plaint was
unwarranted.
(h) When determining whether a plaint discloses a cause of action,
the court is not required to conduct an elaborate inquiry into
complex legal or factual issues. The court’s role is limited to
assessing whether any of the allegations indicate a cause of
action. As long as the claim presents some cause of action or
raises questions appropriate for judicial determination, the
fact that the case may be weak or unlikely to succeed is not a
valid reason for striking it out. For rejecting a plaint, it is
unnecessary to evaluate whether the averments substantiate
the ownership claim made by the defendant. Likewise, if the
defendant raises a legal issue in the written statement, it
cannot be adjudicated through an application under Order VII
Rule 11 of the CPC, as doing so would amount to pre-judging
the matter.
(i) In any event, the Suit encompasses additional claims relating
to ‘literary work,’ confidential information, and know-how,
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which cannot be rejected in part. Even if the claim for copyright
infringement is deemed untenable, the Suit would still be
maintainable with respect to the other rights asserted. As a
result, the entire Suit must proceed to trial, since a plaint
cannot be partially rejected.
67. We are in complete agreement with the reasoning of the High Court
that the question as to whether the original artistic work would fall
within the meaning of ‘design’ under the Designs Act cannot be
answered while deciding an application under Order VII Rule 11 of
the CPC. This stage would involve only a prima facie inquiry as to
the disclosure of cause of action in the plaint. The question
pertaining to ascertaining the true nature of the ‘Proprietary
Engineering Drawings’ involves a mixed question of law and fact
and could not have been decided by the Commercial Court at a
preliminary stage based upon such a casual appraisal of the plaint
averments.
68. We therefore concur with the High Court that this case warrants a
trial given the triable issues involved. The plaintiff before the
Commercial Court, i.e., Inox, was erroneously non-suited due to
incorrect assumptions made by the Commercial Court which
misread the plaint, misapplied legal principles and overlooked the
distinction between ‘artistic work’ and ‘design.’
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69. In light of our discussion on relevant precedents and legal
positions, and the clear test we have outlined, we direct the
Commercial Court to consider the issue afresh and conduct trial by
adopting an Occam’s Razor approach to ascertain the true nature
of the ‘Proprietary Engineering Drawings’. Additionally, the
Commercial Court would also need to independently assess the
claims related to infringement of the Literary Works, confidential
information, know-how etc. so as to resolve the matter
comprehensively.
F. CONCLUSION AND DIRECTIONS
70. Having thus examined the vagaries of IP law and the intrinsic
synergy that exists between two independent legislations, namely
the Designs Act and the Copyright Act, we dismiss the instant
appeals with the following conclusions and directions:
i. The decision of the High Court rejecting the application under
Order VII Rule 11 of the CPC is upheld;
ii. The Commercial Court is directed to deliver its decision on the
pending application seeking interim injunction preferred by
Inox, within a period of two months;
iii. The Commercial Court is further directed to conduct trial and
discern the true nature of the Proprietary Engineering
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Drawings based upon the test laid down in paragraph 60 ofthis judgement, as also the other related IP right infringements
claimed by Inox, within a period of one year, given that it has
already wasted significant judicial time on this issue.
71. Ordered accordingly. Pending applications, if any, also stand
disposed of in the above terms.
……………………….J.
(SURYA KANT)
……………………………………………………J.
(NONGMEIKAPAM KOTISWAR SINGH)
NEW DELHI;
DATED: 15.04.2025
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