A dispute arose involving the design of a seemingly simple but widely used everyday product : the toothbrush. What appeared to be a small matter of shape and style soon evolved into a significant case that tested the ver

CS Professional · Intellectual Property Rights - Law and Practice · PYQS · December 2025
A dispute arose involving the design of a seemingly simple but widely used everyday product : the toothbrush. What appeared to be a small matter of shape and style soon evolved into a significant case that tested the very principles of novelty, originality, and the protection of industrial designs under Indian law. The plaintiffs named as XYZ was a large multinational healthcare corporation, originally incorporated in Europe, which had undergone several name changes and mergers over the years. Their business extended across continents, and among the many products they manufactured and marketed, toothbrushes formed an important segment. The company XYZ gets registered a design for toothbrush under Indian law as Design No. 170554 with specific features of S-shaped" zigzag neck and a curved handle. One day plaintiff discovered that a domestic manufacturer in India had introduced a toothbrush under its own brand name which, in their view, closely resembled their registered design. The plaintiff filed a suit of infringement alleging that the similarities were not coincidental but amounted to a fraudulent imitation. They argued that such unauthorized copying would mislead consumers and allow the defendant to unfairly benefit from the reputation and market goodwill built around their product. To protect their interests, the plaintiffs approached the court seeking an interim injunction to prevent the defendant from manufacturing, distributing, or selling the allegedly infringing toothbrush. They also sought an account of profits earned by the defendant through such sales. An ex parte ad-interim injunction was initially issued by the court, restraining the defendant from further selling the contested toothbrush.In response, the defendant argued that the design claimed by the plaintiffs was neither new nor original. According to them, toothbrushes with the same essential shape and configuration, particularly those with an "S-shaped" zigzag neck and a curved handle, had already been manufactured and marketed for years in India and abroad. These features, they argued, were well known in the industry and formed part of the public domain. In fact, similar designs had been sold by multiple companies, which meant that the plaintiffs' registration could not legitimately claim exclusivity. As per the defendant the plaintiffs themselves had conceded that their designs had been previously published and, therefore, lacked novelty. It was further argued by the defendant that the zigzag bend was not a matter of aesthetic innovation but rather a functional feature meant to improve flexibility in brushing. This admission, according to the defendant, disqualified the plaintiffs from later attempting to re-register the same or substantially similar designs and monopolize them through another round of litigation.The court undertook a careful examination of the toothbrush designs. A comparison was drawn between the plaintiffs' previously registered toothbrushes and the one protected under Design No. 170554. The judges noted that while the plaintiffs tried to emphasize three minor changes as evidence of novelty, these differences were superficial and merely amounted to trade variations. The court emphasized that, although even a small change can result in a new design, the key test is whether the design appears distinct and original at first sight to the average consumer.The court observed that the plaintiffs had failed to disclose material facts, including the existence of earlier litigations where they had admitted that similar designs were already in the public domain. This non-disclosure was seen as an attempt to mislead the court and obtain an interim order unfairly. Ultimately, the court held that the plaintiffs registered design lacked novelty and dismissed the suit.Answer the following: What do you mean by Trade Variation? Discuss the Court's reasoning for holding that the plaintiffs' alleged novelty in design was merely a trade variation and not a truly novel design.

Answer & Explanation:

Under the design law, the term "trade variation" denotes a slight, routine, or superficial alteration made to an already existing design, which lacks the element of true originality or inventive character. Such modifications are typically ornamental or cosmetic, without imparting any distinctiveness, and are often resorted to only for the purpose of prolonging control over a previous design rather than creating something substantially new. For a design to qualify as novel, it must be readily distinguishable to an ordinary observer at first glance and should not be the outcome of insignificant. Where the alleged novelty merely reflects conventional or commonly used trade practices, it is treated as a trade variation and not as a genuinely new design. In essence, a trade variation amounts to a minor or obvious modification in an existing design, devoid of authentic innovation, and hence does not merit protection under the Designs Act. It is true that in certain cases even a small novelty may introduce a new design but the bottom line is that a really new design should come into existence which is not a copy or trade variation of the earlier design introduced mala fide to continue to have a hold on the old design. Novelty should be capable of making a design different and distinctive at first sight of the consumer, should be new and should not require lot of effort to find out the novelty. If this yardstick is not applied then by introducing minor and insignificant changes here and there, one may try to monopolise an old and already known design which cannot be protected even by Designs Act. After comparing the plaintiffs' earlier registered brushes with the brush registered under No. 170554, the Court held that the three changes relied on by the plaintiffs "do not constitute a new design and are merely trade variations which are neither inventive nor innovative." A valid novelty must make the design different and distinctive at first sight, not depend on minor and insignificant changes. Similar brushes with the zig-zag "S" bend and curved handle had been in the market for years, and the plaintiffs had themselves conceded prior publication in other litigations. The registration appeared fraudulently obtained by not disclosing earlier designs/litigations. Moreover, the zig-zag S-bend, rubber cushions, and the handle were found utilitarian/functional, not protectable design features;" Thus, a design identical with or even materially similar to the relevant design should not be published or registered previously. A slight trivial or infinitesimal variation from the pre-existing design shall disqualify the relevant design for registration. The change introduced should be substantial. A balance has to be struck so that novelty and originality may receive the statutory recognition and interest of trade and right of those engaged therein to share common knowledge is also protected. Mere trade variants of what is already in existence or what is common to the trade is not capable of being registered. Applying the above test to the facts of the present case, it prima facie appears that the design of the plaintiff is merely a trade variant of an already-existing registered design(s) cited by the defendant. Hence, the plaintiffs lacked a prima facie case of design infringement.

Topics: Designs Act, 2000

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