The case of Travel Blue Products India Private Limited & Anr. vs Miniso Lifestyle Private Limited & Anr. (Interim Application (L) No. 28407 of 2024 in Commercial IPR Suit (L) No. 28275 of 2024), decided by the Bombay High Court on July 31, 2025, is a significant decision in the areas of design law and passing off. The dispute centred around the alleged piracy of a registered design of a travel neck pillow marketed by the plaintiffs under the brand "Travel Blue".
The plaintiffs contended that the defendants, Miniso Lifestyle Private Limited and Miniso Hong Kong Limited, were marketing near-identical products that infringed their registered design and goodwill. This case provides valuable insight into the scope of protection for registered designs under the Designs Act, 2000, and clarifies the principles relating to functionality, aesthetics, and passing off.
Laws in Question
Section 2(d) of the Designs Act, 2000 defines a "design" as the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, provided they appeal to and are judged solely by the eye. It expressly excludes functional elements and mechanical devices. Section 10(4) of the Act establishes a presumption of validity once a design is registered. Section 11 allows the extension of copyright in a registered design. Section 19 provides grounds for the cancellation of a registered design, including a lack of originality, prior publication, or functionality.
The Copyright Act, 1957, particularly Section 15(2), was also relevant as it addresses the overlap between artistic works and industrial designs, stating that copyright protection does not apply once an artistic work is reproduced more than 50 times and qualifies as a design. Common law principles of passing off were invoked to determine whether the defendants' conduct constituted misrepresentation, leading to consumer confusion.
Facts of the Case
The plaintiffs, Travel Blue Products India Pvt. Ltd. and Travel Blue Limited (UK), are established names in the travel accessories market. In 2015, they designed an innovative travel accessory known as the "Travel Blue Tranquility Neck Pillow". This design was registered in India on March 9, 2016, with a reciprocity date of October 19, 2015, under Registration No. 281315. The registration was later extended for 5 years until 2030. In addition, the plaintiffs obtained registrations for the same design in other jurisdictions, including the US, Europe, China, and Australia. Over the years, the tranquility pillow gained recognition in the marketplace, with significant sales and promotional expenditures, with wide popularity on social media platforms and at trade exhibitions.
In August 2024, the plaintiffs discovered that the defendants were marketing travel neck pillows that closely resembled their registered design. The impugned products were not only similar in shape and configuration but also sold in the same colour schemes, namely grey, blue, purple, and pink. The plaintiffs alleged that this constituted piracy of their registered design under Section 22 of the Designs Act and amounted to passing off. Consequently, they filed a commercial IP suit seeking a remedy against such piracy of registered design and passing off.
Contentions of the Parties
The plaintiffs argued that their registered design enjoyed statutory protection and that once registered, the presumption of validity under Section 10(4) applied. They emphasised that the defendants' products were near replicas of their tranquility pillow and that even if the pillow had some functional aspects, the design was primarily aesthetic. They relied on the principle laid down in Whirlpool vs Videoconthat if a function can be achieved through multiple designs, then functionality cannot be used as a defence to cancel registration. They also contended that their product had acquired distinctiveness and goodwill, and the imitation by the defendants was likely to cause consumer confusion, thereby amounting to passing off.
The defendants countered by asserting that the plaintiffs' design was predominantly functional and thus not registrable. They argued that features such as memory foam, foldability, and portability were utilitarian and not aesthetic. They further claimed that similar neck pillow designs predated the plaintiffs' registration, making it ineligible for protection. Additionally, they insisted that their product was marketed under the MINISO brand with distinct packaging, eliminating any likelihood of confusion. On passing off, the defendants argued that similarity in shape or colour alone does not establish misrepresentation.
Judgment and Analysis
The Bombay High Court examined the issues of registrability, piracy, and passing-off in detail. On registrability, the Court held that the plaintiffs' design was not purely functional. While acknowledging that the product had functional features, the Court observed that the overall shape and configuration also created a visual appeal. The Court noted that under Section 2(d), designs with both functional and aesthetic elements may still qualify for protection as long as they are not dictated solely by function. Referring to Whirlpool vs Videocon, the Court reaffirmed that if the same function can be achieved through different configurations, the design cannot be denied protection on functionality grounds.
The Court also referred to judgments in Cryogas Equipment Pvt Ltd vs Inox India Ltd, M/s Smithkline Beecham Plc vs. M/s. Hindustan Lever Limited, Faber-Castell Aktiengesellschaft vs Cello Pens Pvt Ltd, Apollo Tyres vs Pioneer Trading Corporation, and others to reach its decision.
On the issue of prior art, the Court dismissed the defendants' claims, as the international registrations cited by the defendants were insufficient to prove prior publication in India as required under Section 19. The defendants failed to demonstrate that the alleged prior designs had substantial similarity to the plaintiffs' design or that they were published in India before the registration date.
Regarding the allegations of piracy, the Court conducted a side-by-side comparison and found that the defendants' products were obvious imitations of the plaintiffs' design. The absence of the "pocket" feature in the defendants' product did not make a material difference, as the overall shape and configuration were nearly identical. Consequently, the Court concluded that the defendants had infringed the plaintiffs' registered design.
On passing off, the Court held that the plaintiffs had established goodwill and reputation, supported by their sales figures, promotional expenses, and international presence. Since the products were primarily displayed physically rather than marketed in elaborate packaging, the likelihood of consumer confusion was high. The Court found that the adoption of identical colours and configurations pointed towards dishonest adoption by the defendants. Accordingly, the Court granted interim injunctions restraining the defendants from manufacturing, selling, or marketing the impugned products, and directed them to remove all online listings.
Conclusion
The decision forges the strength of design registration protection, making clear that once registered, designs enjoy robust protection against piracy. The Court's clarification that functional and aesthetic elements can co-exist, with protection denied only where a design is purely functional, broadens the protection for such designs. The judgment also emphasises that prior art must be properly established within the Indian context to be a valid ground for cancellation. Further, the decision regarding the issue of passing off highlights that consumer confusion can arise even in the absence of identical branding, particularly where products are displayed physically. In conclusion, this judgment not only safeguards innovation but also promotes fair competition, setting an important precedent for future similar disputes in the design law domain.
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