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by Admin
14 December 2025 5:24 PM
“Where a function can be achieved through multiple forms, the defence of functionality must fail” – Bombay High Court (Commercial Division), in a reportable judgment delivered by Justice Sharmila U. Deshmukh, granted interim relief in favour of Travel Blue Products India Pvt. Ltd. and Travel Blue Ltd., in their suit for piracy of registered design and passing-off against Miniso Life Style Pvt. Ltd. and Miniso Hong Kong Ltd. The case pertained to Travel Blue’s registered “Tranquility Neck Pillow” and the allegedly infringing pillow sold by Miniso.
Holding that the Plaintiff's design was aesthetic and not purely functional, the Court restrained the Defendants from further manufacturing, marketing, or selling their rival product, finding prima facie infringement and dishonest imitation.
“The Plaintiff’s design is not devoid of aesthetic appeal... The design cannot be said to be dictated solely by function if the same function can be achieved by different forms.” [Para 45]
“The Defence of Functionality Must Fail Where Visual Appeal Is Present”
Court Reaffirms That Aesthetic Design is Protectable Under Designs Act, Even If Function Is Also Served
The crux of the dispute revolved around whether the Plaintiff’s registered neck pillow design (Design No. 281315) was protectable, or whether it was merely functional and hence unregistrable under the Designs Act, 2000. Miniso contended that the design lacked originality and was dictated by function.
However, the Court rejected this argument, affirming that even functional articles can be protected designs if they possess distinct visual appeal.
“If the particular function can be achieved through a number of different forms, then the defence of functionality must fail.” [Para 36, quoting Whirlpool v. Videocon]
The Court emphasised that the design was not dictated solely by function, and its shape, configuration, and contours created an aesthetic impact judged solely by the eye. Relying on Whirlpool v. Videocon and Apollo Tyres v. Pioneer Trading Corp., the Court reinforced that distinctive shape combined with function still qualifies for protection under Section 2(d) of the Designs Act.
“Design is not purely functional if the shape or configuration also appeals to the eye.” [Para 40]
“Design Registration Covers Shape and Configuration – Not a Mechanical Pocket”
Visual Novelty Lies in the Shape and Configuration of the Pillow – Pocket Is Incidental
Miniso tried to argue that Travel Blue’s design registration was based solely on a “neck pillow with pocket”, and hence could not claim broader protection for the entire shape.
However, the Court clarified that: “The registration was granted to the shape and configuration of the neck pillow which includes the pocket – not to the pocket per se. The pocket is merely a mechanical appendage.” [Para 22]
Further, the Court noted that Miniso’s own pleadings admitted that the Plaintiff’s pillow has distinct visual appeal, thereby contradicting their own argument that the design was purely functional.
“It is not open for the Defendants to now argue that the Plaintiff’s design is purely functional when their pleadings accept its visual appeal.” [Para 21]
“Prior Art Must Be Published in India – Mere International Designs Don’t Cancel a Registration”
Miniso attempted to challenge the validity of Travel Blue’s design registration on the basis of prior international designs. However, the Court found that the requirements under Section 19 of the Designs Act were not met.
“International registrations, in absence of Indian publication or Indian registration, do not constitute valid prior art under Section 19.” [Para 24–25]
The Court also found that the prior art cited by the Defendants was not visually or structurally similar to the Plaintiff’s design, and that there was no tabular comparison or evidence to demonstrate identity or imitation.
“Imitation Doesn’t Require Exact Copy – Overall Similarity Is Enough”
Obvious Imitation and Likelihood of Confusion Justified Interim Injunction
The Court examined the physical products and found that:
“It was nigh impossible to differentiate between the two products... both are substantially similar in shape, configuration, features, fabric, and colour.” [Para 18]
The concept of piracy under Section 22 of the Designs Act does not require exact replication. Rather, it suffices if the rival design is an “obvious imitation”.
“The term ‘imitation’ under Section 22 does not mean exact replica. The similarity or difference is to be judged through the eye of the purchaser.” [Para 47, citing Selvel Industries v. Om Plast]
The Court held that Miniso’s rival product was a dishonest imitation, launched after Travel Blue had already built market goodwill. The visual resemblance was likely to deceive consumers.
“Passing-Off Action Maintainable – Mere Brand Difference Doesn’t Negate Imitation”
Miniso contended that since it marketed its product under its own MINISO trademark, there could be no case of passing off.
But the Court disagreed, holding that in products like travel pillows, where packaging may be minimal or absent, visual appearance of the product itself is the key consumer identifier.
“Where products are kept for display and not marketed through packaging, the only identifier is the product itself... similarity is enough to cause confusion.” [Para 48]
The Court noted Travel Blue’s long-standing market presence, sales figures (₹3.95 crore in FY 2023–24), and global registrations, concluding that goodwill and reputation were established, and that Miniso’s entry in 2022 with a similar design indicated dishonest adoption.
Suppression of Facts Argument Rejected – All Material Placed Before Court
Miniso alleged that Travel Blue suppressed the functional nature of the pillow and the prior art. However, since the interim application was heard finally, and all material was placed on record, the Court found no suppression.
“There is no merit in the allegation of suppression as the application was heard finally with all facts on record.” [Para 46]
Interim Injunction Granted – Defendant to Take Down Online Listings
Holding that the Plaintiffs had made out a strong prima facie case, the Court granted interim injunction in terms of prayer clauses (a), (b), and (c), thereby:
Restraining the Defendants from manufacturing, marketing, or selling the impugned design;
Directing removal of the product from e-commerce and online listings;
Preventing any further passing-off by use of deceptively similar get-up.
In a detailed and well-reasoned judgment, the Bombay High Court reaffirmed crucial design law principles: aesthetic designs are protectable, even if they incidentally serve a function; visual similarity judged through the consumer’s eye is key; and international prior art, without Indian publication or registration, cannot invalidate Indian designs.
This case underscores the importance of strategic design registration and enforcement, particularly in a globalized consumer goods market. The Court’s emphasis on eye appeal as the cornerstone of design protection will shape future jurisprudence in the IP space.
Date of Decision: 31 July 2025
