A former Good Earth designer left and started selling its motifs under his own brand, India Circus. The Delhi High Court injuncted him for passing off — and clarified a subtle point of design law: a design old in itself can still be novel when applied to a new article.
The facts
Good Earth holds registered designs for motifs like Serai, Periyar, Vrindavan, Lotus, Bali Mynah, Rose Princess and Falcon (over 100 design applications in India), and is a well-known brand with outlets in Singapore, Turkey and Nepal. One defendant — Krishna Mehta (India Circus) — was a former Good Earth employee on its creative team. After leaving, Good Earth found him selling its designs under India Circus (founded Nov 2011).
The arguments
Good Earth: Mehta knew the designs (he helped create them); his usual creative style drew from household things, surroundings and Bollywood — unlike the Good Earth designs he was now using — showing passing off.
India Circus: it’s a popular brand since 2011; Good Earth’s work was inspired art, not novel, being pre-known, pre-published and in the public domain for centuries — so no ownership under design law.
Good Earth’s reply: it satisfied the passing-off test (below); the defendant’s own team created the Periyar design and knew its originality; Mehta only disclosed his 2011 business in 2012 (mala fide); and emails evidenced repeated copying.
The passing-off test for designs
Per the Delhi High Court:
- goodwill/reputation attached to the plaintiff’s goods;
- misrepresentation by the defendant causing consumer confusion; and
- damage (or likely damage) to the plaintiff.
The ruling
The court agreed Good Earth satisfied the test and that the defendant caused consumer confusion, making the interim injunction absolute — barring use of the designs. It allowed the defendant to use Vrindavan and Falcon for unconnected activities (not similar) and Periyar without limitation (not held similar).
The novelty point
Importantly, on novelty, the court held:
“even though the design is old in itself but if the same is applied to a new article to which it has never been previously applied, then the said design needs to be protected… in relation to designs, [the] expression ‘original’ includes designs which though old in themselves but were new in their application.”
So a centuries-old motif can support a valid design when newly applied to an article it’s never adorned before.
The takeaways
- Passing off protects designs — goodwill, misrepresentation, damage.
- “New in application” counts — an old design newly applied to an article is protectable.
- Ex-employees are on notice — prior knowledge of a design cuts strongly against them.
- Keep the paper trail — emails evidencing repeated copying strengthened Good Earth’s case.
Frequently asked questions
Can you claim passing off for a design in India? Yes — where you show goodwill in the goods, the defendant’s misrepresentation causing confusion, and resulting (or likely) damage, as Good Earth did against India Circus.
Can an old design be novel? Yes — a design old in itself is treated as novel/original when applied to a new article it has never previously been applied to.
Does a former employee’s knowledge of a design matter? Strongly — the defendant’s prior involvement in creating the designs cut against him and supported the finding of mala fide passing off.
What relief did Good Earth get? An absolute injunction against using its designs, though the defendant was allowed limited use of a couple of motifs found not similar.
Legislation referred to
- The Designs Act, 2000