In Ars Steels and Alloy International Private Limited v. The Controller of Patents and Designs and Ors., IPDAID/43/2024, Neutral Citation: 2026:CHC-OS:160, decided on 7 May 2026, the , Intellectual Property Rights Division, presided over by , set aside an order of the Deputy Controller of Patents and Designs which had refused cancellation of a registered design relating to a “double XX-Rib” construction rod design in favour of Souvik Steels Private Limited.
The dispute arose after the respondent alleged infringement of its registered design for TMT bars, following which the appellant sought cancellation of the registration under Section 19 of the Designs Act, 2000 on grounds of prior publication, lack of novelty and originality, and functionality. The appellant relied on various publications, invoices, and market materials allegedly showing that similar X-Rib and XX-Rib designs had existed in the market since 2002-2003.
Justice Ravi Krishan Kapur held that the Controller had failed to properly evaluate the documentary evidence relating to prior publication and market availability of similar designs and had incorrectly confined the enquiry to ocular impression without adequately examining novelty, originality, prior use, and the “state of the art.” The Court observed that the impugned order ignored relevant precedents and failed to apply the correct legal tests under the Designs Act.
Accordingly, the Court set aside the impugned order and remanded the matter to a different officer for fresh adjudication after granting both parties an opportunity of hearing, directing completion of the exercise within three months.
Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
#ArsSteels, #CalcuttaHighCourt, #DesignsAct2000, #PatentAndDesigns, #IPRDivision, #DesignCancellation, #TMTBarsDesign, #IndustrialDesignLaw, #PriorPublication, #NoveltyInDesign, #OriginalityTest, #ConstructionRodDesign, #JusticeRaviKrishanKapur, #IntellectualPropertyLaw, #DesignInfringement, #IndianIPLaw, #RegisteredDesign, #IPLitigation, #LegalNewsIndia, #DesignRegistration, #IPUpdate, #AdvocateAjayAmitabhSuman, #IPAdjutor
=====
Suggested SEO Titles
Calcutta High Court on Design Cancellation and Prior Publication in TMT Bar Design Case
Ars Steels v Controller of Patents and Designs: Calcutta High Court Clarifies Novelty Test Under Designs Act
Prior Publication and Originality in Industrial Designs Explained by Calcutta High Court
Calcutta High Court Sets Aside Controller’s Order in XX-Rib TMT Bar Design Dispute
Important Design Law Judgment on Novelty and Prior Use under Designs Act, 2000
Industrial Design Protection in India: Analysis of Ars Steels Judgment
Whether X-Rib and XX-Rib TMT Bar Designs Are New and Original: Calcutta High Court Analysis
Detailed Case Analysis of Ars Steels and Alloy International Pvt Ltd v Controller of Patents and Designs
Judicial Review of Design Registration under the Designs Act: Calcutta High Court Decision
Scope of Prior Publication and Originality in Registered Designs under Indian Law
Detailed Analytical Article
Introduction
The judgment delivered by the High Court at Calcutta in Ars Steels and Alloy International Private Limited v. The Controller of Patents and Designs and Ors., IPDAID/43/2024, Neutral Citation: 2026:CHC-OS:160, decided on 7 May 2026, is an important decision dealing with the concepts of novelty, originality, prior publication, and functionality under the Designs Act, 2000. The judgment was delivered by Justice Ravi Krishan Kapur sitting in the Intellectual Property Rights Division of the High Court.
The case revolved around the validity of a registered design relating to TMT construction rods bearing a “double XX-Rib” surface pattern. The dispute raised a common but significant issue in industrial design law: whether a design which is already available in the market, or substantially similar to existing designs, can continue to enjoy statutory monopoly protection merely because it has been registered. The Court examined the legal tests governing prior publication and originality and clarified that the Controller of Designs must conduct a meaningful enquiry into existing market materials and prior art before upholding a registered design.
The judgment is particularly relevant for industries dealing with construction materials, engineering products, and commercially manufactured goods where slight variations in patterns and configurations are often claimed as proprietary designs. The decision also reinforces the principle that registration under the Designs Act cannot be used to monopolise common trade variants already available in the public domain.
Factual and Procedural Background
The appellant, Ars Steels and Alloy International Private Limited, and the private respondent, Souvik Steels Private Limited, were both engaged in the manufacture and sale of TMT bars and construction rods. On 6 November 2013, the respondent obtained registration of a design under Class 25-01 in respect of construction rods having a “double XX-Rib” pattern on the surface of the rods.
In early 2016, the respondent issued a legal notice to the appellant alleging infringement of the registered design. The respondent also instituted a design infringement suit before the District Court at Bengaluru. In response, the appellant filed an application under Section 19 of the Designs Act, 2000 seeking cancellation of the registered design. The appellant challenged the registration on several grounds, namely that the design had been previously registered, that it had already been published prior to registration, that it lacked novelty and originality, and that the design was merely functional in nature and therefore incapable of protection under the Designs Act.
The Deputy Controller of Patents and Designs rejected the cancellation application by an order dated 10 April 2023. The Controller concluded that there was no prior publication of the impugned design and held that the design was not merely functional but possessed visual appeal capable of design protection. The Controller therefore upheld the registration. Aggrieved by this order, the appellant approached the Calcutta High Court under Section 19(2) of the Designs Act.
Dispute Before the Court
The principal controversy before the High Court was whether the registered “XX-Rib” design possessed sufficient novelty and originality to deserve protection under the Designs Act, 2000. The appellant contended that similar X-Rib and XX-Rib designs had already existed in the market long before the registration date and therefore the registered design was neither new nor original.
The appellant relied on several documents including publications in the Indian Concrete Journal of 2004, Business Line dated 8 September 2004, and The Hindu dated 18 June 2011. The appellant also relied upon invoices dating back to March and April 2003 to show commercial sale of X-Rib TMT rods before the respondent’s registration. Further evidence was produced to demonstrate that XX-Rib designs had already been used in the market by different manufacturers since 2012 and 2013.
The respondent, however, argued that the impugned design was distinct and visually identifiable and that the appellant had failed to establish any prior publication of the exact same design. The respondent also contended that a design could possess both functional and aesthetic features and still qualify for protection under the Designs Act.
Reasoning and Analysis of the Judge
Justice Ravi Krishan Kapur undertook a detailed examination of Sections 2(d), 4, and 19 of the Designs Act, 2000. Section 2(d) defines “design” as features of shape, configuration, pattern, ornament, or composition applied to an article which appeal solely to the eye, while excluding mere mechanical devices or purely functional features. Section 4 prohibits registration of designs which are not new or original or which have already been disclosed to the public prior to filing. Section 19 provides grounds for cancellation of registered designs including prior publication and absence of novelty.
The Court observed that the Deputy Controller had failed to properly analyse the evidence produced by the appellant regarding prior publication and prior market use. The judgment emphasized that when allegations of prior publication are raised, the authority deciding the matter must carefully examine whether similar designs were already available in the market and whether the registered design truly possessed any distinctiveness.
The Court relied heavily upon the decision in Gopal Glass Works Limited v. Assistant Controller of Patents and Designs and Ors., 2005 SCC OnLine Cal 413, where it was held that prior disclosure through trade catalogues, journals, magazines, brochures, or photographs depicting the same design on the same article could destroy novelty. The High Court reiterated that prior publication need not be in the form of identical replication; even clear disclosure sufficient to convey the design to an informed reader may invalidate novelty.
The Court also referred to the landmark Supreme Court judgment in Bharat Tubes Limited v. Gopal Glass Works Ltd., (2008) 10 SCC 657. In that case, the Supreme Court explained that the objective of the Designs Act is to reward genuine innovation and originality while preventing monopoly over known designs already existing in trade. Justice Kapur extracted extensive observations from the Supreme Court explaining that the Act protects visual appearance rather than functional utility and that designs already disclosed to the public cannot receive protection.
The Court further discussed SRMB Srijan Limited v. Triveni Industries Pvt. Ltd. and Anr., 2011 SCC OnLine Cal 1935, a case concerning X-Rib TMT rod designs. In that decision, it had already been held that the X-Rib design lacked novelty and originality because similar designs had existed in the market since 2001-2002. Justice Kapur noted that the Controller had selectively referred to this precedent without meaningfully considering its implications for the present dispute.
The Court criticised the Controller for focusing only on “ocular impression” without conducting the broader legal enquiry required under the Designs Act. According to the Court, novelty and originality are separate legal concepts requiring examination of the state of the art, prior trade variants, and market availability. The judgment stressed that even small changes to an old design do not necessarily create a new or original design if the essential visual character remains common in trade.
The Court referred to Phillips v. Harboro Rubber Company (1920) 37 RPC 233 for the proposition that introduction of ordinary trade variants into an old design does not make it original. The Court also relied upon Western Engineering Company v. Paul Engineering Company, AIR 1968 Cal 109, Anuradha Doval v. Controller of Patents and Designs, 2017 (71) PTC 288 (Cal), Shree Vari Multiplast India Pvt. Ltd. v. Deputy Controller of Patents & Designs, 2018 SCC OnLine Cal 5820, and Jayson Industries v. Crown Craft (India) Pvt. Ltd., 2023 SCC OnLine Del 3750 to reinforce the requirement of comparing the impugned design with prior art and evaluating whether it creates a genuinely different overall visual impression.
On the issue of functionality, the Court accepted the legal proposition that a design can possess both functional and aesthetic elements and still qualify for registration. For this proposition, the Court referred to Cow (P.B.) & Co. Ltd. v. Cannon Rubber Manufacture Ltd., 1959 RPC 347. However, the Court held that the Controller had failed to adequately analyse whether the design was dictated entirely by functionality or whether any genuine visual creativity existed.
Ultimately, the Court concluded that the impugned order suffered from serious infirmities because it ignored documentary evidence relating to prior use and prior publication and failed to apply the correct legal tests governing novelty and originality.
Final Decision of the Court
The Calcutta High Court set aside the order dated 10 April 2023 passed by the Deputy Controller of Patents and Designs. The Court remanded the matter for fresh consideration by a different officer and directed that both parties be given an opportunity of hearing. The Court further directed that the reconsideration process be completed within three months from communication of the order. The Court clarified that its observations on merits were tentative and would not bind the authority conducting the fresh adjudication. Accordingly, the appeal was allowed.
Point of Law Settled in the Case
The judgment settles several important principles relating to industrial design protection under the Designs Act, 2000. The Court clarified that novelty and originality cannot be assessed merely through superficial visual comparison and require examination of prior art, market availability, and trade usage. Prior publication includes publications in journals, newspapers, catalogues, and commercial documents capable of conveying the design to an informed reader. The decision further reiterates that ordinary trade variants or slight modifications of known designs do not qualify as new or original designs. The judgment also establishes that the Controller of Designs must conduct a detailed and reasoned enquiry into documentary evidence relating to prior publication and cannot ignore relevant precedents dealing with similar designs.
Case Details
Title of the Case: Ars Steels and Alloy International Private Limited v. The Controller of Patents and Designs and Ors.
Date of Judgment: 7 May 2026
Case Number: IPDAID/43/2024
Neutral Citation: 2026:CHC-OS:160
Court: High Court at Calcutta, Intellectual Property Rights Division
Hon’ble Judge: Justice Ravi Krishan Kapur
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suggested SEO Tags
Designs Act 2000, Calcutta High Court, Industrial Design Law, Prior Publication, Novelty in Design Law, Originality Test, Registered Design Cancellation, TMT Bar Design Case, XX Rib Design, X Rib Design, Design Infringement India, Intellectual Property Rights Division, Design Registration India, Construction Rod Design, Patent and Designs Office, Justice Ravi Krishan Kapur, Design Law Judgment, Industrial Design Protection, IP Litigation India, Design Cancellation Proceedings, Prior Use in Design Law, Functional Design, Eye Appeal Test, Trade Variant Design, Controller of Patents and Designs, Indian IP Law, AdvocateAjayAmitabhSuman, IPAdjutor
Headnote
The Calcutta High Court in Ars Steels and Alloy International Private Limited v. The Controller of Patents and Designs and Ors. held that while determining validity of a registered design under Sections 4 and 19 of the Designs Act, 2000, the Controller must conduct a detailed enquiry into prior publication, market availability, originality, and novelty of the impugned design. The Court ruled that mere ocular impression is insufficient for determining novelty and that ordinary trade variants or previously published designs cannot receive statutory protection. The Court accordingly set aside the Controller’s order upholding registration of an XX-Rib TMT rod design and remanded the matter for fresh adjudication.
