Bombay High Court: In a design infringement and passing off case against Miniso with reference to Travel Blue’s ‘Tranquility Neck Pillow’, A Single Judge Bench of Sharmila U. Deshmukh, J., stated that upon prima facie comparison of the rival products, the overall similarity between the two products is likely to deceive the consumer in believing that Miniso’s goods were that of the Travel Blue Products. The imitation of the Travel Blue’s registered design amounts to prima facie misrepresentation of association with it. Therefore, the Court granted interim injunction to Travel Blue Products, for its ‘Tranquility neck pillow’ in design piracy case against Miniso.
Background
Travel Blue Limited- plaintiff 2, a UK based company, and its Indian subsidiary Travel Blue Products India Private Limited- plaintiff 1 were engaged in marketing and sale of travel accessory products through online and offline modes, which are manufactured by plaintiff 2. In 2015, plaintiff 2 designed an innovative and distinctive “Travel Blue Tranquility Neck Pillow” and obtained registration of the product in India on 9-3-2016 with reciprocity from 19-10-2015. They applied for extension of the copyright in the registered design of the product under Section 11 of the Designs Act, 2000 (‘Act’), which has been extended for five years, till 19-10-2030.
The plaintiffs began marketing and selling the product through online and offline modes since October 2001, building substantial business with actual sales of Rs. 70,20,507.80 by 2024-2025. The design was also registered in multiple other countries including Europe, China, USA and Australia.
Around August 2024, the plaintiff became aware that the defendants- Miniso lifestyle Pvt. Ltd. and Miniso Hong Kong Ltd who were selling travel neck pillows in retail stores and on various e-commerce websites. The plaintiff alleged that these products bore identical features to the registered design, including copying the exact colours namely, blue, gray, purple and pink in which the product was sold.
Consequently, the plaintiff filed a suit seeking relief against the piracy of registered design and passing off.
Analysis, Law and Decision
The point of consideration before the Court was whether the plaintiff was entitled to commercial monopoly in respect of the design of the tranquility neck pillow and whether the plaintiff’s design was non registrable under the Act, because was dictated by function and incapable of protection and, whether there existed prior art substantially similar to the plaintiff’s design.
The Court observed that the product was registered under the Act as “neck pillow with pockets” with the novelty residing in the shape and configuration. The registered design had a non-detachable pocket whereas the actual tranquility pillow had removable pocket and the Miniso’s product didn’t have any pocket. The Court opined that while the product was described as “neck pillow with pockets”, the registration protected the overall shape and configuration, not merely the pocket element. Additionally, when the rival products were produced physically before this Court it was almost impossible to differentiate between the two products with both products being substantially similar in shape, configuration, features, fabric, colour etc.
Furthermore, the Court pointed out a fatal inconsistency between Miniso’s arguments and their pleadings. While arguing they stated that the design of the product was predominantly functional and incapable of registration, but their pleadings acknowledged that both the rival products’ design have very distinctive visual appeal, and the pleadings took no claim on the aspect of registrability of the said product. Therefore, the Court held that since Miniso accepted that the product design possesses visual appeal, it’s not open for them to claim that the design is not registrable on the ground of functionality.
In examining the first issue of functionality, the Court applied the settled jurisprudential framework established by Supreme Court in the case of Whirlpool of India Ltd. v. Videocon Industries Ltd. 2014 SCC OnLine Bom 565, in which it was held that the test of functional utility is integral to determining whether an article qualifies for protection under the Act, the design should possess aesthetic appeal rather than being purely functional. Applying this test to the present case, the Court stated that the neck support functionality could be achieved through various design forms and that the features like “easy storage” and “memory foam” were product specifications, not protected by visual elements.
With reference to the second issue regarding prior art existence, the Court stated that the fundamental deficiencies were that most cited registrations were foreign and without proof of Indian registration and their sole Indian registration from 2011 was visually and structurally dissimilar to the product.
The Court also emphasised that for establishing passing off, it is required to ask whether the infringed product was likely to cause confusion in the relevant consumer base. Since the overall similarity of the product is likely to confuse the customer and the fact that the petitioner had to approach the Court against infringers demonstrates the market penetration of Miniso. So, the case for passing of is surely made.
Finally, the Court held that the products were obvious imitations of each other. The Court stated that the petitioner had built substantial goodwill in the past nine years and the defendant’s entry into the market in 2022 with similar product suggested dishonest adoption rather than independent development. Accordingly, the Court granted relief to the petitioners by restraining Miniso from manufacturing, selling, and listing of the said product on e-commerce platforms and on retail stores.
[Travel Blue Products India (P) Ltd. v. Miniso Lifestyle (P) Ltd., 2025 SCC OnLine Bom 2792, decided on 31-7-2025]
Advocates who appeared in this case :
Advocate for the Plaintiffs- Hiren Kamod, Bhushan Shah and Abhishek Nair i/by Mansukhlal Hiralal and Co., Advocates
Advocate for the Respondents- Dr. Abhinav Chandrachud, Darshan Patankar, Pranit Kulkarni, Aditya Mehta, Agneya Gopinath, Dhruv Chhajed i/by Cyril Amarchand Mangaldas, Advocates