Industrial Designs Under the India-New Zealand FTA: Protecting Product Appearance Before the First Export

Introduction : On 20th October 2026 India and New Zealand have entered into a Free Trade Agreement after re-opening negotiations in March 2025. The agreement was reached in December 2025 and was signed on 27th April 2026 in New Delhi. New Zealand have fully liberalized their tariff lines for Indian products. Textiles, clothing, leather and footwear are among the key sectors identified by the Department of Commerce.

The initial week has been busy! A mini excavator made in Pune has been flagged off as the first shipment on 19th October. The customs authorities signed a Memorandum to exchange origin information electronically on the same day. The India origin requirements for the agreement came into effect on 20th October. The reduced tariffs mean that copying can be shipped more cheaply. Often for a kitchenware company based in Moradabad or a footwear unit in Agra, the design and decoration on a product adds value. This blog will explain how the agreement covers Industrial Designs, the process of registering and novelty requirements in both countries. It will explain the most common and avoidable error of disclosing before filing and what exporters can do.

Legal Provisions

The FTA’s Intellectual Property Chapter

Chapter 11 is about intellectual property. Article 11.30 requires each Party to protect independently developed new/original industrial designs by registering them to give the owner an exclusive right under the TRIPS Agreement. There are a few exceptions permitted (Article 11.31). Parties must also provide national treatment (Article 11.8) and they should aim to make sure that they register their designs in publicly available online databases (Article 11.9). Reduced fees can also be provided to SMEs, start-ups and educational institutions (Article 11.12). Each party shall work together and share information between the two IP offices (Article 11.13). This design standard is similar to Article 25(1) of TRIPS.

Indian Law: The Designs Act, 2000

A design has been defined under section 2(d) as “the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article either directly or indirectly by any means whether manual or mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.” Designs which are not new or original or have been published or made known to the public either in India or in any other Country by publishing in any tangible form or by use or otherwise before the date of filing or priority shall not be registered (Section 4). Prior publication is a reason for cancellation of registration of designs (Section 19). All reasons for cancellation of registration may be raised by a defendant as a defence against piracy (Section 22(3)). The period of protection is ten years and can be renewed for another five years. Under section 44, priority for six months can be claimed under convention. Section 21 provides limited protection for display of the design at notified exhibitions. Exporters should also be mindful that if a design is registrable but not registered then the copyright in the design will cease once that article is reproduced more than fifty times using an industrial process (Section 15(2), Copyright Act, 1957).

New Zealand Law: The Designs Act 1953

In New Zealand only new/original designs can be registered. Designs that are already registered or have been published in New Zealand will be rejected. Under section 10 there are some confidential disclosures, however by registering your design you get protection for up to 5 years (2 times extendable) and must make a convention application within 6 months after the first overseas filing.

Legal Analysis

Two Novelty Standards, One Product

These statutes also take different approaches to determining novelty. In India, the novelty is determined globally. This means that any prior disclosure in a Wellington trade show or New Zealand market place will affect the novelty in India. The NZ statute states that if the design has been ‘registered or published in New Zealand’. However, it can be problematic to rely on online catalogues as a webpage created for New Zealand customers can easily be argued as being published in New Zealand. It is safest to simply file in India first and then file in New Zealand within 6 months claiming priority.

Disclosure Before Filing: The Exporter’s Trap

The entire export marketing process revolves around visuals and so many opportunities exist for the design to be published. This can occur via the buyers catalogue, sample dispatches, Instagram reels and marketplace listing. All of which could constitute publication under section 4(b). In Bharat Glass Tube the Supreme Court placed the onus of proof upon the party who claims there was prior publication. They focused on the need for evidence that the design was used in the article. The Full Bench in Reckitt Benckiser went on further to state that publication is a question of fact. Therefore, the prior disclosure should show a clear enough visual display of the design on an article. This helps protect the owner from vague claims but in cases where the evidence is on the owner’s website, such as that in Novamax, this will not help. There the proprietor’s website had shown the design of the cooler months prior to filing and infringement did not occur.

The current exhibition grace period under section 21 is limited. However, the DPIIT has produced a concept note (Jan 2026) proposing a universal 12 month grace period, accession to the Hague System and Design Law Treaty, a delayed publication period of up to 30 months, multiple designs in one application and a 5+5+5 term. These are only proposals. Exporters should work to the current law.

When Registration Fails: Passing Off as a Second Line

A registration lost to prior publication does not end every claim. The five judge bench in Delhi High Court, in the case of Carlsberg held that a combined claim of infringement and passing off would be maintainable because they both arose from the same sale of the infringing goods. Novamax has taken this approach the other way round, dismissing the design claim but allowing the passing off claim to go to trial. However, passing off requires goodwill, a new exporter to a new market will have very little of this. Registration is still the best option as it is a cheaper option.

A Newer Front: Digital Designs

With consumer electronics and smart appliances being sold based on the screen, in early October 2026 the Office of the Controller General has issued draft guidelines which require registration of GUI and icons applied to an article. Each frame of the animation will have to be registered separately. Indian exporters of appliances need to keep an eye out for this.

Relevant Case Laws

Bharat Gas Tube Ltd. V. Gopal Glass Works Ltd. (2008) 10 SCC 657: The Applicant Gopal Glass had registered a pattern on sheets of glass produced using roller purchased from a German Company in the year 2002. The Petitioner Bharat Glass sought for the revocation of the registration by producing a German Catalogue and UK Registration obtained from the internet. However, the Supreme Court upheld the registration and pointed out that there was no evidence produced that the design was used on glass anywhere. It was also pointed out that the Act provides protection to the aesthetic appeal of the end product.

Reckitt Benckiser (India) Ltd. V. Wyeth Ltd. AIR 2013 DELHI 101: The dispute concerned Reckitt’s registered design for an S-shaped spatula sold with a hair-removal cream. On a reference, the Full Bench held that a foreign registration is no ground for cancellation under Section 19(1)(a), that convention priority is lost if the Indian application is filed beyond six months, and that prior publication depends on whether the disclosure shows the design applied to an article with sufficient visual clarity.

Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. AIR 2019 DELHI 23: The plaintiff claimed that the defendant infringed their registered bottle design by producing bottles for the HUNTER brand of beer. The five judge bench decided that the action for design infringement and passing off was a composite action which was sustainable as the allegations were based on the same acts and dealings.

Novomax Industries LLP v. Prem Appliances CS (COMM) 177/2021: Novamax’s suit for alleged infringement of their registered design in relation to air coolers was filed in October 2019. The defendant had displayed the Novamax design on their own website from 24th March 2019 and also had invoices for previous sales. However, the Delhi High Court decided that the design was publicly available and hence the claim of infringement was dismissed as a summary judgment. The passing off claim was allowed to proceed.

Practical Implications

From a business perspective, the availability of duty free items will enable quicker delivery of Indian consumer products to New Zealand markets. Importers will be looking at the quality of the products they are importing. If an exporter fails to provide their documentation on time, they may find they have a poor product as they are using someone else’s catalogue. Small businesses should look into any fees that may be waived, as Article 11.12 specifically allows for small businesses and new start-ups to.

Design-Protection Checklist for Consumer-Goods Exporters

1. Hold back catalogues, social media posts, marketplace listings and trade-fair displays until the Indian application is on file.
2. Use confidentiality terms with buyers by sending samples and renders under written non-disclosure terms, which also help under Section 10 of the New Zealand Act.
3. File in India first as a filed Indian application fixes the priority date and protects against worldwide prior art from that day.
4. File in New Zealand within six months and claim Indian Priority.
5. Register every commercial variant such as colourways, handles and lid shapes that buyers will see.
6. Register before mass production as industrial reproduction beyond fifty articles ends copyright in an unregistered registrable design.
7. Keep dated design records such as sketches, CAD files and launch dates as it helps answer a prior publication attack.
8. Build trade dress evidence through advertising and sales records, which can preserve a passing-off claim even if the registration falls.

Conclusion

This Agreement reaffirms the standard of design protection under TRIPS. However, the true benefit comes from national treatment, transparency, reduced fees and collaboration between offices. This lowers the costs of protecting your product in the other country. Indian exporters are at risk here as they often like to demonstrate their product to buyers.

In the near future, there is a realistic option for both countries. If India implements the January 2026 proposals, there will be a 12-month grace period where early marketing will be forgiven. Accession to the Hague will also mean that they can utilise one international application for multiple markets. Collaboration (Article 11.13) will mean common examination standards and quicker search times between the Indian Designs Office and IPONZ. Indian exporters will have secure designs when exporting clothing, footwear, kitchenware and handicrafts to an affluent market. Design driven businesses in New Zealand will have secure protection in one of the largest consumer markets in the world. Both countries will benefit from less copying issues and increased licensing. For now, exporters need to file first!

Author:- Priyanshu Kandpal, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.