Section 42 explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Section 42 stops a design owner from using a sale, lease or licence of a registered article to control what the buyer or licensee buys or uses elsewhere. A condition that forces the purchaser, lessee or licensee to take other articles from the seller, or that restricts his use of articles not supplied by the seller, is made "void". The section also gives a defence in a piracy suit, saves some conditions, and reaches back to old contracts. If you are drafting or reviewing a licence or distribution agreement for a registered design, a legal consultation can check each clause against this section.
It is not lawful to insert, in (i) a contract of sale or lease of an article with a registered design, (ii) a licence to manufacture or use such an article, or (iii) a licence to package it, a condition that (a) ties the buyer to the seller for other articles or restricts buying them elsewhere, or (b) restricts use of other articles not supplied by the seller. Any such condition shall be void. A defence exists in a section 22 piracy suit if such a condition was in force, unless the plaintiff did not know of it and was not a party. Some conditions are saved, and the section reaches old contracts if the condition continues for more than one year after commencement.
Sub-section (1): the three kinds of contract and two kinds of condition
"It shall not be lawful to insert- (i) in any contract for or in relation to the sale or lease of an article in respect of which a design is registered; or (ii) in a licence to manufacture or use an article in respect of which a design is registered; or (iii) in a licence to package the article in respect of which a design is registered, a condition the effect of which may be-"
| Contract | Parties affected |
|---|---|
| (i) Sale or lease of an article with a registered design | Vendor, lessor and purchaser, lessee |
| (ii) Licence to manufacture or use such an article | Licensor and licensee |
| (iii) Licence to package such an article | Licensor and licensee |
The conditions caught are described by their effect: "a condition the effect of which may be". That matters, because the label does not decide it; what the clause does decides it.
(a) The tie-in. "To require the purchaser, lessee, or licensee to acquire from the vendor, lessor, or licensor or his nominees, or to prohibit him from acquiring or to restrict in any manner or to any extent his right to acquire from any person or to prohibit him from acquiring except from the vendor, lessor, or licensor or his nominees any article other than the article in respect of which a design is registered". (The text prints "I" for "in" in "restrict I in any manner".) In plain words: the seller cannot force the buyer to buy other articles from him, or stop him buying them elsewhere. The articles are those "other than the article in respect of which a design is registered".
(b) The use restriction. "To prohibit the purchaser, lessee or licensee from using or to restrict in any manner or to any extent the right of the purchaser, lessee or licensee, to use an article other than the article in respect of which a design is registered which is not supplied by the vendor, lessor or licensor or his nominee". In plain words: the seller cannot stop or limit the buyer from using other articles just because the seller did not supply them.
Result: "and any such condition shall be void." The condition is void; the text does not say the whole contract is void.
Sub-section (2): separate agreements do not escape
"A condition of the nature referred to in clause (a) or clause (b) of sub-section (1) shall not cease to be a condition falling within that sub-section merely by reason of the fact that the agreement containing it has been entered into separately, whether before or after the contract relating to the sale, lease or licence of the article in respect of which a design is registered."
(The text prints "failing" for "falling".) A side agreement, signed before or after the main contract, cannot be used to dodge the section.
Sub-section (3): defence in a piracy suit
"In proceeding against any person for any act in contravention of section 22, it shall be a defence to prove that at the time of such contravention there was in force a contract relating to the registered design and containing a condition declared unlawful by this section."
So a defendant sued under section 22 can defend by proving that, at the time of the contravention, a contract relating to the registered design containing a condition declared unlawful by section 42 was in force. See our article on section 22.
Proviso: "this sub-section shall not apply if the plaintiff is not a party to the contract and proves to the satisfaction of the court that the restrictive condition was inserted in the contract without his knowledge and consent, express or implied." So the defence fails if the plaintiff was not a party to the contract and shows that the condition was inserted without his knowledge and consent.
| Step | Burden |
|---|---|
| Defendant shows a contract with an unlawful condition was in force at the time of the contravention | On the defendant ("to prove") |
| Plaintiff avoids the defence by showing he is not a party and the condition was inserted without his knowledge or consent, express or implied | On the plaintiff ("proves to the satisfaction of the court") |
Sub-section (4): what the section does not do
"Nothing in this section shall-
(a) affect a condition in a contract by which a person is prohibited from selling goods other than those of particular person;
(b) validate a contract which, but for this section, would be invalid;
(c) affect a condition in a contract for the lease of, or licence to use, an article in respect of which a design is registered, by which the lessor or licensor reserves to himself or his nominee the right to supply such new parts of the article, in respect of which a design is registered, as may be required or to put or keep it in repair."
Three savings:
- A condition prohibiting sale of goods other than those of a particular person is not affected. The text gives no more detail.
- The section does not validate a contract which would otherwise be invalid.
- A lessor's or licensor's reservation of the right to supply new parts or to repair the registered-design article is not affected, in a lease or a licence to use.
The third saving is practical: a lessor of registered-design equipment can keep the right to supply spare parts and to repair. It applies to leases and licences to use, not to sales.
Sub-section (5): old contracts
"The provisions of this section shall also apply to contracts made before the commencement of this Act if, and in so far as, any restrictive conditions declared unlawful by this section continue in force after the expiration of one year from such commencement."
An old contract is affected only if, and so far as, a restrictive condition continues in force after one year from commencement. See our article on section 1 for how commencement is fixed.
Illustration (invented)
Alpine Gadgets Pvt. Ltd. holds a registered design for a coffee-machine body and licenses Brew Hub to manufacture it. The licence says: "Brew Hub must buy all packaging cartons only from Alpine's nominee, and must not use any other maker's cartons." That condition requires acquisition of an article other than the registered article from the licensor's nominee and restricts the licensee's right to acquire elsewhere; on the text of sub-section (1)(a) it is void. Alpine puts the same condition in a separate letter agreement signed a month later; sub-section (2) says that does not help. If Alpine later sues Brew Hub for piracy under section 22, Brew Hub can prove the condition was in force and rely on sub-section (3). If Alpine had only reserved the right to supply new parts and repair machines it leases, sub-section (4)(c) saves that condition. Our design licence agreement template and the article on section 30 help with drafting.
Need help reviewing a design licence or supply contract?
A single tie-in clause can be void and can give an opponent a defence. Our legal consultation team can review your agreements against section 42 and redraft clauses so they stay within the Act.
Key takeaways
- Tie-in conditions on other articles, and restrictions on using other articles, are void when inserted in a sale, lease, manufacturing or use licence, or packaging licence for a registered-design article.
- A separate agreement entered before or after does not avoid the section.
- A condition declared unlawful by this section is a defence in a section 22 piracy suit, unless the plaintiff was not a party and did not know of or consent to the condition.
- Three savings: exclusive-dealing as to goods of a particular person, no validation of otherwise invalid contracts, and reserved rights to supply new parts or repair.
- Old contracts are caught where an unlawful condition continues after one year from commencement.
Read next
- Section 22: piracy of registered design
- Section 30: entry of assignments, transmissions and licences in register
- Design licence agreement: draft template
- Section 43: legal practitioners and agents
Disclaimer: Based on the Designs Act, 2000 as enacted, as consulted on 1 October 2026. Forms, fees and procedure are set by the Designs Rules, 2001 as amended from time to time. This article is general information, not legal advice; check the official text before acting.