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Designs[1]

Table of Contents

QUESTION BANK

Explain the provision relating to procedure for registration of Design under the Design Act, 2000. What is the Effect of such registration?
Write note on registration and cancellation of design.
What is the procedure for registration and cancellation of designs?
Explain the procedure for registration of design and explain legal remedies for infringement i.e. piracy of registered design.

Short Notes

Rights of design holder.
Cancellation of designs.
Industrial designs.

I. Introduction-

Every person purchases one or the other article in a day. Among the same types of articles, we can choose to purchase any of them. The choice depends upon the design of the article. We prefer to purchase articles that appeal to our aesthetic sense. Thus, design matters much in our day-to-day useful articles. We are buying designed toothpaste, shoes, pens, glass, dresses, watches, jewellery, furniture, electrical appliances, night dresses etc. Design matters, even the quilt of the article. Popular brands are nothing but popular designs of products, even though those articles are of ordinary quality.

The design of articles has started to become important since the aesthetic sense in humans began to develop. Currently, there is competition among all producers to produce well-designed articles and products that appeal to the purchaser’s aesthetic sense, so the purchase of those articles will increase.

Producers spend a lot on product designs. Therefore, it becomes important to protect new or original designs; otherwise, competitors would copy them and sell their own products.

With the object of (i) providing effective protection to new or original designs, (ii) promoting design activities in the production of articles, and (iii) removing unnecessary impediments to the free use of available designs, the Design Act. 2000 is passed, replacing the earlier Design Act of 1911. Thus, the design has made one of the important intellectual property rights.

II. History of Design protection-

The history of designed articles traces back to the development of the human aesthetic sense. The requirement of its protection felt necessary after the Industrial Revolution in Europe. In the U.K., textile designs attracted legal protection first.

The first design protection legislation enacted in British India was the Patterns and Designs Protection Act of 1872. This was followed by the Inventions and Designs Act of 1808. The Act was replaced by the British Patterns and Designs Act of 1907. Based on the 1907 Act, the India Patents and Designs Act 1911 was enacted. After that, the Parliament passed the Designs Act of 2000 in independent India, replacing earlier laws to suit present requirements of the protection of industrial designs.

Some attempts were also made to protect designs at the international level. The Paris Convention for the Protection of Industrial Property, 1883; the Berne Convention, 1886; the Hague Agreement, 1925; and the Trade-Related Aspects of Intellectual Property Rights (TRIP) Agreement, 1994, are some examples of international conventions on the protection of industrial designs.

III. Definition and meaning of design-

A. Definition of Design (S. 2 (d))-

The Designs Act 2000[2] Defines, the ‘design’ means-

(i) only the features of shape, configuration, pattern, ornament or composition of lines or colours,

(ii) applied to any article, whether in two-dimensional or three-dimensional or in both forms,

(iii) by any industrial process or means, whether manual, mechanical or chemical, separate or combined,

(iv) which in the finished article appeal to and are judged solely by the eye.

Thus, from the above definition, we may say that the design includes only the features that look attractive to the eye; it has no relation to the functional utility or quality of the article.

The definition further states that the meaning of ‘design’ does not include any mode or principle of construction or anything that is, in substance, a mere mechanical device. It also does not include a trade mark, property mark, or artistic work.

B. Characteristics of ‘Design’-

From the above definition,, we may lay down the following characteristics of ‘design’-

i) Outward appearances.-

The ‘design’ under the Act means ‘only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article’. Thus, only the outward appearance of the article, which looks good in the eye of the customer, is protected under the design. It has nothing to do with the quality or functional aspect of the article. In other words, the Design Act, for the purpose of protestation, takes into the external appearance of the appearance of the article and not the article itself.

Such external features or composition of lines may have applied to the article in two or three dominations or in both forms.

ii) Applied to any ‘Article’-

2 (a) defines “article’ as (i) any article of manufacture, (ii) any substance artificial or partly artificial and partly natural, and (iii) includes any part of an article capable of being made and sold separately.

A Design gives a specific and individual appearance to a physical object, i.e., an article. Design Act protects an article on which it is applied. Therefore, design and article cannot be separated. The article with the design is registered under the Design Act. An article to which the design is to be applied must be something that is to be delivered to the purchaser as a finished article; thus, in general, buildings and structures cannot be considered articles under the Act. An article for which a design may be registered includes ‘any part of an article if that part is made and sold separately”.

iii) Industrial process or means/ Industrial design-

The design must be applied to the articles by an industrial process. This part of the definition shows that the design’s application method must be to reproduce the design upon articles on a large scale. This line separates ‘industrial design’ from ‘artistic work’. The Designs Act protects industrial designs, Copyright A, and the ‘artistic work’. Artistic works like paintings, sculptures, and the like, which are not produced in bulk by any industrial process, are protected under the Copyright Act and not the Designs Act. The Designs Act applies to ‘industrial articles’ produced at a large scale, either by industrial process or means, whether manual, mechanical or chemical, at separate times; the protection of both these laws seems to overlap, but S. 15 of the Copyright Act resolves this issue. Acceding to S. 15 of the Copyright Act, (1) an owner of a design waives protection under the Copyright Act once the design has been granted registration under the Designs Act. (2) A copyright in an unregistered design shall cease as soon as the article to which the design applied is reproduced more than fifty times by an industrial process.

In Holland Company LP v. S.P. Industries[3]

The Delhi High Court, by conjoint reading of Design and Copyright Acts, held that where a design of an article is prepared for industrial production of an article, it is design and registerable under the Designs Act. Moreover, the design author can claim copyright under S. 14 (c) of the Copyright Act. However, since the design is registerable under the Designs Act, if the design is used for the production of articles by an industrial process more than 50 times, the copyright in the design ceases.

iv) Appeals to and is solely judged by eye.-

The design that are applied to the article must appeal to the eye, in the sense of catching or attracting the eye of a potential buyer. The appealing design may be decorative elements like pattern, ornament etc. added to article or they may be part of the very structure like shape, configuration etc.

The Designs Act protects only design that is aesthetic in nature. The sole purpose of design is to arouse the aesthetic and visual senses of a consumer with intent to induce him into purchasing the article. It emphasis on the external visible appearance of the article.

IV. Registration of Design-

Registration of designs gives the design holder important protection and rights. The Act has made it compulsory to register a design if it needs to be protected.

A. Registerable designs (S. 4, 5 and 35)-

As per the Act, the following designs are registerable.

1. New or Original design[4]–

Only new or original designs are registerable. Designs that are not new or original are not registerable.

A design to be new should be invented or created for the first time and was hitherto unknown. The word ‘original’ is defined by S. 2 (g). It provides that “original” in relation to a design means originating from the author of such design and includes the cases which, though old in themselves yet, are new in their application. In other words, the design should be substantially different from pre-existing designs applied to the class of the article; ordinary trade variants or superficial variants are not sufficient[5]. To be called an original design, it need not be completely new. It may be an existing or known design, but it has been applied to a particular article for the first time; hence, it is original. Thus, we may say that the design should be ‘novel’ to be registered.

In Bhart Glass Tube Limited v. Gopal Glass Works Limited[6]

Facts—The defendant claimed to be the originator of a new and original industrial design applied by mechanical process to glass sheets. The plaintiff claimed the design was not new and had already been published.

The controller ordered to cancel the design. The High Court ordered setting aside cancellation.

The Supreme Court upheld the High Court’s order on the ground that the design was neither published before nor registered in any other country. It further held that the expression ‘new or original’ design means a design that has not been published anywhere nor made known to the public. It should have been invented for the first time or not reproduced by anyone.

In Gammeter v. The Controller of Patents and Designs[7]

The Calcutta High Court observed that a design need not be new or original within the meaning of the Act to be new or original; it need not be new or original in the sense of never having been seen before as applied to any article; there might be a novelty in applying an old thing to a new use, provided it is not merely analogues.

2. Not prior published[8]–

The design to be registered should not have been disclosed to the public. It cannot be registered if it is not kept secret and was previously published in India or elsewhere. Prior publication casts doubt on a design’s being new or original.

In Niki Tasha Ltd v. Faridabad Gas Gadgets Ltd[9].

Delhi High Court held that publication before registration defects the proprietor’s right to protection under the Act.

3. Should be significantly distinguishable[10]–

The design to be registered should be significantly distinguishable from known designs or combinations of known designs. A design that is not significantly distinguishable from other known designs or combinations of designs shall not be registered. Such a design does not qualify as a new or original design. We may say the above two factors are determining factors as to whether the design is new or original.

4. It should not contain scandalous or obscene matter[11]–

A design that contains scandalous or obscene content is not registerable. Scandalous means offensive to the conscience or moral feelings or calling out for condemnation. Obscene is indecency, something that is to be delivered to the purchaser as a finished article, contrary to public order[12] or morality[13]–

To be registered, the use of design should not be contrary to public order or morality.

B. Persons entitled to seek registration (S. 5)-

If he passes the above requirements, any person claiming to be the proprietor of any new or original design can file an application for registration. According to S. 2 (j) ‘Proprietor’ means

(i) the Author of the design;

(ii) any person who has obtained a design from the author for good consideration; and

(iii) any person on whom the design has devolved from the original proprietor.

The joint authorship can be claimed when a design creation involves more than one person. Even foreigners can get a design registered in India in certain circumstances (S. 44).

C. Application for registration of design (S. 5)-

The proprietor shall apply for design registration with the Controller of Designs. The design should be new or original, not previously published, and not contrary to public order or morality, so it should not be scandalous or obscene.

Before such registration, the Controller shall refer the application to an examiner for examination as to whether such design is capable of being registered and consider the examiner’s report.

The application must be made in the prescribed form and accompanied by the prescribed fee. It must also include a brief statement of the novelty claimed by the applicant for design and be filed in the Patent Office.

A design may be registered in not more than one class, and the Controller may refuse to register it in case of doubt as to the class in which it is to be registered. However, in such a case, the aggrieved person may appeal to the High Court.

D. Acceptance or objections on application-

If any objections appear to the Controller, a statement of these objections should be sent to the applicant or his agent in writing. The applicant or his agent has to remove those objections within one month or apply for a hearing, failing which the applicant will be deemed to have withdrawn his application.

E. Registration and publication of particulars of design-

If, on consideration of application, the controller finds that the applicant fulfils all the prescribed requirements and no objections are raised, he shall register the design.

On acceptance of the design filed in respect of the application, the Controller shall direct the registration and publication of the particulars of the application in the Official Gazette.

When the design is registered, the Controller should grant a Certificate of Registration to the premotor of design.

V. Cancellation of Registration (S. 19)-

Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of that design to the Controller on any of the following grounds, namely-

(a) that the design has been previously registered in India or

(b) that it has been published in India or any other country before the date of registration or

(d) that the design is not registrable under the Act;

(e) that it is not a design as defined under clause (d) of S. 2.

The power of cancellation is given to the Controller. An appeal against the order of the Controller lies with the High Court.

In Joginder Singh v. Tabu Enterprises[14]

Delhi High Court ordered the cancellation of registration on the grounds that the design was published prior to registration.

Whereas in Bharat Glass Tube Limited v. Gopal Glass Works Limited[15]The Supreme Court refused to cancel the registration of a design because it did not violate any of the registration provisions.

VI. Effect of Registration/ Right of Design Holder (S.11, 22 and S. 30) –

Registration of design confers the following important rights upon design holders or proprietors of design-

a) Copy Right-

The registration of the design confers on the registered proprietor the copyright protection in the design. According to S. 2 (c), “Copyright” means the exclusive right to apply a design to any article in any class in which the design is registered. The copyright under this Act is available to the design holder for a period of ten years from the date of registration. The period of copyright can be extended to five years after applying to the Controller before the expiry of the ten-year term. Thus, the total duration of copyright in design is up to 15 years. After that, the design falls in the public domain for use by the public.

Thus, we may say the copyright available under this Act to the design holder differs from the copyright available to the copyright holder under the Copyright Act of 1957.

b) Apply the design to any article-

The design holder can apply the design to any article or class thereof in which the design is registered for sale or do anything to enable the design to be so applied.

c) Import for the purpose of sale-

The design holder can import any article belonging to the class in which the design has been registered and apply the design to such an article for sale.

d) Right to advertise-

The design holder can publish or cause the article in which the design is registered to be published or exposed for sale.

e) Issue license-

The design holder can authorise any other person to use the design through his written consent or license.

f) Right to protect design from piracy-

The design holder of a registered design is also granted a right to protect the design from piracy. If piracy occurs, the design holder is also granted a right to bring a suit for recovery of damages or for an injunction against the perpetrator of the piracy (Discussed in detail ahead).

VII. Infringement of Design (Piracy of Design)-

Infringement of copyright in a design is termed “piracy of registered design.” It is the same as infringement of copyright. During the existence of copyright in any design, it is not lawful for any person to do such acts that are inconsistent with the design holders’ or proprietors’ copyright.

a) Acts infringing copyright (S. 22)-

During the existence of copyright in any design, it is not lawful for any person to do the following acts –

i) To apply the design to any article-

For the purpose of sale to apply or cause to apply to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, or to do anything with a view to enable the design to be so applied.

ii) To import for the purpose of sale-

To import for the purpose of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof, or

iii) To advertise such designed article-

Knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor to publish or expose or cause to be published or exposed for sale of the article.

Meaning of ‘fraudulent’ and ‘obvious’ imitation-

The term ‘imitation’ implies copying. A registered design is infringed where a person, without the consent of the registered proprietor of a design, applies the design, or any fraudulent or obvious imitation thereof, to an article for which registration was granted. It is, therefore, important to understand the meaning of ‘fraudulent’ and ‘obvious’ imitation.

An ‘obvious imitation[16]’ is very close to the original design, and its resemblance to the original design is immediately apparent when looking at the two. In other words, it is a copy apparent to the eye, notwithstanding slight differences.

Meanwhile, ‘fraudulent imitation’ is made with the intention of devising another person with the knowledge that what is being done is a violation of the other person’s right. In other words, it is less apparent than an obvious imitation, but it is done with the knowledge that the pattern is a registered design of another and is done without sufficient invention on this new part.

In Malleys Ltd. v. J. W. Tomlin Pty. Ltd[17]

The court observed that a “fraudulent imitation” is understood to mean a copy with differences that are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying.

b) Burden of proof-

In a suit for infringement, the burden of proof is on the plaintiff who brings an action to establish the fact of piracy of his design.

c) Remedies against infringement (S. 22)-

The Design Act of 2000 provides two alternative remedies for the design holder. The design holder must elect one of them.

i) To get the amount as a contract debt-

Suppose any person acts in contravention of the design holder’s right. In that case, such person shall be liable for every contravention to pay the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt. Provided that the total sum recoverable concerning any one design shall not exceed fifty thousand rupees,

ii) Suit for damages and injunction-

If the proprietor elects to bring a suit to recover damages for any contravention, the defendant is liable to pay such damages as may be awarded. The proprietor in the suit for damages can also seek an injunction against the defendant to restrict him from repeating infringement.

The District Court has jurisdiction to try the suit. All the grounds available for cancellation of registration of design are available as defences to Defendant. However, if the dependent avails or raises any of these defences, the suit or relief proceeding will be transferred to the High Court for a decision from the District Court.

In Fun World and Resorts v. Nimil K.K

(2020 Lex (Ker) -1-36)

The Kerala High Court held that the grant of an interim injunction is purely within the court’s discretion. If an injunction is granted, the plaintiff must prove a prima facie case, balance of convenience, and irreparable loss. The court granted an injunction in this case.

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[1] रचना/ अराखडा

[2] Hereinafter for the sake of brevity called as ‘the Act’.

[3] Decided on 27 July 2017

[4] नवीन अथवा मूळ/कल्पक रचना नया या मूल रचना

[5] अस्तीत्वातील रचनेपेक्षा ही रचना वेगळी असली पाहीजे, केवळ वरकरनी बदल चालनार नाहीत/ साधारण व्यापार वेरिएंट या सतही वेरिएंट पर्याप्त नहीं हैं

[6] AIR 2008 SC 2520

[7] AIR 1919 Cal. 887

[8] पूर्व प्रषिघ्दी नको/ पहले प्रकाशित नहीं

[9] AIR 1985 Del 136

[10] फरक करता येन्यासारखे /काफी अलग होना चाहिए

[11] रचना अश्लील अथवा बिभत्स नासावी

[12] समाजीक व्यवस्था

[13] नैतीकती

[14] AIR 1989 Del 81

[15] AIR 2008 SC 2520

[16] स्पष्ट/उघड दिसणारी नक्क्ल/ नकलीपना

[17] (1961) HCA 77