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QUESTION BANK
1. Explain the provision relating to procedure for registration of Design under the Design Act, 2000. What is the Effect of such registration?
2. Write note on registration and cancellation of design.
3. What is the procedure for registration and cancellation of designs?
4. Explain the procedure for registration of design and explain legal remedies for infringement i.e. piracy of registered design.
Short Notes
1. Rights of design holder.
2. Cancellation of designs.
3. Industrial designs.
SYNOPSIS
II. History of Design Protection
III. Definition and Meaning of Design
B. Characteristics of ‘Design’
1. Outward Appearances:
2. Applied to any ‘Article’:
3. Industrial Process or Means / Industrial Design:
4. Appeals to and is Solely Judged by the Eye:
IV. Registration of Design
A. Registrable Designs (Sections 4, 5, and 35)
1. New or Original Design:
2. Not Prior Published:
3. Should be Significantly Distinguishable:
4. Absence of Scandalous or Obscene Matter:
5. Not Contrary to Public Order or Morality:
B. Persons Entitled to Seek Registration (Section 5)
C. Application for Registration of Design (Section 5)
D. Acceptance or Objections on Application
V. Cancellation of Registration (Section 19)
VI. Effect of Registration / Rights of a Design Holder (Sections 11, 22, and 30)
1. Copyright in the Design:
2. Right to Apply the Design:
3. Right to Import for Sale:
4. Right to Advertise:
5. Right to Issue Licenses:
6. Right to Protect Design from Piracy:
VII. Infringement of Design (Piracy of Design)
A. Acts Infringing Copyright (Section 22)
i) To Apply the Design to Any Article:
ii) To Import for the Purpose of Sale:
iii) To Advertise Such Designed Articles:
Meaning of ‘Fraudulent’ and ‘Obvious’ Imitation
B. Burden of Proof
i) Recovery of a Sum as a Contract Debt:
ii) Suit for Damages and Injunction:
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Every individual purchase or interacts with various articles in their day-to-day life. When presented with the same type of utility articles, a consumer's choice to purchase a specific product often depends heavily on its visual appeal and structural design. Human beings naturally prefer to purchase articles that appeal to their aesthetic sensibilities. Thus, design plays a monumental role in marketing daily consumables and durable goods, ranging from designed toothpaste tubes, shoes, pens, glassware, dresses, watches, and jewellery to furniture, electrical appliances, and quilts. It is an established market reality that popular brands are frequently synonymous with popular product designs, even if the underlying articles possess ordinary functional quality.
The relevance of the design of articles has grown alongside the historical development of the human aesthetic sense. Modern commercial markets are characterized by intense competition among producers to manufacture well-designed products that instantly capture a purchaser's visual attention, thereby maximizing sales and market share. To achieve this, manufacturers invest significant capital and creative effort into product design. Consequently, it becomes imperative to legally protect these new or original designs from unauthorized duplication by competitors who wish to free-ride on the creator's investments.
With the primary objectives of providing an effective mechanism for protecting new or original designs, promoting innovative design activities in industrial production, and removing unnecessary impediments to the free use of available designs, the Indian Parliament enacted the Designs Act, 2000. This modern statute replaced the obsolete British-era Patents and Designs Act of 1911, firmly establishing industrial designs as a vital pillar of Intellectual Property Rights (IPR) in India.
The evolution of industrial design protection is deeply intertwined with the development of human aesthetics and commercial manufacturing. The pressing need for a structured legal framework to protect industrial designs was acutely felt following the Industrial Revolution in Europe, which transitioned manufacturing from manual craftsmanship to mass factory production. Historically, the United Kingdom was among the pioneers in this domain, initially extending legal protection to textile designs to safeguard its booming fabric industries.
In colonial India, the journey of statutory design protection commenced with the enactment of the Patterns and Designs Protection Act of 1872. This was later supplemented by the Inventions and Designs Act of 1888. Subsequently, these laws were consolidated under the influence of the British Patents and Designs Act of 1907, leading to the promulgation of the Indian Patents and Designs Act, 1911. Following independence, as industrial capabilities expanded and global trade patterns shifted, the Parliament of India enacted the contemporary Designs Act, 2000, to align domestic law with contemporary international standards and address modern technological exigencies.
At the international level, significant milestones have shaped the cross-border recognition of design rights. Key international frameworks include the Paris Convention for the Protection of Industrial Property, 1883, which laid the groundwork for industrial property rights; the Berne Convention, 1886, for artistic aspects; the Hague Agreement Concerning the International Registration of Industrial Designs, 1925; and the landmark Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1994. India's compliance with the TRIPS obligations directly culminated in the drafting and implementation of the current Designs Act, 2000.
Under Section 2(d) of the Designs Act, 2000, a "design" is defined to mean only the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article. This application can be executed in a two-dimensional form, a three-dimensional form, or a combination of both. Furthermore, the application must be achieved through an industrial process or means—whether manual, mechanical, or chemical, operating separately or in combination. Crucially, these features must, in the finished article, appeal to and be judged solely by the eye.
An analysis of this definition reveals that statutory protection is confined strictly to those visual elements that enhance the external look of an article; it has no bearing whatsoever on the functional utility, mechanical efficiency, or intrinsic quality of the article. The statutory definition explicitly excludes any mode or principle of construction, as well as anything that is, in substance, a mere mechanical device. It further excludes trademarks (as protected under the Trade Marks Act), property marks, and "artistic works" as defined under the Copyright Act.
Derived from the statutory definition, a legally protectable design must exhibit the following core characteristics:
1. Outward Appearances: The Act explicitly protects "only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article". Therefore, the law safeguards the external aesthetic appearance that catches the customer's eye, rather than the internal mechanism or utility of the article. For the purpose of protection, the Act evaluates the external visual presentation and not the physical article per se. These external visual configurations may be applied in two-dimensional or three-dimensional forms.
2. Applied to any ‘Article’: According to Section 2(a), an "article" denotes any article of manufacture and any substance, whether artificial, partly artificial, or partly natural, and includes any part of an article that is capable of being made and sold separately. A design cannot exist in a vacuum; it gives a distinct visual identity to a physical object. Because the Act protects the article in its designed state, the design and the article are legally inseparable during registration. The underlying article must be something intended for delivery to a consumer as a finished product; consequently, large scale immovable buildings and permanent structures are generally excluded from the scope of "articles" under the Act. However, component parts of a larger machine or product qualify for registration provided they can be manufactured and commercialized independently.
3. Industrial Process or Means / Industrial Design: To qualify for registration, the design must be applied to the article via an industrial process. This criterion requires that the method of application allows for the large-scale reproduction of the design on multiple articles. This characteristic serves as the dividing line between an "industrial design" and a pure "artistic work". While the Designs Act protects industrial designs, the Copyright Act protects artistic works. Fine arts, unique paintings, and custom sculptures that are not meant for mass reproduction through industrial means are governed exclusively by copyright law.
For mass-produced industrial articles, the intersection between copyright and design protection is systematically governed by Section 15 of the Copyright Act, 1957. Under Section 15(1), if a design is formally registered under the Designs Act, 2000, the owner completely waives copyright protection for that work under the Copyright Act. Conversely, under Section 15(2), if a design is eligible for registration under the Designs Act but has not been registered, the copyright in that design automatically ceases the moment the article to which it is applied is reproduced more than fifty times by any industrial process by the owner or with their consent.
In the landmark case of Holland Company LP & Anr. v. S.P. Industries, 2017 SCC OnLine Del 9370, the Delhi High Court delivered a conjoint reading of the Designs Act and the Copyright Act. The Court held that where the drawing or design of an article is prepared specifically for industrial production, it falls squarely within the domain of a design registerable under the Designs Act. Although the author initially holds copyright under Section 14(c) of the Copyright Act, if the design is utilized to manufacture commercial articles via an industrial process more than fifty times, the copyright under the Copyright Act stands extinguished by operation of law, and protection can only be claimed if it is registered under the Designs Act.
4. Appeals to and is Solely Judged by the Eye: The design applied to an article must possess the capacity to attract or catch the attention of a potential buyer. These appealing features may comprise decorative surface elements (such as patterns or ornamentation) or structural components (such as shapes or configurations). The law protects only those designs that are visual and aesthetic in nature. Its primary market objective is to stimulate the visual senses of a consumer, inducing them to purchase the product based on its external appearance.
The formal registration of a design vests the design holder with robust statutory rights and protections. Under the Act, registration is mandatory; an unregistered design does not enjoy statutory remedies against piracy.
To be eligible for registration under the Act, a design must fulfill the following negative and positive covenants:
1. New or Original Design: The design must possess novelty or originality. A design is considered "new" if it has been invented or created for the very first time and was hitherto completely unknown to the public domain. The term "original" is defined under Section 2(g) as a design originating from the author themselves, including cases which, though old or known in themselves, are entirely new in their application to a specific class of articles. The design must be substantially distinct from pre-existing designs; ordinary trade variants or superficial modifications are insufficient to qualify. Novelty can thus be achieved by taking an existing design and applying it to a completely different, non-analogous class of articles for the first time.
In the landmark case of Bharat Glass Tube Limited v. Gopal Glass Works Limited, (2008) 10 SCC 657
The defendant claimed to be the proprietor of a new and original industrial design applied via a mechanical process to glass sheets, whereas the plaintiff contended that the design lacked novelty and had been prior-published. The Controller initially cancelled the registration, but the High Court set aside the cancellation. The Supreme Court of India upheld the High Court’s decision, ruling that the design was neither published before in India nor registered in any other country in that specific application. The Apex Court clarified that a "new or original" design means a visual configuration that has not been disclosed to the public or published anywhere prior to the date of application. It must represent an independent creation that has not been replicated by anyone else in that field.
Similarly, in the historic case of Gammeter v. The Controller of Patents and Designs & Anr., [AIR 1919 Cal 887],
The Calcutta High Court observed that a design does not need to be new or original in the absolute sense of never having been seen before by human eyes. The Court established that statutory novelty can exist in the application of an old, known form to a new, non-analogous practical use, provided the application is not merely an obvious or routine imitation.
2. Not Prior Published: The design must not have been disclosed or made available to the public anywhere in India or abroad prior to the filing date. If a design is not kept secret and undergoes prior publication, its novelty and originality are legally destroyed. In Niki Tasha India Pvt. Ltd. v. Faridabad Gas Gadgets Pvt. Ltd., [AIR 1985 Del 115]., The Delhi High Court affirmed that any public disclosure or commercial publication of a design prior to its formal registration completely defeats the proprietor’s statutory right to seek protection under the Act.
3. Should be Significantly Distinguishable: The design must stand out significantly from existing designs or known permutations of designs. A design that fails to demonstrate a clear visual distinction from known combinations cannot be registered, as it fails the test of statutory novelty. Prior publication and significant distinguishability serve as the primary determining benchmarks for novelty.
4. Absence of Scandalous or Obscene Matter: The design must not incorporate any scandalous, defamatory, or obscene content. "Scandalous" refers to matter that shocks the public conscience or attracts moral condemnation, while "obscene" refers to explicit indecency.
5. Not Contrary to Public Order or Morality: The commercial deployment or registration of the design must not violate public order, peace, or prevailing social morality.
Any person who claims to be the true proprietor of a new or original design that complies with the aforementioned criteria is entitled to file an application for registration. Under Section 2(j), the term "proprietor" encompasses:
I. The actual author and creator of the design.
II. Any person who has legally acquired the design or its manufacturing rights from the author for good and valuable consideration.
III. Any person upon whom the ownership rights of the design have devolved by operation of law or inheritance from the original proprietor.
Where a design is the product of collaborative intellectual input from multiple individuals, joint authorship can be legally claimed. Furthermore, under reciprocal international arrangements, foreign nationals and foreign entities can successfully register their industrial designs in India subject to specified statutory conditions under Section 44.
The proprietor must formally submit an application for registration to the Controller of Designs at the Patent Office. The application must affirm that the design is new, original, unpublished, non-scandalous, and compliant with public order. Upon receipt, the Controller refers the application to an official examiner to scrutinize whether the design meets all statutory parameters. The Controller then systematically evaluates the examiner’s formal report.
The application must be filed in the prescribed format, accompanied by the requisite statutory fees, and must include a brief statement outlining the specific novelty claimed by the applicant. A design can be registered in only one specific class at a time under the international classification system. In cases of ambiguity regarding the appropriate classification, the Controller retains the discretionary power to refuse registration, though any person aggrieved by such a refusal retains the statutory right to prefer an appeal before the High Court.
If the Controller uncovers any statutory deficiencies or technical discrepancies during examination, a formal written statement of objections is communicated to the applicant or their authorized patent/design agent. The applicant is legally obligated to rectify these objections or apply for an official hearing within a strict window of one month. Failure to respond within this prescribed timeframe results in the application being deemed abandoned or withdrawn by operation of law.
When the Controller is satisfied that the applicant has fulfilled all procedural and substantive requirements and no outstanding objections remain, the design is formally registered. Upon acceptance, the Controller directs that the registration details and the specific particulars of the design be published in the Official Gazette for public notification. Concurrently, the Patent Office issues a formal Certificate of Registration to the proprietor, which serves as prima facie evidence of ownership.
The registration of a design is not absolute and remains subject to revocation. Any person interested can file a formal petition before the Controller for the cancellation of a design registration at any time post-registration on any of the following specific statutory grounds:
1. That the design has been previously registered in India.
2. That the design was published or disclosed in India or any other country prior to its official registration date.
3. That the design lacks statutory novelty or originality.
4. That the design is fundamentally unregistrable under the provisions of the Act.
5. That the subject matter does not conform to the definition of a "design" under Section 2(d).
While the primary jurisdiction to cancel a registration rest with the Controller, any party aggrieved by the Controller's final order can file an appeal before the High Court.
In Joginder Singh v. Tabu Enterprises, 2005 (30) PTC 507 (Del),
The Delhi High Court ordered the cancellation of a registered design after clear evidence demonstrated that the exact visual configuration had been published and utilized in the market prior to the date of application. Conversely, in the aforementioned Bharat Glass Tube Limited v. Gopal Glass Works Limited, (2008) 10 SCC 657 case, The Supreme Court flatly refused to cancel the design registration because the challenging party failed to substantiate any violation of the statutory registration provisions.
Registration confers a bundle of exclusive legal rights upon the registered proprietor, enabling them to commercially exploit their innovation:
1. Copyright in the Design: Registration grants the proprietor exclusive copyright protection over the visual design. Under Section 2(c), this "copyright" means the exclusive legal right to apply the registered design to any article within the specific class in which it has been registered. This right is initially granted for a fixed term of ten years from the date of registration. The proprietor can extend this term by an additional five years by submitting an application to the Controller and paying the prescribed fee before the initial ten-year period expires. Consequently, the maximum total duration of protection is fifteen years, after which the design enters the public domain for free use. This statutory right under the Designs Act is separate and distinct from the artistic copyright granted under the Copyright Act, 1957.
2. Right to Apply the Design: The proprietor holds the absolute right to apply the design to any article or class of articles for commercial sale, or to execute any preparatory process to enable its application.
3. Right to Import for Sale: The design holder has the exclusive right to import any article belonging to the registered class that bears the protected design or an imitation of it for commercial sale.
4. Right to Advertise: The proprietor possesses the exclusive right to publish, exhibit, expose, or market the articles incorporating the registered design.
5. Right to Issue Licenses: The design holder can commercially exploit the property by licensing or assigning the design rights to third parties via written contracts, assignments, or licenses.
6. Right to Protect Design from Piracy: The proprietor is legally empowered to protect their design from unauthorized exploitation. In the event of piracy, the design holder has the statutory right to initiate infringement proceedings to recover financial damages and secure permanent injunctions.
The unauthorized exploitation or reproduction of a registered design during the subsistence of its copyright is legally termed as "piracy of a registered design". Any act that interferes with the exclusive rights of the proprietor without their express consent constitutes statutory infringement.
During the active term of the design registration, it is illegal for any person to perform the following acts without the written consent of the registered proprietor:
i) To Apply the Design to Any Article: To apply, or cause to be applied, the registered design or any fraudulent or obvious imitation of it to any article within the relevant class for commercial sale, or to do anything to facilitate such application.
ii) To Import for the Purpose of Sale: To import for commercial sale any article belonging to the class in which the design is registered that bears the design or a fraudulent/obvious imitation of it without the proprietor's consent.
iii) To Advertise Such Designed Articles: To publish, expose, or cause to be exposed for sale any article knowing that the registered design or a fraudulent/obvious imitation has been applied to it without authorization.
Infringement occurs when a third party applies the registered design, or a fraudulent or obvious imitation of it, to a competing product. The law distinguishes between these two concepts:
(1). Obvious Imitation: An "obvious imitation" is a replication where the resemblance to the original design is immediately apparent to the eye of an average observer. It represents a copy apparent to the eye, despite minor or superficial differences.
(2). Fraudulent Imitation: A "fraudulent imitation" is executed with a deliberate intent to deceive, with the full knowledge that another person's registered right is being violated. It may incorporate deliberate variations to disguise the copying, but it lacks independent innovation and relies on the core features of the registered design.
Malleys Ltd. v. J. W. Tomlin Pty. Ltd. (1961) 35 ALJR 352
The court affirmed that a "fraudulent imitation" involves a copy with changes that are apparent and not entirely insubstantial, but which have been deliberately introduced solely to mask the act of unauthorized copying.
In an action for piracy, the burden of proof rests on the plaintiff (the registered proprietor). The plaintiff must produce sufficient evidence to establish that their design is validly registered and that the defendant’s product constitutes an unauthorized reproduction or imitation of it.
The Designs Act, 2000, provides two alternative civil remedies to a registered proprietor. The plaintiff must elect between one of these two options at the time of initiating the suit:
i) Recovery of a Sum as a Contract Debt: Under Section 22(2)(a), a proprietor can claim a fixed sum from the infringer for every individual contravention. The statutory limit for a single contravention cannot exceed twenty-five thousand rupees, and the total aggregate sum recoverable for any one design cannot exceed fifty thousand rupees. This sum is legally recoverable as a civil contract debt.
ii) Suit for Damages and Injunction: Alternatively, under Section 22(2)(b), the proprietor can file a regular civil suit to recover actual damages sustained due to the piracy and seek an interim or permanent injunction to restrain the defendant from continuing the infringing activities.
A suit for design infringement must be instituted in the District Court having competent jurisdiction. The defendant is legally entitled to raise any ground available for the cancellation of a design registration under Section 19 as a substantive defence to the suit. However, under the proviso to Section 22, the moment the defendant raises any such defence challenging the validity of the registration, the District Court loses its jurisdiction, and the entire suit along with all interim applications must be transferred to the High Court for final adjudication.
M/s. Fun World and Resorts (India) Pvt. Ltd. v. Nimil K.K., FAO No. 151 of 2019 SCC OnLine Ker 25.
The Kerala High Court reiterated that the grant of a temporary injunction in an intellectual property dispute (here, involving copyright over an "Underwater Mobile Glass Tunnel Aquarium") is a discretionary, equitable remedy. Even if a prima facie case is presented, the court must balance it against commercial realities. Where an injunction would cause crushing financial disruption to a scheduled public exhibition, the court may protect the balance of convenience by allowing the event to run, provided the defendant maintains audited, transparent accounts of all revenue collections to secure future damages
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