This article has been written by SaiRam Kumar Vongala pursuing a Diploma in Advanced Contract Drafting, Negotiation and Dispute Resolution from LawSikho.
This article has been edited and published by Shashwat Kaushik.
Introduction
In the era of influencers and Digital marketing, appearance is a crucial aspect and an essential part of a product. It defines everything; it determines a product’s marketability & sales, along with the consumers’ appeal to the product. To protect the intellectual property rights associated with designs, a legal framework, the Designs Act, 2000, was brought in by Indian legislation that provides a mechanism for the registration and protection of designs, ensuring that creators and innovators receive due recognition and reward for their efforts.
Definition
Section 2(d) of the Designs Act, 2000, provides the definition of ‘design’. It states that design means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical, chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.
Essentials and prohibitions
As per Section 4 of the Designs Act, 2000, it prohibits certain designs from registration, such as:
- Is not new or original.
- Has already been disclosed to the public in tangible form before the filing date.
- Is similar to the known designs, i.e., not distinguishable from known designs.
- Comprises scandalous or obscene matter.
It is crucial for the designs to adhere to and comply with the following:
Originality and novelty
The primary aspect of a design’s registration is that it must be unique and original. A novel design has the quality of being new or original. It should not have been disclosed to the public anywhere in the world prior to the filing date in any tangible form.
In the landmark case of Whirlpool of India Ltd vs. Videocon Industries Ltd. (2014), the Bombay High Court delved into the crucial aspects of novelty and originality in the context of design registrations. The court’s decision upheld Section 4 of the Designs Act, emphasising that a mere imitation of existing designs cannot qualify for registration and subsequent protection under the law.
The case involved a dispute between two prominent companies, Whirlpool of India Ltd. and Videocon Industries Ltd., over the registration of a design for a washing machine. Videocon had applied for the registration of a design that bore a striking resemblance to an existing design owned by Whirlpool. Whirlpool challenged the registration, arguing that Videocon’s design lacked novelty and originality and, therefore, did not meet the requirements for protection under the Designs Act.
In its judgement, the Bombay High Court thoroughly analysed the provisions of Section 4 of the Designs Act, which outlines the conditions for the registration of designs. The court held that the primary purpose of design registration is to encourage creativity and innovation in industrial designs, and that granting protection to unoriginal designs would undermine this objective.
The court emphasised that a design must possess both novelty and originality to be eligible for registration. Novelty refers to the requirement that the design must be new and not previously published or used in India or any other country. Originality, on the other hand, pertains to the requirement that the design must be the result of the independent creative effort of the designer, and not merely an imitation or adaptation of existing designs.
Applying these principles to the case at hand, the Bombay High Court found that Videocon’s design lacked both novelty and originality. The court observed that Videocon’s design was substantially similar to the existing design owned by Whirlpool and that it did not exhibit any distinctive or unique features. The court concluded that Videocon’s design was merely an imitation of the existing design and, therefore, did not meet the threshold of originality required for registration.
The decision of the Bombay High Court in Whirlpool of India Ltd. vs. Videocon Industries Ltd. has significant implications for the protection of industrial designs in India. It reinforces the importance of originality and creativity in design creation and emphasises the need to prevent the registration of unoriginal designs that lack novelty. The judgement serves as a valuable precedent for future cases involving design registrations and helps uphold the integrity of the design protection system in India.
Protection of visual appearance
The act merely protects the visual appearance of the articles and not the functional aspects of them. As per Section 2(d), design means only the features of a shape, configuration, pattern, composition of lines and colour applied to the article.
The Coca-Cola Company vs. Bisleri International Pvt. Ltd. & Ors. (2009)
The Coca-Cola Company vs. Bisleri International Pvt. Ltd. & Ors. (2009) is a landmark case in Indian intellectual property law that established the importance of visual appearance in determining design infringement. The case involved the alleged infringement of the Coca-Cola Company’s iconic bottle design by Bisleri International Pvt. Ltd., a leading Indian beverage company.
Background of the Case:
The Coca-Cola Company has used its distinctive bottle design, commonly known as the “contour bottle,” since 1915. The bottle’s unique shape and design have become synonymous with the Coca-Cola brand and are recognised worldwide. In 2007, Bisleri International introduced a new bottle design for its mineral water product that bore a striking resemblance to the Coca-Cola contour bottle.
Legal proceedings:
The Coca-Cola Company filed a lawsuit against Bisleri International, alleging infringement of its registered design. The Delhi High Court heard the case and was tasked with determining whether Bisleri’s bottle design constituted an infringement of Coca-Cola’s design.
Key considerations:
The court considered several factors in its analysis, including:
- Visual similarity: The court compared the visual appearance of the two bottles and found that they shared significant similarities in terms of shape, contour, and overall design.
- Functionality: The court acknowledged that both bottles served the same functional purpose of holding and dispensing beverages. However, it held that the distinctive shape of the Coca-Cola contour bottle extended beyond its functional purpose and had acquired a secondary meaning associated with the Coca-Cola brand.
- Consumer confusion: The court considered the likelihood of consumer confusion resulting from the similarity between the two bottle designs. It opined that consumers might mistakenly believe that Bisleri’s mineral water was affiliated with or endorsed by Coca-Cola, leading to potential damage to the Coca-Cola brand’s reputation and goodwill.
Judgement
The Delhi High Court ruled in favour of The Coca-Cola Company, holding that Bisleri’s bottle design constituted an infringement of Coca-Cola’s registered design. The court granted an injunction restraining Bisleri from using the infringing design and awarded damages to The Coca-Cola Company.
Significance of the case
The Coca-Cola Company vs. Bisleri International Pvt. Ltd. & Ors. case set a precedent for design infringement cases in India. It emphasised the importance of visual appearance in determining design infringement and established that a product’s design can acquire secondary meaning and become associated with a particular brand.
The decision served as a reminder to businesses that they must exercise caution when designing their products to avoid infringing on the intellectual property rights of others. It also highlighted the need for effective protection of design rights to safeguard the interests of innovators and creators.
Applicability of design
Section 2(d) outlines that for a design to be registered under the act, it must be applied to a tangible product or an article. The Act ensures that designs are tangible and capable of being reproduced in industrial or commercial contexts, contributing to their practical utility and commercial significance.
In the landmark case of Titan Industries Ltd. vs. M/S Ramkumar Jewellers (2012), the Indian court provided significant insights into the interpretation of the Designs Act, 2000. The court’s ruling centred around the requirement for designs to be applied to tangible articles in order to be eligible for protection under the Act. This decision has far-reaching implications for designers, manufacturers, and consumers alike.
The court emphasised that the application of a design to a tangible article is an essential element in determining its registrability and the scope of protection afforded under the Act. This means that designs must be embodied in a physical form, such as jewellery, watches, or other consumer goods, in order to be considered for registration and subsequent protection.
The court’s ruling underscores the Act’s focus on tangible articles as the subject matter of design registrations. This approach aligns with the international understanding of design protection, which typically encompasses the application of designs to products or articles that can be manufactured and sold. By requiring designs to be applied to tangible articles, the court ensures that the Act remains consistent with global design protection standards.
The decision also provides clarity and certainty for designers and manufacturers seeking to protect their designs. By establishing a clear threshold for design registration, the court helps to prevent frivolous or speculative registrations that may not result in the production of tangible products. This, in turn, promotes innovation and encourages designers to create new and unique designs that can be translated into commercially viable products.
Furthermore, the court’s ruling recognises the importance of the relationship between design and functionality. By requiring designs to be applied to tangible articles, the court ensures that designs are not merely abstract concepts but are instead linked to real-world products that can be used and enjoyed by consumers. This approach helps to strike a balance between protecting the intellectual property rights of designers while also ensuring that consumers have access to a wide range of innovative and functional products.
Scandalous or obscene matters
The design must not be prohibited under Section 4 of the Act in the case of having an obscene or obscene nature in the design of the article. It should adhere to the moral grounds of the general public and shall not be opposed by the government or any authorised authority or institution.
Myntra has changed its logo after receiving a complaint from Naaz Patel, who is the founder of a Mumbai based NGO- Avesta Foundation, alleging that the Myntra logo was aggressive and resembled a naked woman. The complaint was filed and lodged with the State Cyber Police of Maharashtra.
Mode of registration of designs
The registration process for designs under the Designs Act, 2000, in India involves several key steps. It begins with the filing of an application with the Designs Office, which operates under the Controller General of Patents, Designs, and Trademarks.
As outlined in Section 5(1) of the Act, the Controller has the authority to register a design if an applicant meets specific criteria. The applicant must claim to be the proprietor of a new or original design that has not been previously published in any country. Additionally, the design should not be contrary to public order or morality.
To initiate the registration process, an applicant must submit a duly completed application form, along with the prescribed fees. The application must include details of the design, such as its description, drawings, or images, as well as information about the applicant, including their name, address, and contact details.
The Design Office examines the application to ensure that it complies with the requirements and formalities set forth in the Act. If the application is found to be in order, it is published in the Designs Journal, giving an opportunity for third parties to oppose the registration within a specified period.
If no opposition is filed or if any opposition is successfully defended, the Controller proceeds to register the design. The registration is valid for a period of ten years from the date of registration and can be renewed for two further consecutive periods of five years each.
Throughout the registration process, it is crucial for applicants to seek the guidance of experienced professionals, such as patent attorneys or design experts, who can assist with drafting the application, handling any objections or oppositions, and ensuring compliance with the provisions of the Designs Act, 2000.
Identification of the design
Before filing an application, one must ensure that the design complies with Section 4 of the Designs Act, 2000, after which a representation of the design needs to be prepared. i.e., a representation in terms of a similar drawing, photograph or tracing of the design to be prepared. After which, the design shall be identified and classified from the classes & sub-classes of goods listed in the Third Schedule of the Designs (Amendment) Rules, 2008.
Conducting research
Before filing an application with the controller, it should be ensured that such a design has not already been registered. Any such details of such designs, which are registered, can be easily found by searching the Patent Office Website.
Application for registration
If no prior registration exists, an application for the design can be made either online or offline.
For an online application, one can visit the site here and apply for the same.
For an offline mode of application, the patent offices are located in Delhi, Mumbai, Chennai and Kolkata, to which the offline applications must be sent, along with a brief statement of novelty claimed for the design, to be included aside from the representation.
This application shall be in Form 1 and in four copies, along with the fee of Rs.1000/-
Examination
The respective application that was filed will be sent to examination, upon which an examination report will be prepared. If the Controller is of the opinion that the design satisfies the conditions as per Section 4 of the Designs Act, 2000, will register the design.
Objection
In case of an objection, the Controller may provide a 3-month time period to address the issues prevalent, an applicant may also request a hearing at this stage in many cases.
The application shall be abandoned if the applicant does not complete the registration procedure for a period of 6-months from the date of application.
Register of designs
At the instance of acceptance for the designs applied, all the information regarding the same, including its number, class, reciprocity, and any such matters that would affect the validity and proprietorship of the design, shall be entered into the Register of Designs.
Cancellation of registration
Section 19 of the Act states that cancellation of registration of a design happens if:
- Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:
- that the design has been previously registered in India; or
- that it has been published in India or in any other country prior to the date of registration; or
- that the design is not a new or original design; or
- that the design is not registrable under this Act; or
- it is not a design as defined under clause (d) of section 2.
- An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.
Certificate of registration
As per Section 9 of the Act, the Controller shall grant a Certificate of registration to the owner or Proprietor of the Design when registered.
Transfer of registration
Section 30 of the Designs Act, 2000, deals with the transfer of the proprietorship or rights in a registered design. It outlines the procedure for transferring the rights in a registered design from one person (the transferor) to another person (the transferee).
It states that if a person becomes entitled by assignment, transmission or other operation of law to the copyright in a registered design, he may make an application in the prescribed form to the Controller to register his title, and the Controller shall, on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of such design and shall cause an entry to be made in the prescribed manner in the register of the assignment, transmission or other instrument affecting the title.
Term of the design
The owner of the registered designs would be granted copyright protection for their design, which would last for a period of 10 years from the date of registration. This copyright protection provides the owner with exclusive rights to the design, including the right to reproduce, distribute, and publicly display the design. If the owner wishes to extend the copyright protection beyond the initial 10-year period, they can do so by paying the prescribed renewal fees within the stipulated time frame. This renewal process allows the owner to extend the copyright protection for an additional period of 5 years, effectively giving them a total of 15 years of exclusive rights to the design.
It is important to note that the renewal fees must be paid on time to maintain the copyright protection. If the owner fails to pay the renewal fees within the stipulated time frame, the copyright protection will expire, and the design will enter the public domain, meaning that anyone can use, reproduce, or distribute the design without permission from the original owner.
The renewal process for registered designs provides owners with the opportunity to extend their exclusive rights to the design and continue to benefit from their creative work. By paying the prescribed renewal fees, owners can ensure that their designs are protected for a longer period of time, allowing them to fully exploit the commercial potential of their designs and maintain control over how they are used and disseminated.
Rights inferred by registration and infringement
The registration of a design provides certain exclusive rights to the owner or proprietor of the registered design. These rights include the right to prevent others from making, importing, selling, or using the design without authorization. Section 22 of the Designs Act, 2000, delineates the rights conferred by the registration of a design and specifies the acts that constitute infringement of those rights.
Infringement of a registered design occurs when someone else uses the design, or a substantially similar design, without the proprietor’s consent. Section 22(4) of the Act provides remedies such as damages, injunctions, and seizure of infringing articles to address such violations.
Exceptions
Though there are various methods outlined for the infringement and remedies for such infringement, there are, however, certain exceptions, as outlined in Section 22(3) of the Act, to such infringements, such as:
- Acts done privately and for non-commercial purposes
- Acts done for experimental purposes
- Acts of reproduction for the purpose of teaching or instruction
Conclusion
The Designs Act, 2000, provides a legal framework for the registration and protection of designs in India. By securing exclusive rights by owners or proprietors and offering remedies against infringement, the Act encourages creativity and innovation among various industries. Through an efficient registration process and effective enforcement mechanisms, it facilitates the growth of a vibrant design ecosystem, contributing to economic development and cultural enrichment. As demonstrated by relevant case laws, adherence to and compliance with the Act’s provisions promotes clarity and fairness in design protection, benefiting both creators and consumers alike.
References
- https://ipindia.gov.in/designs-act-2000.htm#9
- https://indiankanoon.org/doc/188051985/
- https://indiankanoon.org/doc/109517976/
- https://indiankanoon.org/doc/181125261/
- https://search.ipindia.gov.in/designsearch
- https://online.ipindia.gov.in/eDesign/goForLogin/doLogin
