This article is written by Sneha Singh, from Ram Manohar Lohia National Law University. The article discusses the development of the Design Act in India with the various provisions, advantages, disadvantages and the requirements attached to it.

Introduction

The design which one sees produces a great impression on the eyes of the viewer and so it is very important to protect the designs from being copied. The relevance of The Design Act, 2000 came to my mind when one of my distant cousins who had recently opened an industry was hit hard by infringement issues. She got a design made for the packets of the biscuits of her industry. But she didn’t get it registered at that time and started using it. Later on, when she went to get it registered she came to know that the design is already registered which is the same as her’s by someone else. The other party also claimed infringement of the design. This happened because she was not well aware of the rights which are related to the Design Act and what all needs to be done. So it is important to understand what the Design Act exactly is and how one can protect one’s design under the ambit of this Act.

Meaning and definition

Design is defined under Section2(d) of the Design Act as any feature which consists of shape, figure, a configuration which is applied to an article and is made by an industrial process be it mechanical, chemical, manual, separate or combined which appeal to in the finished article and is judged solely by the eyes and it does not include any mode of construction or anything unjust a mechanical device and anything which is a part of a trademark or artistic work.

The evolution of design protection laws through judicial pronouncements

In India, the need for protection of design was felt in the 18th century and so the Patterns and Design Protection Act was introduced in 1872. This Act gave the exclusive right of making, selling of the designs to the inventors for a short duration of time.

The act was followed by an Inventions and Design Act, 1988 which was replaced by the British Design and Patent Act, 1907 which formed the basis of Indian Patents and Design Act, 1911. After this, the Patent and Design rules were formed in 1933 for the regulation of practise registration and carrying into effect the provisions of the Act.

When the Design Act, 2000 came into effect the main change was regarding the exclusion of artistic works as defined in Section 2(d) of the Copyright Act, 1957 from the definition of term design. There were many conflicts regarding giving protection to the artistic works under the ambit of the Design Act.

This issue was explained by the Delhi High Court in the case of Microfibers Inc. v. Girdhar Co. & Another that the artistic works which are excluded from protection under the Design Act are in itself a piece of art, for example, a painting and the artistic work which are to be used in industry is not excluded from the ambit of protection provided under Section 2(d) of the Design Act.

In the case of Bharat Glass Tube Ltd. v. Gopal Gas Works, the Court emphasized the object of the Design Act which is to protect and reward the inventor of the design for his hard work. The Court further held that the protection is given to advance the industries. 

A conflict with the international registration of industrial designs in India happened for the first time in the case of Disney Enterprises Inc. v. Prime Housewares Ltd. where the Disney characters Mickey and Minnie were manufactured by an industry based in Mumbai by the name of Prime housewares limited. The case was filed regarding trademark infringement and the main contention they held that they had international registration of their designs. The Court held that the trademark of the Mumbai based company was protected but not their designs and were ordered to deliver all the material which would infringe the rights of Disney to be destroyed by them.

The Act and the design rules of 2007 govern the laws related to design in India. There was an amendment in the Act and the subsequent rules which came into effect from June 2008. In 2009 the India Design Council was constituted by the Central Government under the Department of Industrial Policy and Promotion (DIPP).

To know more about Design  please visit 

Nature of copyright protection in designs

Section 11 of the Design Act mentions about copyright when a design is registered. Whenever a design is registered the inventor of such design shall have the copyright over it for the next ten years subject to other provisions of the act.

The copyright over the design can be further increased for five years if before the expiration of the term of ten years application for the extension of the period of copyright is made in the prescribed manner to the Controller and the prescribed fees are paid.

Key provisions of the Design Act, 2000

The key provisions of the Design Act are as follows:

• The scope of the definition of the terms article, design and introduction of a definition of original has been enlarged.
• India is a member of the Paris Convention of the World Trade Organisation and all the signatories of the convention are allowed to claim priority rights.
• Earlier before the Act of 2002, the classification was made based on the material used to make it but later on, after the Act of 2002 the Locarno classification (it is an agreement which helps in the registration of design and divides them into different class on basis of their function) has been adopted and classification is made based on the subject matter of the design.
• With the introduction of “Absolute Novelty,” it has been possible to decide the novelty of any article based on prior publication.
• Provision has been made in the new law for the restoration of designs which have lapsed.
• The Act provides for the transfer of cases from the district courts to the high courts where the jurisdiction lies. This option is only available in cases where the validity of any registration is challenged by someone.
• It also mentions about the delegation of powers of controllers to other controllers and the statutory duties of the examiners is also provided.
• The secrecy period of two years of design is also revoked.
• Under the Act, the quantum of punishment in case of any infringement of a registered design has also been enhanced.
• To keep a watch and regulate anti-competitive practices in contractual licenses provision for the avoidance of certain restrictive conditions are also there.
• In the new enactment, there are laws which tell about the substitution of the application before registering a design.
• Registration is to be considered when a new license is to be brought under the public domain. Anyone can inspect it by getting a certified copy of the same.
• There are provisions in the new Act for the maintenance of a register on the computer as Register of Designs.
• The appeal against the orders of the Controller is not to be made to the Central Government but instead to the High Court.
• The cancellation proceeding to be held in the front of the Controller in place of the High Court and the additional ground is to be provided in a cancellation proceeding.

Requirements for design registration

To protect the hard work of the inventor of the design it is very essential to get it registered. For the proper registration of the design, there are certain requirements which should be met.

Who can register?

Any person can register for a certain design which is original and new, who claims to be the proprietor of that design and it does not fall under Section 4 of the Design Act. Any person mentioned above includes in its ambit an individual, any firm,  any partnership firm, company or an agent on behalf of the proprietor can also register. 

Eligibility criteria 

For a design to be registered there are certain qualifications which should be met. They are:

It should be new and original

New and original in this context means that the article is produced for the first time and it was unknown until then. In the case of Gammeter v. Controller of Patents and Designs, the Calcutta High Court held that the design for which the novelty is being claimed should be placed side-by-side with the other design and then decided.

It should not be published earlier

The design should not be published earlier for which the registration is being claimed. It should not be publicly accessible which means that it has not been made available to the public by registration or some other way.

It should not be contrary to morality and order-

The design must not be contrary to morality and order or prohibited by the Government of India or any institution. The design which is capable of disrupting the public order and peace is not considered capable of registration as mentioned under Section 5 of the Act.

Advantages and disadvantages of the Act

The advantages and disadvantages of the Act are as follows-

Advantages

• When one registers a design he can protect it from being infringed by another person.
• Design rights are available at a low cost and its review is simple and fast which helps companies which have to protect designs of a wide variety of products. Like for example, the toy manufacturers who have been quick in protecting variations of dolls and other accessories.  
• As we know copyright can protect the code of the companies but for the look, they can be dependent on design rights. In this way, it protects its digital products.
• It is also very helpful for fast-moving industries like the fashion industry. The pace with which the design rights provide a remedy for infringement can help the designers in protecting their products in the key markets.

Disadvantages

• The bulk of designs for registration are easily rejected only if there is a small procedural issue while only a few are due to substantive criteria.
• The protection which the Design Act provides is for a meagre period of 15 years so the companies would rather choose to get trademark or copyright depending on their article which protects for a longer duration.
• If one does not specially apply for design rights in the other countries they are only limited to the UK, unlike copyright.
• If a person makes a certain design only with a slight amendment to the original one he can also get protection.

Issues and challenges

The key issues and challenges related to the Design Act can be listed as follows-

• There is a lack of awareness regarding the online registration process.
• The formalities for the registration are way more than needed.
• The registration time to be reduced to six months and also there is lack of proper status update.
• There is a need for speeding up the process as there is the demand for the final product and market regulation.
• There is a lack of trust on the legal implications as the enforceability is weak and most of the infringements go unnoticed.
• Almost 98% of the designs are protected under the Designs Act but then also they get copied by the small firms.

The interlocutory injunction under the civil procedure code 

A person can seek an interlocutory injunction under CPC Order 39 Rules 1 and 2. The principle is the same for both patents and designs when it comes to granting of an interlocutory injunction. The person has to make out a prima facie case and show that the balance of convenience rests in his favour. 

The claim for interlocutory damages will not easily succeed if there is an adequate remedy available. In the case of Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd., the Court held that they cannot be granted interlocutory injunction unless there is a probability of them succeeding after the trial. Interlocutory Injunction won’t be granted if there are chances of attacking the validity of the registration. An interlocutory injunction can also be denied if the defendant gives an undertaking to check on whether he is a person of substance and he is ready to give relief to the plaintiff which he requires under the undertaking. 

In the case of Bansal Plastic Industries v. Neeraj Toys Industries, the Court held that granting someone temporary injunction is to be decided by the Court according to its discretion by following reason and sound principles.

Landmark judgements

Reckitt Benckiser (India) Ltd. v. Wyeth Ltd. 

Facts– In this case, the issue was regarding the registration of S-shaped spatulas. The defendant in this case i.e. Wyeth Ltd. claimed that the appellant’s design was not original as it has already been registered in a foreign country before its registration in India. And also there was the suppression of facts regarding the prior registration in a foreign country.

Judgment- The Court held that if it can be shown that the design was disclosed anywhere in India or a foreign country by means mentioned under Section 4(b) then the registration is India would be considered to be cancelled and it can be sought as a defence against alleged infringement under Section 22(3).

Sree Vishnu Bottles v. The State Of Tamil Nadu

Facts- This case deals with the rights of re-sellers. The petitioners have a business of buying empty beer bottles and paper from Tamil Nadu and transporting it to Karnataka and Madhya Pradesh. They have been doing this business smoothly for 30 yrs without any interruption in crossing borders until recently when they were stopped. And the reason for the disruption is that some bottles were registered as designs under the Designs Act. They were held liable for piracy of registered designs under Section 22 of the Design Act. They said that no one can be stopped from transporting empty bottles in such fashion when even there is no injunction from the Court.

Judgment- The High Court held that the relief they sought was vague and no blanket order can be passed by the Court.

M/s S K Industries v. Dipak Ghosh

Facts- In this case, the Plaintiff claimed that there was a certain cup in which jelly was being packed and marketed and the defendant cannot use the design.

Judgment- In this case, the Court held that the cup which the plaintiff used has no novelty and was just any regular cup with no originality in its shape or dimension. The cup is the same as manufactured by most of the manufacturers for storing something. 

M/S.Whirlpool Of India Ltd. v. M/S.Videocon Industries Ltd.

Facts– In this case, whirlpool had got two signs registered. Later on, Videocon got a design registered which had the same features, configuration, shape as the Plaintiff i.e. whirlpool and was evident at the first look to be a replica. Videocon contended that they had already registered so they can’t be held liable for infringement and also for passing off which is not applicable for registered design.

Judgment- The Court held that there was a similarity between the design of the plaintiff and the defendant. The defendant i.e. Videocon was held liable for infringement and passing off of the Plaintiff’s design.

Rajesh Masrani v. Tahiliani Design Pvt. Ltd.

Facts- In this case, Tahiliani Design Pvt. Ltd. has made certain drawings etc. while making garments and got it registered as artistic work under the Copyright Act, 1957. It is claimed that there is infringement by the other party by imitation of some of the drawings.

While the other party held that the drawings were not registered under the Design Act so he had no right to claim remedy.

Judgment- The Court held that it is not necessary to register any work nor it is a condition which is necessary to be fulfilled for maintaining a suit for infringement of Copyright

Conclusion

A design is protected if it is the original work and has novelty. As the design appeals to the eyes and increases the marketability of any product it is necessary to protect it from copycats and to do the Design Act plays a very crucial role. There are various advantages and disadvantages attached to it too so the inventor must keep the points in mind and follow the procedures for the protection of his article.

If you want to know more about the Design Act and the registration process you may click here.

References

• https://blog.ipleaders.in/difference-between-shape-trademark-and-design-registration/

• https://blog.ipleaders.in/salient-features-design-act-2000/#:~:text=It%20is%20an%20Act%20to,and%20is%20statutory%20in%20nature

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