This article is written by Sourav Jain, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from Lawsikho.com. 

In today’s world almost everything is observed by design. Companies need stronger design capabilities to stand out from the crowd. A good design attracts customers attention instantly. Some of the iconic designs are the swiss army knife, google home page etc. 

Designs can be in form of drawings, graphics, art etc. and can be created by professionals like architectures blueprints for any property or say interior designs and any engineered designs, or any product design of mobiles etc.

In India previously the designs law was governed by the Designs Act 1911. Thereafter considerable progress in the field of technology and science is seen which made it more efficient to ensure effective protection to registered design. Today with the Industrial process it become possible to give product a unique shape. Manufacturers are taking keen interest in product design they produce. They do proper research and invest substantial capital. Currently, design laws are maintained by the Design Act, 2000. The new Act has come into existence on 25.05.2020. This Act complies with the article 25 and 26 of TRIPS agreement which stresses on designs protection. 

Meaning of design under the design Act, 1911

Design refers to the configuration, features of shape, pattern applied to any article by any means or industrial process, whether manual, mechanical or chemical, separate or combined. It is clear from the definition that design means the features of shape, configuration, pattern or ornament applied to an article and not the article itself. The design makes the article attractive for sale and is part and parcel of the article itself. The design must be such within the finished article the features of it “appeal to and are judged solely by the eye”.

Criteria for design registration in India

(i) It should be novel and original.

(ii It should be applied to a functional article.

(iii)It should be visible in a finished article.

(iv)It should not be previously registered and published in India.

Who can apply for design registration?

Any Person such as Partnership firm, Corporate body, small entity, Legal representative can apply for design registration. A Power of Attorney is filed if represented through an agent. The application can be prepared by the applicant or with the help of attorneys. The list of agents is also mentioned in the official website of IP India website. 

Infringement of design 

Designs are also suspectable to infringement like any other Intellectual Property. It is a fraudulent method to make use of a registered design without permission from the owner of the design. This fraudulent method is called infringement and the owner of the design can file a suit from the infringer and recover a sum and also asks the infringer to stop using the registered design. Under such case the Court need not directly compare the two articles but look them from the point of view of customer and check whether it is creating any confusion in the minds of the consumer. A fair look will be seen by the Court of law and judgement will be given after considering all circumstances.

Case study Crocs vs Bata for Design Infringement

This was the case filed by the U.S Company Crocs Incorporation against Bata India, Liberty Shoes, Relaxo footwear, Action shoes in the Delhi High Court. Crocs filed case against these shoe manufacturers alleging infringement of registered design. These designs are related to perforated and non-perforated designs. Crocs claims that he is the owner of the registered design and that since the defendant of the case where imitating the design of the footwear of Crocs. Whereas on the other hand defendants had contended there could not be any piracy as the disputed design registration is invalid. The defendant has argued that Crocs registered design when it was registered were not a new or original design and the design concerning which Crocs claims exclusive entitlement was in public domain already. The defendant claim is based on an internet download page from the website of the company only shoes which looks similar to Crocs shoes and it is existing on the concerned website since December 2002 and the registration done by Crocs for the design in India and U.S was done in the year 2004. 

Decision

Court made the observation of this case based on the following two cases: 

1. Whether the crocs design was novel or not. 
2. Whether the crocs design was in the public domain before registration or not.

To answer the first question the High Court in this case stated that what is the meaning of design being new or original so that it becomes capable of being registered under the act and for Crocs to claim relief alleging piracy of the registered design. For this the Delhi High Court referred to the High Court’s recent judgement wherein it was held that mere variation to existing products which do not result in requisite amount of newness or originality so it cannot be considered as innovation having newness and originality for being granted monopoly.

Also the Court thought that it does not take effort larger than an ordinary effort to create a different footwear than the known type of footwear to be an innovation or a creation having such requisite newness and originality for that creation to become an intellectual property rights as a design in terms of the design act and to answer the second question the Court noted that the defendants evidence to show that the Crocs disputed design existed before its registration therefore once the design of the footwear of the Croc is found in public domain as shown in the website of the Only shoe then the registration granted to Croc is faulty and is liable to be cancelled. In such scenario the Crocs cannot seek benefit of its registered design for seeking relief in this present case. Thus, the Crocs was unsuccessful in a suit filed for design infringement as the design on the shoe was found to be not new or original. This judgement comes as a relief to manufacturers and companies who use publicly available designs but are hampered by big corporation who use all the trick in the law book to get injunction.       

The court favored with the Defendant that the plaintiff besides the design has not been able to show any extra features, which is used as a trade mark. The court held that a registered design cannot constitute a trade mark; however, if there are features other than those registered as a design and are shown to be used as a trade mark and concerning which goodwill has been acquired, it is only those extra features which can be protected as a trade mark.

Duration of registered design

The total period of validity under the Indian Design Act,2000 is 15 years. Initially, the rights over the design could be exercised for a period of 10 years by a particular originator from the registration date. It is extendable by 5 years. This renewable application must be filed before the expiry of 10 years. This registration will give the owner exclusive rights to sell, import or make the articles and in the process of any infringement it can take legal actions against the infringer.

Advantages of design registration in India

• The design makes an article or ornament very appealing and attractive which enhances the commercial value and increases the marketability of the product.
• If a design is protected the author has the right to sue the entity or say a person who is copying the design. This will guarantee the exclusivity of the design to the owner.
• The registration of design acts as the best alternative to prove the validity of certain rights.
• The designer adds something unique and creative to its products which adds certain individual characteristics to the designs and helps in forming its place between the products in the competitive market.
• An article having a good design can be solved faster as compared to an article without a design. 
• The design owner can exploit its design in the market in many ways.
• The design owner can sell its design at a certain sum of money in the market.

Conclusion

There is no statutory protection for unregistered design and is suspectable to copying. So, it is better to obtain protection for your design to ensure effective protection. India has an efficient managed regulatory for the protection of designs. The procedural formalities are cost-effective, simple, and time-constrained. However, one should follow procedural requirements efficiently because most of the applications get rejected on procedural issues and also because of a lack of fulfillment of substantive criteria.

The Designs Act safeguards and protects the original designs and designs which are novel. Both of these are very essential for getting that design registered and to get copyright over it. The designs appeal to the eyes so it is very important to protect it from copycats. The investor must follow wisely for the protection of his article.

References

• https://www.mondaq.com
• http://www.ebc-india.com/lawyer/articles/94v2a3.htm

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