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This article is written by Divyanshi Singh, of Symbiosis Law School, Noida. This article discusses the authorities and legislation related to the protection of designs in India.

Introduction

Industrial design protection in India is controlled by a dynamic regulatory framework that is associated with technological advances and accompanying international developments. The Designs Act, 2000 which repealed and replaced the Designs Act, 1911 establishes the statutory basis for the protection of designs and has been in effect since May 11, 2001. The Act not only provides for minimum standards of protection for industrial designs (as envisaged in the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)) but also adheres to international trends in design administration.

Legislations on design

What are designs

Design rights safeguard unique elements of a product, such as shapes, configuration, colour combination, surface ornamentation, line composition, or patterns, whether in two dimensions, three dimensions, or both dimensions, that give an aesthetic element rather than a practical attribute. The Designs Act, 2000 (hence referred to as the ‘Act’) and its accompanying Designs Rules, 2001 govern the submission, prosecution, and registration of an industrial design in India.

The Act was created to provide the bare minimum of design protection under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) while adhering to international protection standards. According to the Act, a ‘design’ is any feature of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, whether in two dimensional or three dimensional or both forms, by any industrial process or means, whether manual, mechanical, or chemical, separate or combined, that appeal to and are judged solely by the eye in the finished article.

Any person (natural or legal) claiming to be the owner of a new or original design may apply for registration of such design.

Design Act, 2000

Previously, this Act was governed by the Design Act of 1911. The Design Act, 2000 was enacted in order to bring the Design Act in line with international legislation. As a result, the Design Act of 2000 currently governs design laws. It is an Act to consolidate and reform the law governing design protection. It was published in the Indian Gazette and went into effect on May 12, 2000. This Act is a complete code in and of itself, as well as a formal act. It covers the entire country of India. 

The salient features of the Design Act, 2020

  • India is a signatory to the Paris Convention of the World Trade Organization. It has ratified the Patent Cooperation Treaty, which permits all parties to claim priority rights.
  • The Locarno categorization, which is based only on the subject matter of design, was introduced by the Act of 2000. Previously, the classification was formed on the basis of the material utilised to manufacture that material.
  • With the addition of “Absolute Novelty,” it is now possible to judge the novelty based on the prior publication of any article. This is also true in other countries.
  • According to the new law, a design that was not present in the prior enactment can be restored. A design’s registration can now be reinstated.
  • Where jurisdiction exists, the Act empowers district courts to transfer cases to the high courts. It is only feasible if a person is contesting the legality of a registration.
  • The new Act also mentions laws about the delegation of controller functions to other controllers and the duty of the examiner.
  • In the event of an infraction, the Act increases the severity of the penalty.
  • A registered design’s two-year confidentiality is likewise withdrawn.
  • Provisions for avoiding certain restrictive requirements are also included in order to govern anti-competitive practices in contractual licenses.
  • When a license is brought into the sphere of public records, especially when done openly, the registration is likely to be taken into account. Anyone can obtain a certified copy of it and inspect it.
  • The new enactment also mentions the provisions governing the substitution of an application prior to registering a design.
  • The district court now has the authority, under new laws, to transfer matters to the high court where the court has jurisdiction. This is only possible if the individual is contesting the legitimacy of the design registration.
  • Incorporates provisions about the controller’s delegation of authority to other controllers and the examiner’s duties.
  • In the event of an infringement, the new provision increases the severity of the penalty.
  • It revokes the two-year confidentiality of a registered design.
  • It includes measures for avoiding certain restrictive requirements in order to regulate anti-competitive practices inside contractual licenses.
  • When it is physically brought into the sphere of public records, the registration is taken into account. Anyone can examine the records and obtain a certified copy of them.
  • It includes provisions for changing the application before registering the design.

Registration of designs in India

The Act is intended to protect unique or original designs that can be applied to a specific article that can be created by an industrial process/means. Designs play an important role in a consumer’s purchasing experience because items are frequently purchased for both utilitarian and aesthetic reasons. The primary goal of design registration is to ensure that the artisan, creator, or originator of an aesthetic design is not deprived of his legitimate benefit by others applying it to their goods.

As a result, the originality of a new design has been regarded as the origination of a design from the author of such design, and it covers examples that, while ancient in themselves, are novel in their application. In Shree Vari Multiplast India Pvt. Ltd. v. Deputy Controller of Patents & Designs & Others (2018), the Hon’ble High Court of Calcutta stated that the law of design rights does not prevent competitors from using the same methods or principles of construction to create competing designs, as long as the competing designs do not have the same shape or configuration as the original design of the prop.

Essentials for a design registration

As per Section 4 of the Act, the design must fulfil the following criteria for registration:

  • It must be new or novel. Only designs that are one-of-a-kind can be considered for registration. Only a combination of already registered designs can be evaluated if the combination results in fresh visuals.
  • It should not have been recognized by publication or use anywhere in the world, including India, or prior claimed in application elsewhere, i.e. does not belong to the public domain or the state of the art.
  • It must be significantly distinguishable from previously known designs or a blend of previously known designs.
  • There should be no controversial or vulgar content.

Landmark cases

Bharat Glass Tube Limited v. Gopal Gas Works Ltd. (2008)

In the case of Bharat Glass Tube Limited v. Gopal Gas Works Ltd. (2008), the respondents (Gopal Glass Works) had registered and obtained a certificate for their design for diamond-shaped glass sheets. The appellants began marketing with this design. These designs were developed in partnership with a German firm.

They went to court after discovering that the appellants were exploiting their design. The appellants asserted that the respondents’ designs were not novel because the German company had been using them since 1992 and they had already been published in the United Kingdom Patent Office, therefore they had lost their novelty. When the case was appealed to the High Court, the designs were returned to the respondents. When the case reached the Supreme Court, it upheld the Calcutta High Court’s verdict.

Disney Enterprises Inc. v. Prime Housewares Ltd. (2014)

In Disney Enterprises Inc. v. Prime Housewares Ltd. (2014), international registration of industrial designs became a point of contention in India. An action was launched by the Disney companies for the infringement of their international registered designs against Prime Housewares, a Mumbai-based company that used to manufacture figures such as Mickey Mouse, Donald Duck, and others.

The Delhi High Court ruled that the plaintiff’s trademark is protected but not the designs under Indian law. The court issued an order for the infringement of the firms’ trademarks. The Indian company was directed to deliver all infringing material to the enterprises so that it could not be utilised again.

Kemp and company v. Prima Plastics LTD. (1998)

In Kemp and Company v. Prima Plastics LTD. (1998), it was decided by the Bombay High Court that disclosure of a design by the proprietor to a third party cannot be claimed as publication unless the disclosure is made in good faith.

Hello Mineral Water PVT. LTD. v. Thermoking California Pure (1999)

In the case of Hello Mineral Water PVT. LTD. v. Thermoking California Pure (1999), a cylindrical-shaped water dispenser device was not declared unique on the grounds that simple shape and form are insufficient to establish innovation.

Reckitt Benckiser (India) Ltd. v. Wyeth Ltd. (2013)

The problem, in this 2013 case, was with the registration of S-shaped spatulas. The defendant, in this case, Wyeth Ltd., argued that the appellant’s design was not unique because it had already been registered in another nation before it was registered in India. There was also the withholding of information regarding past registration in a foreign country.

The Delhi High Court ruled that if it can be proved that the design was disclosed anywhere in India or a foreign country using the methods specified in Section 4(b), the registration in India will be regarded as canceled and can be used as a defense against alleged infringement under Section 22(3).

M/s S K Industries v. Dipak Ghosh (2009)

In this 2009 case, the plaintiff claimed that there was a certain cup in which jelly was packed and marketed and that the defendant was not permitted to use the design.

The Court determined that the cup utilized by the plaintiff had no novelty and was simply a standard cup with no originality in shape or dimension. The cup is the same as those made by most manufacturers for storing stuff.

Conclusion 

Designs play an important part in visually distinguishing one’s products from competitors, and with the development of competition in the business, preserving one’s designs is critical to gaining an advantage. The aesthetic appeal criteria for being a design leave an imprint in the consumer’s mind and, over time, associate with the owner alone. The Designs Act of 2000 was enacted with the intention of encouraging innovation and creativity in line with the global industrial and technological sectors.

With its streamlined application process and period amendments, the niche and extensive framework ensure proprietors/owners are awarded statutory rights, in accordance with international treaties and agreements such as the 2014 amendment to the Designs Rules, which adds ‘small entity’ as a new category of the applicant in addition to a natural person.

References

  1. https://www.mondaq.com/india/trademark/984694/protection-and-enforcement-of-design-rights-in-india 
  2. https://www.worldtrademarkreview.com/brand-management/protecting-and-enforcing-design-rights-india 
  3. https://blog.ipleaders.in/a-critical-analysis-of-design-protection-in-india/#Reckitt_Benckiser_India_Ltd_v_Wyeth_Ltd 
  4. https://ipindia.gov.in/writereaddata/images/pdf/act-of-2000.pdf 

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