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

Introduction – Ambit of the term ‘Industrial Designs’

Industrial Designs are an intellectual property that protect the physical appearance of an article, electronic appliances, textiles designs, luxury or essential items, graphic user interface and icons of an application etc., are inclusive of this term. Industrial designs are classified into three categories – 2-dimensional features, 3-dimensional features and a combination of the two. An application for protection of a, industrial design has to fulfil mainly two requisites – originality and novelty, which enables the applicant to exclusively use the registered industrial design. 

National Registration for Industrial Designs In India

The principle governing registration and other allied procedures of industrial design is territorial based. This means that each country has law(s) pertaining to industrial designs. As for India, the statutes that concern Industrial designs are the Design Act, 2000 and Design Rules, 2001, the former being the substantive law with latter as the procedural component. For registration in India, certain designs that are not new and original, have been disclosed to public in the home nation or abroad, are not distinguishable from similar article designs and have obscene material associated are prohibited to be registered. The act prescribes competent authorities – Controller and Examiners to scrutinize the application and grant or refuse protection accordingly.

The applicant also has a statutory backing in the form of Section 36 of the Act for filing an appeal in the High court in case of refusal to register industrial design. The procedure for registration of an industrial design is specified in the Act ; Form -1 application is to be filed with any of the three Patent offices (Delhi, Mumbai, Chennai) or Design office (Kolkata) in India depending on the applicant’s region with the prescribed fees and in one particular class of the Locarno classification, at a time. Once registered, a design is in force for a period of ten years at a time which can be renewed indefinitely for five years, either at the time of registration only or six months before the expiry of the decade term (Maximum term in India is 15 years). 

While filing an application for an industrial design, the applicant should make sure to search if there already exists an identical registration. Post the search, every application should contain a representation of design with appropriate class and subclass, full details for official communication and to comply with objections (if any). The application should also contain a Statement of Novelty and a disclaimer of representation. These are to be submitted within six months of date of application to give effect to registration, in cases of default . 

International Registration for Industrial Designs vis-à-vis The Hague System 

If an applicant wishes to have protection in multiple jurisdictions, the most efficient way is to file a registration application via the Hague System which facilitates and simplifies the process by multiple folds. This international application containing several designs in one language out of the three – English, French or Spanish with prescribed one-time fee in swiss francs for registration is filed with the International Bureau of World Intellectual Property Organization or Regional Office of contracting party, if permitted beyond basic examination after which, it is sent to World Intellectual Property Organization for international registration procedures. This process results in individual effect of registration with as many national offices as the applicant wishes to procure protection in. Once the application is forwarded to the respective contracting party’s office(s), the competent authorities have the right to refuse or grant registration in their jurisdiction after thorough scrutiny. The factors for granting protection more or less remain same – Novelty and Originality and stand valid for a minimum of at least 10 years. 

Can Prior Registration be a valid ground?

1.  Prior Registration is a valid ground for registration – An applicant, along with the requisites as provided in the statute, can also claim ‘Priority Date’ if the Industrial design has been submitted for protection in other jurisdiction of convention countries within six months of applying for design registration in India. In the event, the stipulated time period of six months is not followed, the date of registration in India will be the date on which application is made in India and not the date of application made abroad in convention country.
2.  Prior Registration as a valid ground for cancellation – The concept of previous registration of design outside India as a valid ground of cancellation became clear with Gopal Glass Works and Dabur India judgment in 2006 and 2009 respectively. Delhi High Court adopted literal interpretation to interpret the term ‘Prior Publication’ to give meaning to ‘Public Domain’ under Section 19(1)(a), 19(1)(b) and 4(b) in the case of Reckitt Benkiser India. v. Wyeth as the question of publication in a foreign jurisdiction was not addressed in previous two verdicts. The court concluded that mere existence of a design in the record of a Registrar of Design in a convention country does not in all cases amount to publication. The position of this concept with respect to it being a defense to infringement of trademark was recently cleared in the case of Sri Jan v. Super Smelters where the court held that cancelled design registration is not a bar on any action for Trademark Passing-off giving rise to jurisdiction of cause of action for counterfeit proceedings under Section 22 of the Act. 

Procedure for Cancellation of Design

A registered industrial design can be cancelled anytime post registration, by raising any or all of the post – grant objections of Section 19, either by the registered proprietor or a third party. Vide Section 46 of the act, the controller can take any decision regarding the cancellation of a registered design for the security of India. A petition for cancellation can be filed in Form 8 with prescribed fees depending on the category (INR 1500 for Natural Person, INR 3000 for SME, INR 6000 for other applicants than the remainder applicants). Such cancellation proceedings if results in cancellation of the registered design in question is to be followed by publishing of the same in the Official Journal. A harmonious reading of Section 19 and Rule 29 establish the mandatory time periods for each step of the cancellation proceedings following the basics of Civil Procedure Code. 

The timeline for cancelling a registered design can vary on a case to case basis due to various factors and can prove to be cumbersome. 

While there are various advantages for registering an industrial design, the main benefit of cancelling a registered industrial design takes the form of remedy against piracy by third parties. On the other hand, cancellation of design registration by the Registered proprietor/Registered owner is done to avoid legal action subjected to commitment of any design licensing or assignment agreements by the owner. Also, just as there is no limit up to the number of designs that can be registered simultaneously or individually, similarly, there is no limit on the number of registered designs that can be cancelled by one applicant. 

On the other hand, there is no question of registering a cancelled industrial design as once a design fulfils anyone of the cancellation grounds, it is forever deemed to be non-registrable until necessary and substantial changes are made to constitute a ‘new’ design thereby, resulting in a new registration or rectification. This also means that a cancelled registered design cannot be taken up by any third party as the grounds remain valid with respect to the cancelled industrial design even after such cancellation proceedings complete. The statute lays that a registered industrial design shall be treated invalid if abandoned by the proprietor and the same can be cured by way of restoration of the lapsed design. An abandoned design can never be construed to be a cancelled design as the grounds for both are not similar at all. 

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Case Laws 

There have been various landmark verdicts in this domain of IP laws: 

In Apple Inc.v. Samsung Electronics Co, the defendant copied the plaintiff’s design and utility patent for iPhone. Samsung even filed a countersuit but the jury awarded zero damages and gave a verdict that Samsung was responsible for diluting the reputation of Apple and was held liable for infringing its trade dress. Another case involving a giant in the field of Mobile Industry, was Blackberry Ltd. v. Typo Prods LLC. where the defendant was accused of infringing the very famous QWERTY keyboard design patent of the plaintiff. The lawsuit ended in a settlement between the parties. It is very interesting to note that all the five grounds given under Section 19 of the 2000 act can be adopted as defence in design infringement matters. This was held in the case of Steelbird v. Gambhir, where the defendant based its arguments on the plaintiff’s helmet to have a purely functional feature, therefore rendering it to not be a subject matter of Industrial Design. 

Conclusion

This particular domain of IP has three stakeholders – The owner(s), consumers, and economy. The owner is ensured a fair return on investment by way of protection of his/her registered Industrial Design or can generate revenue through assigning or licensing the design. Such protection encourages creativity and protects the consumers from being misled by all the brands present in the world while contributing to the expansion of commercial activity in nations. The owner should be vigilant and assert its vested statutory and common law rights over the registered Industrial Designs by fighting design piracy and renewing the registration diligently. Lastly, an applicant should ideally opt for relevant multi-class protection for its Industrial Design registration to avoid any chance of future litigation of any kind. As observed, most of the Design infringement cases involve global brands, but this IP domain offers an affordable solution to protect one’s industrial property hence encouraging small and medium scale enterprises as well. 

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