This article has been written by Shruti Pandey, pursuing a Certificate Course in Introduction to Legal Drafting: Contracts, Petitions, Opinions & Articles and have been edited by Oishika Banerji (Team Lawsikho).
It has been published by Rachit Garg.
Table of Contents
Customer’s attraction towards a product is guided by multiple factors. One of the factors which influence a customer’s decision is the appearance of the article. The appearance of an article plays a pivotal role in affecting the sale of the product. It is for the same reason that the sellers invest a good deal of time and money to create a design for their product which is distinct from the other designs in order to increase the sale of the same and earn profit. Here, it is important to note that a design is something that is either intrinsically or extrinsically attached to an article and it is not an article itself. It is impossible for a design to have a separate existence. In other words, design cannot be separated from the article. In India, the purpose of the Designs Act, 2000 is to protect the visual design of objects that are not purely utilitarian. The said Act follows the ‘first to file, first to get’ rule which simply means that an innovator of a design should get his design registered by filing an application to the concerned authority at the earliest in order to make his design exclusive and to protect it from piracy. By registering the design, the innovator who can now be called as the owner obtains certain exclusive rights over the design so registered. The Designs Act, 2000 consists of eleven chapters which inter alia deal with the registration of a design, copyright in registered designs, industrial and international exhibitions, legal proceedings, powers and duties of Controller of Design etc. This article is an insight of the same.
Origin of Design Act, 2000
In 1872, during colonial rule in India, the Patents and Designs Act, 1872 was enacted as the first legislation to govern designs. Moreover, in order to afford protection to the inventions and designs, the Inventions and Designs Act, 1888 was enacted further. It was followed by the enactment of the Indian Patents and Designs Act, 1911 which was inspired by the British Patents and Designs Act, 1907. The enactment of the new Patent Act, 1970 led to the revocation of the patent provisions from the Patents and Designs Act, 1911. The Designs Act,1911 was repealed and thereafter. Finally, the Designs Act, 2000 came into force in India from 11th May 2001. The new Act contains most of the provisions as were contained in the Designs Act, 1911, except for some minor changes in addition to some provisions relating to the TRIPS Agreement and other international conventions. It is necessary to note that the substantive law of Designs Act, 2000 has to be read along with the provisions of its subordinate legislation i.e., the Designs Rules, 2001, which is a procedural overview. .
Definition of design under the Designs Act, 2000
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 or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye. However, the following are excluded from the meaning of ‘design’ as provided under Section 2(d) of the Designs Act, 2000:
1. Any mode or principle of construction or anything which is in substance a mere mechanical device.
Striking features of the Designs Act, 2000
- The ‘Locarno classification’ (LOC) is a distinguishing feature of the 2000 Act. The Locarno Classification is an international system of classification employed for the purpose of classifying goods for the registration of industrial designs. The said classification is solely based on the subject matter of the design as opposed to the earlier classification which was made on the basis of the substance which has been used to make that substance.
- The Designs Act, 2000 incorporates the concept of ‘absolute novelty’. In simple language, absolute novelty means that an invention is new if it has not been used or published anywhere in the world. The concept of absolute novelty aids in judging a novelty on the basis of prior publications of any article.
- Under the 2000 Act it is possible to reinstate the registration of a design. It simply means that the registration of a design can be restored.
- The provisions relating to punishment for any infringement has been made more stringent in the new Act in terms of its quantum.
- The covertness of two years of a registered design is rescinded.
- The district courts have the authority to transfer cases to the high court.
- The new Act contains provisions regarding the substitution of an application before registering a design.
- The Designs Act, 2000 contains certain provisions for the regulation of anti-competitive practices within contractual licences.
- The new enactment includes the provisions in relation to the delegation of powers of the controller to other controllers.
Essential requirements for the registration of design
Before the registration of design as per the Designs Act, 2000 it is essential that the following requirements are fulfilled:
- The design should be novel and original:
It is pertinent to point out that only a unique design which is novel and original can be registered. However, a combination of two or more previously published designs can be registered only if the combination produces new visuals or designs.
In Hello Mineral Water Pvt. Ltd. vs Thermoking California Pure (1999), the dispute was concerning a water dispenser which was designed in a cylindrical shape. Delhi High Court held that mere form or shape is not sufficient for the purpose of novelty. The ultimate test is to consider the design with an instructed eye to locate the difference between the design previously published and the registered design.
In B.Chawla & Sons vs Bright Auto Industries (1980), the Delhi High Court observed that only slight differences existed between the two impugned designs presented before it. The Court further held that minor addition or alteration in shape which is a well recognized shape of another product that exists in the market cannot provide such design the status of a new and novel design.
- The design should be an already published design:
The design which is to be registered should not be previously published, for it cannot be registered otherwise. Private use of the design does not amount to publication and thus, is eligible to be registered. Similarly, if a copy of the publication is already available in the public library where the general public has access, the same may be sufficient to constitute publication. Therefore, in order to get the design registered, it should not be publicly accessible.
In M/S. Kemp & Company & Another vs M/S. Prima Plastics Ltd. (1998), it was held that mere disclosure of design by the proprietor to any third person does not amount to publication but such disclosure has to be in good faith.
- The design should not be opposed to morality:
The design which is opposed to morality or is forbidden by the Government of India or any authorised institution or authority or which can cause disturbance or breach of public order and peace is simply not eligible for registration. The design should not contain obscene or scandalous matter.
Who can register design under the Designs Act, 2000
According to the provisions of the Designs Act, 2000 any person who claims to be the proprietor or owner of any novel or original design which is not previously published in any country and which is not contrary to public order or morality can file an application for registration of such design. Such a person includes an individual, partnership firm, company or an agent on behalf of the proprietor.
Application to register designs
Section 5 of the Designs Act, 2000 contains provisions for filing of an application for the purpose registration of designs. It states that any person claiming to be the proprietor of any new or original design which has not been previously published anywhere and is not against any public policy or morality can make an application for registration of the design and accordingly, the controller may register the design after the examination by the examiner.
Every application under Section 5 of the Designs Act, 2000 shall be filed in the appropriate patent office in the prescribed form and in the prescribed manner and shall be accompanied by the prescribed fee. A design has to be registered only in one class. In case of any doubt as to the class in which a design ought to be registered, it is the controller who would decide such a question.
The Controller can refuse to register any design that is presented before him for registration. In this case, the aggrieved person has the option to prefer an appeal to the high court.
An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned.
Procedure for registration of design in India
Chapter II of the Designs Act, 2000 accommodates provisions in relation to the procedure for registration of designs.
1. Filing of an application
An application is to be made in the patent office in the prescribed form along with the prescribed fees. The application shall specify the following:
- The class in which the design is to be registered.
- The articles to which the design is to be applied.
Moreover, a separate application shall be filed for each class of articles.
2. Examination of the application
After receiving the application for the registration of the design, the controller will send the application to be examined in order to check whether the design is eligible to be registered or not. After receiving a positive signal from the examiner, the controller will accept the application and proceed further with the procedure.
3. Communicating the objections, if any
After the examination of the application, if the examiner finds any defects in the application, the same has to be notified to the applicant. After the defects are communicated to the applicant, the applicant is required to remove all the objections after which the applicant shall resubmit the application to the appropriate patent office for the acceptance of the application within six months from the official date of the application. If all the objections are not removed within 3 months after communication of the objections to the applicant, the application will be withdrawn.
4. Publication of particulars of registered designs
After the registration of the design, the Controller shall publish the prescribed particulars of the design in such manner as may be prescribed (in the Designs Rules, 2001) after which the design shall be open for public inspection.
What happens when the design is registered
When a design gets registered, the registered owner of the design gets copyright in the design for a span of ten years from the date of registration. However, if an application for the extension of the period of copyright is made to the Controller before the expiration of the said period of ten years in the prescribed manner, then the Controller shall extend the period of copy-right for a second period of five years from the expiration of the original period of ten years on payment of the prescribed fee.
If the copyright in the design ceases to have effect because of non-payment of the prescribed fees for the extension of copyright in the design, the proprietor of such design has an option to restore the design provided an application for the restoration of the design is made within one year from the date on which the design ceased to have an effect, in the prescribed manner accompanied by payment of such fees as may be prescribed in addition to the reason which led to the failure to pay the fees. If the controller is satisfied that the proprietor defaulted in paying the fee for extension genuinely and not intentionally then the proprietor shall, upon the payment of any unpaid fee for extension, restore the registration of the design.
Piracy of registered design
Section 22 of the Designs Act, 2000 incorporates provisions relating to piracy of registered design. Piracy of registered design is equivalent to an infringement of the copyright in the design.
Section 22(1) of the Designs Act, 2000 states that during the existence of copyright in the design it shall not be lawful for any person to do the following acts without the licence or written consent of the registered proprietor:
a) For the purpose of sale, to apply or cause to be applied, to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation, or to do anything with a view to enabling the design to be so applied;
b) To import for the purposes of sale, any article belonging to the class in which the design has been registered.
c) To publish or cause to be published or exposed for sale the article after having knowledge of the fact that the design or any fraudulent or obvious imitation has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor.
It must be noted that any of the aforesaid acts shall constitute piracy only if they have been done in the course of commerce and not merely for personal use. It is further necessary that the prohibited acts have been committed in relation to articles falling in the class in which the design has been registered.
It must be further noted that if any question regarding the ascertainment of infringement of a design crops up, the court will consider the design from the point of view of an average customer. This simply means that the Ccurt will see if there is any confusion which is apparent in the minds of the customers as far as the impugned articles are concerned.
Remedies against the piracy of registered designs
Section 22(2) of the Designs Act, 2000 enlists the remedies available against piracy of registered designs. It is crucial to note that the Designs Act, 2000 only provides civil remedy for the infringement of copyright in a design. This simply means that there is no provision for criminal proceedings against any person who infringes the copyright in registered designs.
Two alternative remedies are available against the piracy of registered design. These remedies are provided under Section 22(2) (a) and (b) of the Designs Act, 2000. The proprietor has to choose one of the following remedies:
1. Section 22(2)(a) states that if any person contravenes the provisions of Section 22 of the Designs Act, 2022 i.e., if a person does any act which amounts to piracy of registered design, he shall be liable to pay INR 25,000 rupees for every contravention. This payment has to be made to the registered proprietor of the design recoverable as a contract debt. This provision is subject to a condition that the total amount recoverable in respect of any one design shall not be more than INR 50,000.
2. Section 22(2)(b) states that the proprietor may file a suit for the recovery of damages for any such contravention in addition to an injunction against the repetition of such contravention. If the proprietor is successful, he will be entitled to recover such damages as may be awarded by the court. In addition to this, the proprietor can restrain the defendant by means of the injunction granted by the court.
It must be noted that no proceeding can be initiated if the piracy in question has been committed between the date on which the design ceased to have effect and the date of restoration of the design. Moreover, the second proviso to Section 22(2) states that a suit or proceeding cannot be instituted in a court below the court of the district judge. This provision is subject to the condition that if the defendant avails any of the grounds provided under Section 19 which relates to the grounds on which registration of a design may be cancelled, the court has to mandatorily transfer the suit or such other proceeding to the high Ccurt for the purpose of adjudication.
Landmark judgments on registration of designs
Plaintiff had registered his design named ‘Diamond Square’ prior to registration of ‘Kohinoor’ by the defendant. When contentions were raised, the defendant had claimed that its design was not a fraudulent imitation of the plaintiff’s design. Both designers were found to be similar after an examination. It was held that the plaintiff is entitled to interim protection from piracy and an interim injunction was granted.
Dabur India Limited has the registered design ‘Dabur Amla Hair Oil’ in bottles having a distinctive design. Defendants, Rajesh Kumar, had manufactured plastic bottles alleged to be an imitation of the bottles of the plaintiff. These plastic bottles being used by the plaintiff were found to be common bottles used by several other companies for marketing their hair oil, fixers, and liquid products. Defendants infringed the design of the bottles of the plaintiff. Plaintiff had no peculiar feature of the bottle registered as a design of the whole bottle registered as a design. Bottles used by the plaintiff have a common shape of the bottles of the plaintiff. For a validly registered design, there must be some novelty and originality in the designs sought to be protected and it must not have been republished. It was held that the plaintiff is not entitled to an interim injunction.
Defendant, Videocon, had the registration of the design with the same features, configuration, and shape as the plaintiff. The design of the Videocon was the replica of the plaintiff’s design. The court in this case held that the design of the Videocon is similar to the design which is registered by Whirlpool. Videocon was therefore held liable for the infringement and passing off of the plaintiff’s design.
Cancellation of registration of the registered design
Section 19 of the Designs Act, 2000 incorporates provisions relating to the cancellation of registration of a design which is already registered. It states that any person can present a petition to the Controller for the purpose of cancelling the registration of a design. This is possible only at any time after the registration of the design. For this purpose, Form 8 has to be referred and requisite fee has to be paid to the controller depending upon the category of person making such application. That is to say, in the case of a natural person the requisite fee which is to be paid to the controller is INR 1500 whereas for small and medium sized enterprises the requisite fee is INR 3000 and for other applicants the fee is fixed at INR 6000. The grounds for the cancellation of registration as per Section 19 of the Designs Act, 2000 are as follows:
a) The design has been previously registered in India; or
b) The design has been published in India or in any other country prior to the date of registration; or
c) The design is not a new or original design; or
d) The design is not registrable under the Designs Act, 2000; or
e) The design is not a design as defined under Section 2(d) of the Designs Act, 2000.
It must be noted that an appeal from any order of the Controller Under Section 19 of the Designs Act, 2000 shall lie to the high court. Moreover, the Controller may at any time refer such a petition to the high court and high court shall accordingly decide any petition so referred.
Design is a reflection of a person’s creativity and intellect which is later on associated with an article. A design which is unique and new is an eye candy for the customers and it plays an important role in influencing the customer’s minds. A design on an article holds the power to make or break a business in the sense that if the customers like a particular design the sale of the article will experience a spike. On the other hand, if a design is disliked by a significant number of customers then the sales of that article will fall. Therefore, it is necessary that the designs should be protected by registering it so that the third party cannot make use of someone’s hard work and creativity for his benefit. The Designs Act, 2000 provides for mandatory registration of designs in order to avail remedy in case of its infringement. This also ensures fair competition in the market. Moreover, the protection afforded by the act encourages creativity and also helps to protect the interest of the consumers as well as manufacturers. As the government is formulating more and more policies for the development of the industries in our country, it is essential that the designs created by the innovators are adequately protected. For this purpose, the government should make the provisions more stringent to protect the copyright in design. Currently, the Designs Act, 2000 only provides civil remedy for the infringement of copyright in the design. The government can therefore amend the Designs Act, 2000 to include criminal liability for the infringement of copyright in designs. This will discourage the people from copying designs and thus will provide better protection to creators of the registered design.
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