This article is written by Akansha Gupta. The article seeks to give an overview of protection of industrial designs in India, including important provisions such as registration of designs and piracy of designs under the Designs Act, 2000, as well as landmark cases related to industrial designs.
It has been published by Rachit Garg.
Intellectual property rights are rights that are given to protect the creation of human minds. Whenever a new product is created, it is not only the use of the product that guides the consumer’s decision, but also how that particular product looks. In other words, with advancements in science and technology, the market has a large variety of products that have the same function but different designs, to which buyers are more attracted. The design of a product can be a unique composition of colours, shapes or patterns that are appealing to the eye. In simple words, ‘design’ is a human touch given to any product in the form of a composition of colours, shapes, patterns, etc., which adds aesthetic value and attraction to the product. Design involves some creativity and distinctiveness, and thus, if the shape of a product is due to some function that it needs to perform, then it will not fall under the subject of design. Moreover, it includes industrial designs which can be two-dimensional or three-dimensional.
This article briefly covers how designs are protected under Indian law. This article gives an insight into the important provisions of the Designs Act, 2000, such as the procedure related to registration of design, followed by examination and publication of design, as well as infringement of design. Towards the end, certain landmark judgements have been discussed to give an idea of what kind of cases take place under industrial design and what is admissible as evidence while proving a case of infringement of design.
What is industrial design
Industrial designs are those designs that give ornamental or aesthetic value to a product, which is then manufactured industrially. An industrial design may consist of three-dimensional (3D) features such as the shape of a bottle or vase used in various industries or two-dimensional (2D) features such as patterns for textiles and wallpaper that serve the purpose of decoration.
How is industrial design different from other IPR
One must be able to distinguish industrial design from other common forms of intellectual property rights. Industrial design is different from copyright, as copyright exists in artistic works but is not necessarily applied to an article. For example, a unique sketch by an artist acquires copyright, but it becomes a subject matter of design only when such design is applied to articles in an industry. Industrial design is different from a patent, as a patent is granted for a new product or process, whereas design is granted when it is applied in a creative way to an old or new product. Industrial designs are different from trademarks, as trademarks are generally symbols used to distinguish one product from other products in industry, whereas designs are those aesthetic features in one’s product which are appealing to one’s eyes.
Origin of industrial designs
In the mid-1800s, when large-scale production of goods was becoming more common, Peter Behrens, a German architect and designer, became the architect advisor for Allgemeine Elektricitäts Gesellschaft (AEG), a German electrical company, in 1907. He not only designed the architecture of the Company’s factories and industrial buildings but also other products such as fans, tea kettles, and other household items. Due to this, he is considered a pioneer in the field of industrial design. With this, industrial designs began and today, design registrations are heavily created and registered in different sectors such as clothing, health, food and beverages.
Tools and techniques used in Industrial designs
In ancient times, designers used traditional tools to create designs for industries. As a result, most designs were handmade and involved sketches and paintings on finished goods, which resembled ancient Indian people in different civilisations.
Today’s industrial designers use a wide range of tools and techniques to create products that are both appealing and functional. Some of these tools include 3D printing, such as articles with shapes with a 3D effect that are more appealing to the eye. For example, Apple design registrations include claims to the icon layout and black rectangular edge-to-edge glass embodied in its iPhone, as well as the flat, rectangular, rounded corners embodied in its iPhone and iPad. Moreover, artificial intelligence is also creating more scope for industrial designers to create unique designs in less time.
Laws relating to industrial designs in India
The need to protect industrial designs was first felt in the 19th century and at that time, the Act No. XV of 1859 was consolidated to provide protection relating to designs. It was then renamed as “The Patterns and Designs Protection Act”. The Patterns and Designs Protection Act, 1872 was enacted to provide protection as well as to grant exclusive rights, such as making, using and selling designs associated with the product, for a short period of time. This Act augmented the Act of 1859, which the Governor General of India passed in order to protect industrial designs and grant privileges to inventors. This Act was replaced by the Inventions and Designs Act, 1888, which consolidated and amended the law relating to the protection of the designs of inventors in a separate part of the Act. After this, the Act of 1888 was replaced by the British Patent and Designs Act, 1907 which forms the basis of the current patent law and new design law in India. Thereafter, a need for two separate laws was felt, as patents and designs were two different intellectual property rights associated with any product. Thus, two separate laws were enacted, namely, the Designs Act, 1911 and The Patents Act, 1970. Most recently, the Designs Act, 2000 replaced the Designs Act,1911, with the objective of protecting designs in India as well as bringing the Indian design law at par with international law, which was lacking in the 1911 Act. In all, the Designs Act, 2000 consists of about 11 chapters and 48 sections. The Controller-General of patents, designs and trademarks under Section 4(1) of the Trade and Merchandise Marks Act, 1958 (43 of 1958) is the Controller of Designs authority for registration of designs
Essential features of the Designs Act, 2000
The Designs Act, 2000 is an enactment to consolidate and amend the law relating to the protection of designs in India. Its main objective is to protect new or original designs from being copied, thereby protecting the proprietor from incurring losses. Following is the list of unique features introduced in the Designs Act, 2000:
- Adoption of Locarno Classification
Under the Designs Act 2000, India adopted the Locarno Classification system. Unlike the previous provisions that classified designs based on materials used, the Locarno Classification categorises designs solely based on their subject matter. This shift simplifies the design registration process and ensures a more efficient classification system.
- Introduction of ‘absolute novelty’
A significant feature of the Designs Act, 2000 is the introduction of the concept of ‘absolute novelty.’ This provision (Section 4) allows the assessment of novelty based on the prior publication of any article, not only within India but also in other countries. Designers can protect their creations from imitation or unauthorised use, even if they have been disclosed in other jurisdictions.
- Restoration of designs
The Act includes a provision for restoration of design that was not present in the previous enactment. This provision benefits designers who may have unintentionally missed the opportunity to register their designs. Now, they have the opportunity to restore the registration and enjoy the associated rights and protections under Section 12 of the Designs Act, 2000.
- Transfer of cases to high courts
The Act empowers district courts to transfer cases to high courts, under Section 22(4) of the Designs Act, 2000, when the validity of a design registration is challenged. This provision ensures that such disputes are resolved in the appropriate judicial forum, streamlining the legal process and facilitating the resolution of disputes efficiently.
5. Delegation of powers and duties of examiners
The Designs Act, 2000 includes the delegation of powers of the Controller of Designs to other examiners under Section 3(2) of the Designs Act, 2000. These provisions promote transparency, accountability and efficiency within the design registration process, ensuring an effective design registration system.
Power of controller of designs
The Controller-General of patents, designs and trademarks under Section 4(1) of the Trade and Merchandise Marks Act, 1958 (43 of 1958) is the Controller of Designs authority for registration of designs as mentioned under Section 3 of the Designs Act, 2000. The Controller of Designs is assisted by other examiners who are appointed by the Central Government.
As mentioned under Section 32 of the Designs Act, 2000, with regard to the proceedings going on before the Controller of Designs, he has powers of a civil court, such as:
- Receiving evidence;
- Administering oaths;
- Administering the attendance of the witnesses;
- Proceedings for the discovery and production of the essential documents;
- Issuing commissions for the examination of witnesses; and
- Awarding costs, which can be executable as a decree of a civil court.
Procedure for registration of industrial designs
The first step of the registration is filing Form 1, which includes necessary details such as the name, address and nationality of the applicant/ owner of the design. In the case of a company, information regarding the place of incorporation and the legal status of the entity is asked in the application form. Another essential entry in the form is regarding the class and the sub-class under the Locarno Classification, of the article enclosing the design. Along with this, the applicant also needs to mention the name of the product to which the design has been applied.
The form should be submitted along with all the necessary documents and the prescribed fee at any branch of the Indian Patent Office (IPO) situated in Ahmedabad, Mumbai, Chennai, Delhi and Kolkata. The government fee in India for filing an industrial design is Rs 1,000 for individuals, startups, and micro, small, and medium enterprises and Rs 4,000 for other entity types.
The following are the necessary documents to be submitted along with the application form to get design registration:
- A certified copy of the extract of disclaimers, which mentions what the application does not wish to include for protection (or what it wants to exclude).
For example, if the design consists of lines as well as a combination of colours, then a disclaimer saying that the lines are not to be included but only a unique combination of colour applied to the article is to be included. This is needed to give a clear picture of what is not to be protected.
- Affidavits in relation to declaration of truth and verifiability of design, applied to a particular product.
- Other public documents, such as Aadhar card of proprietor, incorporation certificate in case of company, a description outlining the article’s unique features that make it distinctive from other designs present in market, as well as two photographs giving a whole view of the article.
As soon as the application is submitted, a date and number are given to the applicant.
Examination by the controller of designs
The Controller of Designs has powers to either approve or abandon the registration of design under Section 5 of the Designs Act, 2000. This provision basically discusses that for a design to be approved by the Controller of Designs, it should be new, not published anywhere and not of a scandalous nature. Moreover, such a design shall only be approved on an application made by the designer, as mentioned above and after that application is accordingly examined by examiners, as mentioned under Section 3 of the Designs Act, 2000.
Besides this, the Controller of Designs also examines whether the application contains accurate details for the prescribed fees. The examination section also mentions the class in which the design needs to be registered, and it makes clear that the design can be registered only in one class at a time, and if there is confusion of classes, then the Controller of Designs decides which class is fit for that particular design. This section also makes it clear that the Controller of Designs has sole power to refuse the registration of design on reasonable grounds and, at the same time, provides that the proprietor shall have the right to appeal in the high court on the ground of refusal by the Controller of Design.
There can be abandonment of the application if proper details are not provided by the designer in specified time. Moreover, this section gives information related to the registration date. For example, if the proprietor filed for registration on 22nd June, 2017 and he/she obtained the registration finally on 20th August, 2020, then the design will be registered in the register of Controller of Designs on 22nd June, 2017, i.e., the registration filing date.
The main criteria under which the examiner will be judging the application was reteriated in the case of Bright Auto Industries vs. Raj Chawla (1976), the Delhi High Court held that just a slight variation in the registered design from a pre-existing design would not qualify for registration. In this case, there is a well defined shape of a rear view mirror; just having a curve to it will not make it different. Thus, it depends, from case to case, whether slight variation will be part of innovation or not.
Prohibition of registrations of designs
There are certain grounds on which registration of industrial designs can be prohibited. Such power to prohibit the registration of industrial designs on certain grounds is given to the Controller of Design under Section 4 of the Designs Act, 2000. The grounds are :
- If the design is neither new nor original.
- If the design is already available in public domain, either in India or in any other country, by publication in written form before the filing date.
- If the design is not novel, which means it is not distinctive from the known designs.
- If the design either comprises obscene matter or is of scandalous nature, it is thus immoral in the eyes of the public.
For instance, in the case of Wimco Ltd Bombay vs. Meena Match Industries (1983), the Delhi High Court held that ‘publication’ means that design is no longer a secret and is not only known to the author but is now available in the public domain. Publication of a design takes place in two aspects: either the public is in possession of the design or it has been disclosed to the public. Thus, the pattern on matchboxes claimed by Wimco, which was in rectangular form with multiple diamond shaped spots, was not distinct as it was already available in the public domain and hence prohibited under Section 4 of the Designs Act, 2000
Communication of objection
Another situation can be where objections are raised in relation to the novelty or any other particulars of the application. In such a case, a hearing has to be given within three months to the applicant. The objections should be resolved within six months of the hearing, or else the application will be abandoned. During this examination process, the objections are resolved in the prescribed time period, before a certificate of registration is issued to the proprietor.
After the examination, one situation can be that no objections are raised; in this case, a registration certificate is issued under Section 9 of the Act. Once the certificate is granted, all exclusive rights, such as to sell and import, as well as the right to file a suit against piracy of such a registered design, will be solely in the hands of the proprietor.
Publication of design
The design registration is published in the Patent Office’s journal in the name of the proprietor. The Controller of Designs will himself notify it in the public domain as well as on the portal, as mentioned under Section 7 of the Designs Act, 2000. This will help others to check whether their design resembles the registered one, and if it does, upon receiving such objection from the general public, if found true, the application stands rejected on the ground of similarity.
Register of designs
All the entries regarding the name, address of proprietors with respect to registration, as well as information regarding assignment and transmission, are entered in a book called the Register of Designs located in the patent office. It is prima facie evidence of any matter authorised to be entered in it.
Term of protection of design
Once the owner is granted a registration certificate of design, the design is protected for a period of 10 years from the date of registration, as mentioned under Section 11 of the Designs Act, 2000. This protection can be further extended for a period of 5 years if the proprietor pays a certain fee within the specified period. The government fee in India for renewal of an industrial design is Rs 2,000 for individuals, startups, and micro, small, and medium enterprises and Rs 8,000 for other entity types.
Cancellation of registered design
To cancel a registered design, a petition has to be made to the Controller of Designs. If the cancellation proceedings are unsuccessful before the Controller of Designs, then an appeal can be filed in the high court.
Any person can file for cancellation of a registered design on the following grounds, as mentioned under Section 19 of the Designs Act, 2000:
- The design is not new
- The design is previously registered in India
- The design is already in the public domain
- The design does not fall under the subject matter of design as defined under Section 2 (d) of the Act
- The design is not registrable under this Act. For example, stamps and emblems are not designs, as these are not finished goods and hence not registrable under the Designs Act, 2000.
In the case New Holland (Fiat) India Pvt. Ltd. (Presently CNH Industrial India Pvt. Ltd). vs The Controller of Patents And Designs And Ors (2021), the High Court of Calcutta answered in negative to the question of whether the Controller of Designs has the discretionary power to remove the design from the register during the pendency of cancellation of registration proceedings. The High Court of Calcutta observed that the Controller of Designs has the power to not remove the design from the register as long as the proceedings for cancellation are going on.
Piracy of registered design
With a rapid wave of competition in the market based on the novelty and distinctiveness of the products, there is always a necessity for innovatively designed products. Thus, designers tend to invest more and more hard work in building their designs for products and then registering them. The ultimate goal of registered designs is to make profits and seek legal protection for their creation. However, both the monetary gain and the protection are hampered when another party infringes on the exclusive rights of a registered design. The sellers in the market tend to copy the design so that they can steal the brand value of a well known design in the market and reap more monetary gain. To deal with such issues of infringement, Section 22 of the Designs Act, 2000, mentions the ingredients of design piracy in India so that no one takes advantage of someone else’s hard work.
Piracy of design includes the following Acts, as mentioned under Section 22 of the Designs Act, 2000:
- Unauthorised application of registered design to the other article for sale
- Any fraudulent imitation of the design
- Any obvious imitation of design without consent of proprietor
- Importing the article, which has registered design on it, without the permission of the proprietor
- Publishing the pirated design as owned by an unauthorised person
Assignment and transmission of designs
‘Assignment of designs’ and ‘transmission of designs’ both are different terms; the first is a complete transfer of ownership by the proprietor, whereas the latter is a part transfer of ownership of design by an agreement. In both cases, an application has to be made to the Controller of Design so that the transfer can be entered into the register of assignment and transmission accordingly, as mentioned under Section 30 of the Designs Act, 2000. Also, the agreement authorising such assignment and transmission, which consists of terms and conditions, must be laid before the Controller of Designs within six months of framing such agreement.
Designs regime at international level
Paris Convention (1883)
The Paris Convention for the Protection of Industrial Property, 1883 was the first international convention which discussed and recognised the concept of industrial property. The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958, and at Stockholm in 1967. It further included another provision that compulsorily required member states to provide protection for industrial designs. India is a member of the Paris Convention, so it needs to follow the mandate of protecting industrial designs. Thus, the provisions for the right of priority are applicable, as, on the basis of a regular first application filed in one of the contracting states, the applicant may within the next six months apply for protection in other contracting states, and the latter application will be regarded as if it had been filed on the same day as the first application.
Geneva Act (1999)
Another important international registration system that built a foundation for the protection of industrial property on a global basis is the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, which was adopted in 1999. This Agreement was governed by the International Bureau of World Intellectual Property Organisation (WIPO). The international registration obtained under this Agreement produces the same effects in each of the designated countries as if it were registered in that country.
TRIPS Agreement (1995)
Next in line was the TRIPS Agreement, which provided for minimum standards for the protection of industrial designs. The TRIPS Agreement came into effect on 1 January 1995. The TRIPS Agreement protects intellectual property in trade-related regions to a large extent and is regarded as a comprehensive new framework for intellectual property protection. While incorporating the minimum standard provisions of the TRIPS Agreement, in India, the Designs Act, 2000 was passed in light of the rapid changes in technology. Article 25 and Article 26 deal with the subject matter of industrial design. It mentions that members can frame their domestic laws related to industrial design in extensive form as well. It also includes provisions for infringement of design as well as a term of protection for design.
S. D. Containers Indore vs. M/S. Mold Tek Packaging Ltd. (2020)
Facts of the case
In the present case, the respondent had initially filed a suit to obtain a permanent injunction in order to restrain the appellants from using the design of their containers and lids, which had been duly registered under the Designs Act, 2000. Whereas the contention of the defendant was that the design is not novel and hence the registration should stand cancelled under the Act.
Whether the case of infringement is made out by the respondent under Section 22 of the Designs Act, 2000.
The Supreme Court held that there are two modes of cancellation of a certificate of design present under the Designs Act, 2000; first, the power of cancellation shall lie with the Controller of Designs, and the appellate authority shall be the high court; second, in an action of piracy suit before the civil court, the defendant can urge for cancellation of the design. In such a case, the defendant has the right to urge revocation of registration if such design is not novel and is included in a prior publication. As a result, the suit is to be transferred to the high court as per Section 22(4) of the Designs Act, 2000. Thus, both are independent provisions giving rise to different and distinct causes of action.
M/s Kamdhenu Limited vs. M/s Aashiana Rolling Mills Ltd. (2021)
Facts of the case
The plaintiff, in the present case, has claimed to have created a unique design with new features of a surface pattern consisting of double ribs applied to steel bars, for which he also obtained design registration in 2013. Plaintiff became aware in the first week of June 2013 that the defendant copied the same design and was selling the goods in south Delhi. Thus, the plaintiff filed the suit, claiming that Aashiana applied and copied, adopted and imitated a design identical to Kamdhenu’s registered design, which causes infringement, whereas the respondent argued that the design was already available in the public domain, for which before plaintiff had claimed registration. Accordingly, it was prayed that the registration of plaintiff design should be cancelled.
- Whether the defendant has caused any infringement under Section 22 of the Designs Act 2000.
- Whether the plaintiff design registration should be cancelled as per Section 4 of the Designs Act 2000.
The court held that such designs were already available in the public domain and also registered as a part of British and ISO standards for such articles. Thus, registration stands to be cancelled by virtue of Section 4 of the Act, and since no case of infringement is made out as registration of proprietor was itself invalid. The court added that, in order to succeed in cases of piracy, it is necessary to have a valid certificate of registration issued to the proprietor and for the design to not be available in public domain.
Relaxo Footwears Limited vs. Aqualite Industries Pvt. Limited (2021)
Facts of the case
This case involves Relaxo (plaintiff), which has a business manufacturing shoes. The plaintiff got registration done in 2017 for a unique design on their shoes. In 2018, the plaintiff learned about a look-alike footwear product being traded in the market by the defendant and, thus, filed suit for injunction related to piracy of registered design.
Whether a suit for infringement is made under the Designs Act, 2000.
The court held that just because the plaintiff has a registered design, it does not increase the likelihood of success in a piracy claim. Defendants can still raise an objection regarding its novelty or prior publication at any point. The court added that the real test was whether, when judged solely by the eye, the essential features present in the new design were substantially different. The Court, after examining the design of two footwear products of the appellant and the respondent, concluded that the products are similar and issued an injunction to the defendant not to use a similar design, as it is already registered in the name of the plaintiff.
TTK Prestige Ltd. vs. Gupta Light House (2023)
Facts of the case
The plaintiff (TTK Prestige) in the present case got its design registered for its ‘Svachh Deluxe Alpha’ (Handi) pressure cooker in 2020. The plaintiff noticed the same design used by the defendant (Gupta Light House). Thus, the plaintiff claimed that there was piracy being done by KCM Appliances Pvt. Ltd. with respect to Impex Dripless’ pressure cooker. However, the defendant sought to invalidate the registration of the plaintiff’s design, as it was not a novel one and was completely function based. Thus, the present case came before the Delhi High Court.
Whether a suit for infringement is made under the Designs Act 2000.
In this case, the Delhi High Court passed a judgement preserving the exclusive rights of proprietors (TTK Prestige Ltd.) with regard to pressure cooker design against a challenge by KCM appliances Pvt Ltd. The court rejected the arguments of the defendant and upheld the prima facie validity of TTK’s design registration. The court found that the registration validly covered multiple-size pressure cookers as a “set” under the Designs Rules, 2001. Though novelty resided mainly in the pressure cooker lid design, the overall shape and configuration of all pressure cookers were substantially the same, barring size variations.
Thus, this judgement clarifies essential concepts like sets, novelty on the one hand, and prior art on the other hand, as well as functionality on one side and ornamental value on another.
It can be very well understood that the essence of design resides in the visual impression cast on buyers by the proprietor and not in elements of functionality or utility. A product is sold not only because of its utility but also because of the design it possesses. With respect to the registration of a design, it is the novelty of the design which has a major role, as a certificate issued previously by Controller of Design stands to be cancelled even at a later point in any infringement claim if it is proved to be a matter of prior publication and not distinct.
Moreover, it also becomes clear that the present Design Act, 2000 is more suitable and adequate for design protection in India as compared to old legislation due to two major reasons: one, for including the absolute novelty concept, that is, whenever novelty is to be judged for design originality, prior publication not only in India but other jurisdictions are also to be checked; and second is the Locarno Classification, that is, the design to be classified for registration on the basis of their subject matter (what category of goods they belong to) and not on material used in the article or goods. Thus, the present Act aims to create a favourable environment for the upbringing of, as well as supporting proprietors to contribute a novel design to aid the country’s economic and technological development.
Frequently Asked Questions (FAQs)
What do you mean by “article” under the Designs Act, 2000?
Under the Designs Act, 2000, “article” means any article of manufacture and any substance, artificial or partly artificial and partly natural, and includes any part of an article capable of being made and sold separately.
Do stamps, labels and cards be considered as subject matter of design for the purpose of filing registration of design?
No, as in such cases only a piece of paper, metal or like material is left once the alleged design is removed. An article must have its existence independent of the designs applied to it or not.
How can one enquire whether registration already exists in respect of any design?
One can enquire whether registration exists for a design by making a request to any patent office. If you know the design number, then Form 6 needs to be filled out; otherwise, fill Form 7 and pay the prescribed fees. You can make only one request at a time.
What is the penalty for the piracy of a registered design?
Section 22(2) of the Act talks about penalties related to piracy in design. If anyone breaches the exclusive right of the proprietor, then such person is liable to pay a fine which cannot be above Rs. 25,000 to the registered proprietor. Only in the case of contractual debt, it can raise up to Rs. 50,000. In addition, the registered proprietor may also bring a suit for the recovery of the damages for any losses to business and for injunction against imitation of the same design. Moreover, all these suits, including the infringement and recovery of damages, should be filed in any court but not below a district judge.
Is there a difference between a patented object and industrial design?
An industrial design right protects only the appearance or ornamental features of an article, whereas a patent protects a product or process that is novel, offers an inventive step, and is capable of industrial application. Thus, industrial design rights are not there to support the technical features of the article. Such technicalities can be protected under patent rights.
What is the most recent development related to design adjudication?
After the COVID-19 pandemic, hearings before the design office can now take place through video conferencing.
Is there any criminal prosecution for invalid design registration?
There is no criminal liability under the Designs Act, 2000.
Can design infringement cases be time barred?
Yes, it can be time barred once three years have elapsed since the last act of infringement.
Can a design licensee sue for piracy of registered design?
The licensee cannot sue for piracy of registered design. Only the registered proprietor has the right to institute proceedings for design infringement.
Where is the head office for the Controller of Designs located?
The head office for the Controller of Designs is located in Kolkata.