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This article focuses on the Designs Law in India and explains Designs Act as one of the landmark legislation in the area of intellectual property rights while laying down design rules and regulations pertaining to registration, infringement and protection of designs. It is as per the obligation under TRIPS agreement which India has adopted.
India is one of the few countries to adopt design rights. The Designs Act clearly excludes the artistic work provided under the Copyright Act, from the definition of design. Also, the Copyright Act excludes design from any protection under it which is registered as a design under the Design Act, also as held in the case of Microfibers Inc. v. Girdhar Co. and Anr.[1]
Introduction
The Hague Convention[2] provides for the international registration of designs and a mechanism for the registration of a design in countries and intergovernmental organisation parties to the agreement.
It lays down the criteria for the registration of a design to be protected under the Act as follows:
- It should be original and novel;
- No prior publication of the design;
- Visible on the finished article; and
- The design registered must be applicable to a functional article.
Designs Law in India
Design, as defined under Section 2(d) of the Designs Act, 2000, refers to 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; but does not include any trademark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or the property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
There has been a test laid down by the UK court in the case of Amp. v. Utilux[3], where the court laid down a test with respect to the term appeal to the human eye – “It must be clear to the human eye and no need for the creation of artistic or aesthetic creation as long as the design or object is original or new.” This test is still valid and applicable in India.
Prior to the present enactment, the design law was governed by the Design Act, 1911. Since the earlier law, there has been a tremendous amount of growth and development in the field of technology, industrial development, etc. There was a need for a new law to ensure the effective protection of the designs in India and thus, to bring the Indian law at par with the International law. The new Designs Act of 2000 repealed the old Act of 1911.
Design is a physical feature which is applied to an article to make it attractive for the consumers. Design of a product is an asset and increases the brand value of the company and overall competitiveness in the market. There is always a threat to the design of a product as there are many infringers in the market making duplicate products by copying the design and violating the rights of its creator.
It is highly recommended to register the design to avail the benefits of the registration. The holder/owner of the registered design gets the exclusive right to use the design in any article and is protected against any infringement or unauthorised use.[4]
The Designs Act, provides for the registration of designs and Section 4 of the Act specifically defines the designs which are not registrable under the Act:
- if it is not new or original;
- has already been in the public domain or disclosed anywhere in India or in any other country by publication in tangible form or by use in any other way prior to the date of filing or where applicable, the priority date of the application for the registration. This primarily means that the design for which the application has been made must be original as it has not been published anywhere because publication means making it available in the public. Also, a design used solely for the purpose of research or private use does not amount to publication;
- The design applied for registration is not distinguishable from known designs or combination of known designs already registered; and
- Any design applied for registration contains obscene or scandalous matters.
It is mandatory for a particular design to be unique with respect to the article to which it has been applied. However, a combination of already known designs can be registered if the combination gives new physical existence and appeals to the eye of the consumer.
The registered proprietor of design gets the copyright in the design for a period of ten years from the date of registration. The owner can also make an application along with the prescribed fee to the Controller before the expiry of the original period of ten years to extend the term of design protection and the same can be further extended for the period of five years.[5]
In furtherance of this, Section 22 of the Act, provides for the remedies in case of any act without the consent of the owner of the design which includes:
- Fraudulent imitation of design except with the license or with the written consent of the owner of the design.
- Import design for the purpose of sale or any article belonging in the class in which design has been registered and has been applied to the design.
- To publish or cause to be published or exposed for the purpose of sale.
Any person in contravention of this section would be liable to pay a sum not exceeding twenty-five thousand rupees, and also, a suit can be filed before the civil court for infringement, and claim relief of injunction and/or damages against infringers.
The registration of a design can also be cancelled on the grounds provided for, under Section 22 of the Act. Any interested person can file a petition to the controller for the cancellation of registration of the design any time after its registration if:
- The design is previously registered in India or published in India or in any other country prior to the date of registration;
- It is not novel or original; and
- It is not registerable under the provisions of the Act or it is not a design as defined under section 2 of the Act
Appeal from such order of the controller lies before the High Court.
Case Laws
The Supreme Court in the case of Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd.[6], clearly defined the object and purpose of the Act and held that distinction between the design on the engraved rollers and glass sheets was accepted by the respondent.
The applicant in the application form for the registration of design specifically mentioned that the design would be applied only to the glass sheets, and he would have exclusive right to use the design only to glass sheets despite the fact that it has been already in use with the engraved rollers.
The designs used were on engraved rollers and any new application of design in the new article was eligible for the protections under the Act. Appellant failed to prove that the design has been published already. The fact that the design was published in the U.K. patent website did not clearly establish the publication of design earlier on the glass sheets, therefore, the appeal was dismissed and the position of the respondent was restored.[7]
In another case of M/s S.K. Industries v. Dipak Ghosh[8], the Court was considering a design registered with respect to a cup in which jelly was being packed and marketed. The Court was of the view that the design of the cup was not novel and does not show any application of mind or creativity. The shape was a geometrical shape and there was no originality in it. There was no specific novelty or originality claimed in the application with respect to the design.
Also, in the case of Tarun Sethi and Ors. v. Vikas Budhiraja and Ors.,[9] the Court while dealing with the novelty and originality of design held that mere modifications or changes to the previously used design or shape is not sufficient to claim it to be new or original.
Conclusion: Designs Law in India
The protection of industrial design helps in the development and promotion of innovative ideas in the industrial sector. The remedies are available to the proprietor of the design as an incentive by the Design’s Act to catch hold of the infringer and protect the interest of the right holder. The new Act effectively ensures the protection of designs and registration of new and original designs thereby, promoting the future of product designs in the national and international markets to attract the consumers.
[1] Microfibers Inc. v. Girdhar Co. and Anr., 2006 (32) PTC 157
[2] The Hague System for the International Registration of Industrial Designs, 1925. Available Here
[3] Amp. Incorporated v. Utilux Pty. Ltd., (1971) FSR 572
[4] R. Anthony Reese, “What should copyright protect? What if we could reimagine copyright?”, ANU Press 2017 (111-146).
[5] R. Anthony Reese, “What should copyright protect? What if we could reimagine copyright?”, ANU Press 2017 (111-146).
[6] Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd., 2008 (10) SCC 657
[7] Troikaa Pharmaceuticals Ltd. v. Pro Laboratories Ltd. 2008 3 GLR 2635
[8] M/s S K Industries v. Dipak Ghosh, (2010) 42 PTC 96 (Del).
[9] Tarun Sethi & Ors. v. Vikas Budhiraja & Ors. Delhi High Court CS(OS) 1841/2008