Designs under Designs Act, 2000

Introduction

Commercial success of an industry and its products highly depends on how it grabs the attention of the customer.  The Designs Act 2000, provides for the registration, application and protection of such designs in the form of intellectual property.  Any intellectual property to be registered follows a “first to file first to get” system where the inventor should register through an application as earlier as he has invented it.  In India the history of designs backs a century when the Patent and Designs Act, 1872 was passed by the British government to the last repealed act as Designs Act of 2000, when India became a member of WTO in the year 1995. This law was enacted in compliance with the Trade Related Aspects of Intellectual Property Rights having its enforcement on 11th may 2001.

Locarno classification

The Locarno classification is administered by the World Intellectual Property Organization (WIPO) through a multilateral treaty.  This classification consists of a list of 32 classes and 219 subclasses with the explanatory notes into which any design can be incorporated[1].  This list includes around 6797 indications of different types of products.  Before India has adopted the Locarno classification it classified products for industrial designs on the basis of the material which has been used to make the product. Only after the enactment of the new law the design was classified on the basis of the subject matter the design.

Objectives of the Designs Act of 2000-

The predominant objective of Designs Act is to consolidate the earlier laws which were not in compliance with the International design jurisprudence and other main objective is for the protection of novel and innovative original designs from getting copied resulting in the loss for the proprietor and also for ensuring that the creator or the originator of the design is not deprived of his rights and reward for creating it. This industrial design also helps the property holder to increase the attention of the customers thereby increasing the commercial value of the product for expansion of market.  The important objective of designs act is also to prevent the exploitation of designs by big hands who adopt anti-competitive ways to compete its rival.[2]

Design- What is it all about?

Design is defined as “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; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device”[3]

What will it not include?

Design does not include any mode or principle of construction or anything which is in substance a mere mechanical device as they are protected by Patents depending upon its Novelty, Obviousness and Industrial applicability. 

Designs also does not include the Trademark as defined in Clause V of Subsection (1) under Sec 2 of the Trademarks Merchandise marks Act 1958 or Property Mark as defined in Section 479 of Indian penal Code 1860 or any artistic work as defined in Clause C of Section 2 of the Copyright Act 1957[4].

The word article is defined under section 2(a), reads as article means “any article of manufacture and any substance artificial or partly artificial and partly natural and includes any part of in article capable of being made and sold separately”.

Important features of Designs Act 2000

• Absolute novelty is the absence of prior publication of the same design in any other article. (Sec 4(a),(b) &(c)).
• The proprietor can also apply for the copyright in the design for the period of 10 years from the date of registration and for avoiding confusion as many products can be registered for copyright and also for design but remedies cannot be sought in both the as individual. (Sec 11) reads as
• “When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.
• If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years”.
• The act provides for the jurisdiction of High courts to entertain the transferred cases from district court provided the person is challenging the validity of any registration. (Sec 36)
•  This act prohibits and punishes infringement of registered layout design with imprisonment of up to three years or fine of Rupees 50,000 approximately to maximum of Rupees 10 lacs approximately. Sec 22(2)
• This act provides for a system of anyone can have a certified copy of the registered design to inspect it for anticipating of Novelty after its publication whenever a license is brought within the domain of public records. (Sec 21)
• This act also provides for the delegation of powers of Comptroller and the duty of the examiner. (Ch.7)
• It also provides for restriction to avoid Anti-competitive practices in the market.

Prerequisites for the registration of a design-

A design has to satisfy certain prerequisites for getting registered under the Designs Act 2000 as per Section 4 of the Designs Act 2000 the design if lacked novelty cannot be registered.  At the same time as per Section 16 of the Designs Act 2000, a mere disclosure of design shall not be deemed to be the publication of Design if the purpose of the design is disclosed in good faith to a person who has breached the good faith trusted worthy on him and as per Section 21 of the Indian Designs Act, 2000 the disclosure of Designs for the purpose of exhibition cannot invalidate or prevent it from registration[5].

The Design must be original and for the purpose of originality it is defined under Section 2(g)  which states original means “originating from the author of such design and includes the cases which the old in themselves yet are new in their application”.  As per the case of “Hello Mineral Water Private Limited v.  ThermoKing California Pure[6]” it was held that mere shape and form is not sufficient to prove novelty.  The Court observed that Novelty also involved the presence of some new element or Innovative  position of an old element if it is in combination with which is different from anything found in any prior structure.

Design must have not published anywhere and there should not be any tangible copy available already in the market if the registration of design is short in digital format.  At the same time secret and private use of any design will not amount to the publication as it is only for experimental purposes.

The Court in the case of “Kemp and Company v. Prima plastics Ltd.[7],” observed that the discussion of design by the proprietor to any third person cannot be cleaned as publication as the disclosure was in good faith and in conformation to Section 16 of the Designs Act 2000.

Items which cannot be registered as a design under the Designs Act 2000.

Signs, Emblem of flags of any country, size of any article if it is changed,  structures in buildings,  trademarks,  any principle of inventions,  workshop improvements of components of already existing assembly,  the parts of any article which are not manufactured and sold separately cannot be registered as a design.

Infringement of Industrial Design–

In the Case of “Disney Enterprises Inc. v. Prime Houseware Ltd[8].,”  Mumbai based company known as time houseware used to manufacture characters like Donald Duck and Mickey Mouse which resulted in suit being filed by Disney Enterprises for the infringement of International Registered Designs.  This was the case were International Registration of Industrial Design become a matter of concern in the court of law.  It was held by the Court that the plaintiff ‘s Trademark is not protected under Indian law but however the Court passed an order for delivering all the influencing material to the  petitioner company and ruled that it should not be used further. 

Piracy of Registered Designs–

As per Section 22 of the Designs Act 2000, any obvious fraudulent imitation of a registered design without the proprietors concerned is considered unlawful.  This Section also prohibits such closely resembling design.  It provides for a compensation which shall not exceed Rupees 50000 in such case of infringement.

In the case of “Bharat glass tube Limited v. Gopal glass Works Ltd.[9],” Design was registered by the respondent company in collaboration with German company.  The appellant started using the design for their marketing which resulted in an infringement suit filed by the respondents who moved to the court.  The appellants contended that the respondent’s Design were not Novel as the German company has already been using it since 1992 and it was already published in United Kingdom Patent Office and it has lost its originality.  Rejecting all such of the arguments of the appellants the High Court on its appeal restored the Designs to the respondents which was later upheld by the Supreme Court of India.

Procedure for Registration of a Design-

Chapter 2 provided for the Procedure for the Registration of Design in India for which an application of registration shall be made in the patent office to the Controller into the prescribed form along with the prescribed fee. The controller after the receiving of application under this act can verify if it is novel or original if the design and has not previously published anywhere and not against public policy or morality can register it. As per Section 5 of the Designs Act 2000 the application under the action be filed in the patent office and the design should be registered in a specific class not more than one class. The controller if rejected any design and have not registered it the person aggrieved may file an appeal before The High Court.

Who are entitled for the registration under Design Act 2000?

 As per the Designs Act of 2000, a proprietor whose design has fulfilled all the prerequisites for the susceptibility of providing registration can be entitled of registration.  For the purpose of the same as per Section 2(j), a proprietor includes the author of the design, or one who has acquired design for valid consideration, or a person to whom the design is devolved from the title holder.

The interface of design with copyright. 

The copyright and design are exclusive for legal purposes in accordance to Section 15(2).  As per the said Section a copyright in any design which is capable of being registered if not registered shall  cease if any other article is registered with design and if more than 50 times the designed article is been produced by the owner of the copyright.  In the case of “Mattel incorporation v. Jayant Agarwa[10]l” the Mattel lost it copyright in design which could have been registered if it is not registered and has already produced the article for more than 50 times.  In an infringement suit metal could not restore its copyright for it’s Scrabble board.

Landmark Judgments Relating Designs Act, 2000

“Microfibers Incorporation v. Giri and Co & ANR[11]”

The Delhi High Court suggested a distinction between copyright and design and it observed that a copyright protection ipso facto will not merit a design and a design registration is concerned with the class of goods. It also suggested the view of copyright as a ‘work of art’ and design as a ‘work of Commerce’.  If the work of art is applied commercially due to its industrial utility it ceases for the protection of copyright and only entitled to the protection of design.

“Tarun Sethi & Ors. v. Vikas Budhiraja & Ors”[12].

The Delhi High Court held that a minor displacement and changes made through variations and modifications if substantially didn’t alter a design which was already registered are previously published shape available in the private Publication is not sufficient to prove Novelty of a design.

The Court also took into consideration the previous judicial pronouncements like Kestos Ltd. v. Kempat Ld. & Vivian Fitch Kemp[13] and Allen West & Co, Ld. v. British Westinghouse Electric and Manufacturing Co. Ld[14] for the determination of novelty.

Troikaa Pharmaceuticals Ltd v. Pro Laboratories Ltd.[15],

A tablet in D shaped design was provided to be capable have been registered under the designs act do the shape Divas not novel its application in the tablet pass the test of ascertaining but it is identical to any other designs and can be judged by eye  through all of its component features.

Reckitt Benckister Case[16]–

In this case it was decided that for the purpose of evaluation under Section 4(b) the Prior disclosure also includes the prior registration made in foreign countries such as UK, USA and Australia.  This decision was upheld by the division bench.  In the twofold conclusion the division bench observe that if an  application is made for registering a design in India within 6 months after the application was made in abroad for the registration of such design.  If no such application is made within 6 month the availability of the design which is registered abroad in public domain will result in design not novel  and to be considered as under public domain of Section 44(2)  read with section 4(b). The prior judgements of Gopal Glass Works[17] and Dabur[18] was also taken into consideration.

Sree Vishnu Bottles v. The State of Tamilnadu[19].

This case is about the rights of resellers. The petitioners are an enterprise which collect the bottles of beer and brandy from small shops and transport that to the other states such as Karnataka and Madhya Pradesh.  They were doing this business for 30 years without any interruption but recently they were stopped by the police and the enforcement agencies  as few of the bottles were registered under the designs act 2000 and the transportation is illegal.  The court held that the relief they sought was awake and such blanket order cannot be passed by the court.

M/S. Whirlpool of India Ltd. v. M/S Videocon Industries Ltd[20].

In this case the Whirlpool would have got two designs registered. Videocon also got a design registered which covers the same features of shapes and configuration and that was evident at its first look to be its replication. The Videocon contended that it has already got the design registered and therefore it is not liable for the infringement or passing off.  The Court rejected the contention of the Videocon and held that there are similarities between the plaintiff and the defendant and therefore Videocon was held liable for the infringement and for the passing of the plaintiff design.

Conclusion-

The design increases marketability of a product and recognizes the reward of the author and economic remunerations for the proprietor.  This plays a very crucial role for preventing others to free ride on once innovation and ideas that has an aesthetic value. Industrial designs also includes 3D mark and this often happens to overcome sharp competition in the market.

[1] Official Website, WIPO, https://www.wipo.int/classifications/locarno/en/ 

[2] Tushar Verma, Salient features of the Design Act, 2000, IP Leaders https://blog.ipleaders.in/salient-features-design-act-2000/#:~:text=The%20first%20Act%20that%20gave,repealed%20this%20Act%20of%201872.

[3] Sec 2(d) of the Designs Act, 2000.

[4] Ibid

[5] Section 16, The Designs Act, 2000.

[6] Hello Mineral Water Pvt. Ltd. vs Thermoking California Pure on 20 July, 1999; Equivalent citations: 2000 (56) DRJ 700

[7] M/S. Kemp & Company & Another vs M/S. Prima Plastics Ltd. on 18 September, 1998; Equivalent citations: 1999 (1) BomCR 239

[8] “Disney Enterprises Inc. v. Prime Houseware Ltd.,”  https://indiankanoon.org/doc/187470521/

[9] Bharat glass tube Limited v. Gopal glass Works Ltd 2008 (37) PTC 1 (SC)

[10] Mattel Inc. v. Jayant Agarwalla, IA No. 2532/2008 in CS (OS) 344/2008

[11] MICROFIBERS INC. v. GIRDHAR & Co. & ANR, RFA (OS) NO.25/2006

[12] Tarun Sethi & Ors. v. Vikas Budhiraja & Ors. Delhi High Court CS(OS) 1841/2008

[13] Kestos Ltd. v. Kempat Ld. & Vivian Fitch Kemp (1936)53 RPC139

[14] Allen West & Co, Ld. v. British Westinghouse Electric and Manufacturing Co. Ld. (1916)33 RPC 137

[15] TROIKAA PHARMACEUTICALS LTD v. PRO LABORATORIES LTD, (2008)3GLR2635

[16] Reckitt Benckiser (India) Ltd. v Wyeth Ltd. (FAO(OS) No. 458/2009) Delivered on October 8, 2010;

[17] Gopal Glass Works Ltd. Vs. Assistant Controller of Patents and Designs 2006 (33) PTC 434 (Cal);

[18] Dabur India Ltd. Vs. Amit Jain & Anr. 2009 (39) PTC 104

[19] Sree Vishnu Bottles vs The State Of Tamil Nadu W.P.Nos.1295 and 1296 of 2012 on 9 February, 2012

[20] M/S.Whirpool Of India Ltd vs M/S.Videocon Industries Ltd SUIT (LDG) NO. 1675 OF 2012 on 25 July, 2012

Author Details: Mukesh M [Student; Tamilnadu Dr. Ambedkar Law University]