Rights of Design Holder

Design protection is an important aspect of intellectual property rights, aimed at safeguarding the visual aesthetics and unique appearance of products. In India, design protection is governed by the Designs Act, 2000, which outlines the rights of design holders, the process of registration and remedies against infringement.

Understanding Design Protection in India

A ‘design’ under the Designs Act, 2000, refers to the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article by any industrial process, which in the finished article appeal to and are judged solely by the eye. The protection of designs is essential as it encourages creativity and innovation, allowing designers to benefit commercially from their aesthetic creations.

Registration and Rights Conferred

The process of obtaining design protection begins with registration. Under Section 5 of the Designs Act, 2000, any person claiming to be the proprietor of a new or original design can apply for its registration. Once registered, the design holder is granted ‘copyright in design’ for a period of ten years, which can be extended for an additional five years.

Exclusive Rights of the Design Holder

The registered proprietor of a design enjoys several exclusive rights, akin to those of a copyright holder. These rights are important for preventing unauthorised use and ensuring the commercial exploitation of the design. The key rights include:

Exclusive Application Rights

According to Section 2(i) of the Designs Act, ‘copyright in design’ implies an exclusive right to apply the design to any article in the class for which it is registered. This prevents others from manufacturing, selling or distributing products bearing the design without the proprietor’s consent.

Licensing Rights

The design holder can grant licenses to third parties, allowing them to use the design for a fee. This is a significant commercial right, enabling the design holder to generate revenue while retaining ownership of the design.

Disclosure and Publication Rights

The proprietor has the exclusive right to disclose or publish the registered design. This control over publication helps in maintaining the novelty and uniqueness of the design, preventing premature or unauthorised disclosures.

Importation Rights

The registered design holder has the sole right to import the design for commercial purposes. This right is essential for controlling the market and preventing the influx of infringing products from abroad.

Protection Against Infringement

Infringement of a registered design, commonly referred to as design piracy, is a serious offence under the Designs Act, 2000. Section 22 of the Act details the acts that constitute design piracy and provides remedies for the design holder.

Acts Constituting Design Piracy

1. Unauthorised Application: Applying the registered design to any article without the license or written consent of the design holder.
2. Unauthorised Sale or Importation: Selling or importing for sale any article bearing the registered design without authorisation.
3. Fraudulent or Obvious Imitation: Producing any article that closely resembles the registered design, thereby misleading consumers and infringing on the design holder’s rights.

Legal Remedies for Design Piracy

To combat design piracy, the Act provides two primary legal remedies:

1. Damages: The design holder can claim damages for each act of infringement. As per Section 22(2), a person found guilty of design piracy may be liable to pay Rs. 25,000 per infringement, with the total recoverable amount for any single design not exceeding Rs. 50,000.
2. Injunction: The design holder can seek an injunction to prevent further infringement. This legal remedy is important for stopping ongoing violations and protecting the design holder’s market.

Defences Against Infringement Claims

In cases of alleged design piracy, the defendant has several defences at their disposal. These defences aim to challenge the validity of the infringement claim or the design registration itself. Key defences include:

1. Non-Registration: Arguing that the plaintiff’s design is not registered, thereby nullifying the infringement claim.
2. Lack of Originality: Claiming that the registered design is not original and should be canceled.
3. Expired Registration: Asserting that the design’s registration period has expired, removing the protection granted by the Act.
4. Bona Fide Intent: Demonstrating that the plaintiff approached the court without a genuine intention to protect the design, but rather to harass the defendant.
5. Counter-Registration: Showing that the defendant’s design is also registered, thereby providing them with legal protection.

Judicial Interpretations and Case Laws

Judicial interpretations play an important role in shaping the understanding and application of design rights. The Delhi High Court’s ruling in Polymer Papers Ltd. v. Gurmit Singh (2002) is a landmark case in this regard. The court clarified that ‘copyright in design’ can only be claimed on registered designs, emphasising the importance of formal registration for legal protection.

Practical Considerations for Design Holders

For design holders, several practical considerations are important for effectively managing and protecting their rights:

1. Timely Registration: Ensuring that designs are registered promptly to secure protection and prevent unauthorised use.
2. Vigilance Against Infringement: Actively monitoring the market for potential infringements and taking swift legal action to address violations.
3. Licensing and Commercialisation: Strategically licensing designs to third parties to maximise commercial benefits while retaining control over the use of the design.
4. Maintaining Records: Keeping detailed records of the design development process, registration and any licensing agreements to support legal claims if necessary.

Conclusion

The rights of design holders in India, as outlined in the Designs Act, 2000, provide robust protection for the aesthetic aspects of products. These rights not only safeguard the interests of designers but also promote innovation and creativity in various industries.

By understanding and leveraging these legal provisions, design holders can effectively protect their creations, prevent unauthorised use and capitalise on their designs’ commercial potential. The evolving judicial interpretations and the practical application of the Act further enhance the framework, ensuring that design protection remains a cornerstone of intellectual property rights in India.