CRITICAL ANALYSIS OF THE DESIGNS ACT, 2000.

SUBMITTED AS A PARTIAL FULFILLMENT OF THE COURSE CURRICULLUM OF CLINICAL PAPER (IPR).

SUBMITTED TO: MRS. NIDHI BUCHFACULTY CO-ORDINATOR

SUBMITTED BY: REGN NO. – 04A053.X SEMESTER.

GUJARAT NATIONAL LAW UNIVERSITY.

1

CONTENTS PAGE NUMBER1.Introduction 32. Salient new features of the designs Act, 2000.

4

3. Essential characteristics of a design. 6

4. Subject-matter of designs.8

5. Procedure of registration of a design.10

6. Infringement of a registered design and remedies under the act.

12

7. Overlapping Legislations: Copyright Under The Designs Act & Copyright Act.

14

2

INTRODUCTION

Liberalization has brought with it unlimited options for the Indian consumer who now has numerous alternatives for any single product. This change has revolutionized the Indian consumers outlook as also the sellers approach. No longer do the sellers have to establish only their reliability and integrity in the market, but they have to also appease the aesthetic senses of the consumer. More than ever before, sellers are required to package and market their products in a manner which appeases the consumer and which a consumer could recognize and relate to. Considering the huge amount of capital and effort expended by manufacturers and marketers in establishing the recognition of consumers through the presentation and appearance of their products, it is essential that the law protect the designs that emanate from these efforts of the manufacturers of goods.

Like other intellectual property rights, the right in a design is also an intellectual property right. The object of the Designs Act is to protect the aesthetic appearance of an article if it is original or novel. The law presumes that an aesthetic appearance is the result of intellectual efforts. The protection given by the law relating to designs to those who produce new and original designs is primarily to advance industries and keep them at a high level of competitive progress. There has been a considerable increase in the registration of designs. To provide more effective protection to registered designs and to promote designs activity, in order to promote design element in an article of production, it has become necessary to make the legal system of providing protection to industrial designs more efficient. It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary, to create the required incentive for design activity, while removing impediments to the free use of available designs.

The Designs Act, 2000 is a consolidating and amending Act relating to the protection of design. From the statements of the objects and reasons of the new Act, it appears that the framers of the law became aware of the considerable progress in the field of Science and technology, the changing scenario in the international trade and globalization of Indian economy, which

3

had taken place since the enactment of the old Act in 1911, also made it essential for this law to be at par with the international trends in design administration. As such, one of the objects of the new Act was to ensure effective protection to registered designs. One of the objects was also to ensure that law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity and one of the main objects was to remove impediment to the free use of available design.1

SALIENT NEW FEATURES OF THE DESIGNS ACT, 2000.

1. International classification based upon Locarno classification2 has been adopted wherein the classification is based on articles, the subject matter of design. Under the previous law a Design was classified on the basis of the material of which the article was made.

2. A provision claiming priority from a Design application filed in any Convention country has been introduced. India is a member of WTO, Paris convention and has also signed Patent Co-operation Treaty. As a result members to these conventions can claim priority rights.

3. The definition of Design under the new Act has been widened. Under the previous law, the Design registration was granted only for the visual appearance of an article which included shape, configuration pattern, and ornamentation whether in 2 or 3 dimensions. Under new law, a Design registration can now be obtained for new or original features of shape, configuration pattern, ornamentation or composition of lines or colours as applied to an article, whether in 2 or 3 dimensions or both.

4. A concept of absolute novelty has been introduced whereby a novelty would now be judged based on prior publication of an

1 IAG Company Ltd. v. Triveni Glass Ltd. 2005 (30) PTC 1432 See Locarno Classification, available at http://www.ipo.gov.uk/types/design/d-applying/d-after/d-class.htm.

4

article not only in India but also in other countries. Under the previous law, the position was ambiguous.

5. A Design registration has been brought within the domain of the public records right from the date it is physically placed on the Register. Any member of public can take inspection of the records and obtain a certified copy of the entry. In the previous Act, there was a 2-year confidential period post registration, which prohibited taking inspection/certified copy of any entry in the records.

6. A Design registration would be valid for 10 years (from the date of registration which is also the date of application) renewable for a further period of 5 years. Under the previous law the validation period was 5 years which was extendable for 2 terms of 5 years each.

7. A Design registration can be restored within a year from its last date of expiry. Under the previous law, no provision relating to restoration upon expiration of the Design registration was provided.

8. Cancellation of a Design registration under the new law is possible only before the Controller and there are a couple of additional grounds which have been recognized:

8.1 The subject matter of Design not registerable under the Act.

8.2 The subject matter does not qualify as a Design under the Act.

Under the previous Act, the cancellation was provided for before the Controller within 12 months from registration on limited grounds and in the High Court within 12 months or thereafter.

9. Under the new Act, a District Court has been given power to transfer a case to the High Court having jurisdiction in the event the defendant challenges the validity of Design registration.

The above mentioned new features have been introduced with the intent of bringing the Indian design legislation in conformity with other design legislations of the advanced economies of the

5

world and at the same time give necessary impetus to trade and industry in this country.

ESSENTIAL CHARACTERISTICS OF A DESIGN.

Those who wish to purchase an article for use are often influenced in their choice not only by its practical efficiency but also by its appearance.3 The physical appearance of goods really means design. The appearance of an article is dictated by the design it wears. The primary purpose of a design is to interest the aesthetic and visual senses of a consumer with intent to

3 Samsonite Corporation v. Vijay Sales 1998 (18) PTC 372 [Del].

6

induce him into purchasing the article, without the necessity of having to reveal the identity of the manufacturer or the producer. Design must necessarily mean something which determines the appearance of an article, or some part of an article. Designs are applied to an article with the objective of ornamenting the article. If a particular feature is so embossed on an article that it does not appeal to the eye at all and is not capable of attracting a purchaser in any manner for the purchase thereof, then such feature will not fall within the scope of a design.4

Design, is defined in Section 2 (d) of the Designs Act 2000 as follows:

S. 2(d) – 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; but does not include any trade mark 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.

Design primarily represents features of shapes, configuration, pattern, ornament or composition of lines. Design does not imply the article but the features which are a conception, suggestion or an idea of a shape.5 Such features should be applied to an article, which in the finished article appeals to and are judged solely by the consumers eye.

If a design is not visible to the eye then it will not qualify for registration under the Designs Act for the very reason that it would fail to influence consumers into purchasing the article on which it is embossed.6 The eye should be the eye of an average

4 Corning, Incorporated, U.S.A v. Raj Kumar Garg, 2004 54 SCL 378.

5 Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors 2002 (24) PTC 449 [Del]

6 Re. Stenor Ltd. v. Whitesides (Clitheroe) Ltd., 63 RPC 81.

7

consumer and not that of an expert or an experienced / seasoned dealer.

For the purposes of registration under the Designs Act it is not of significance whether the design has any utility and/or usefulness.7 Thus an important aspect of a design is that it should have the ability of being the deciding factor for purchase of an article by a consumer. If a consumer develops a positive perception of an article purely on the basis of its outwardly features, irrespective of its utility, then such features would definitely qualify for registration under the Designs Act. Similarly, a visual characterization of an article which influences a person to purchase an article in preference to other articles which are identical in function but differ in appearance, such characterization would also meet the criteria of a design.8 If the features of a design are dictated, caused or prompted solely by or attributable only to the function which the article is required to perform, then such features cannot be registered as a design, even though such features may also appeal to the eye. A design will not protect any technical features of an article.

For a design to qualify for registration under the Designs Act it is important that the design should also he new and original. The test for novelty and originality is dependent on determining the type of mental activity involved in conceiving the design in question. If the design is a mere trade variation of a previous design then the designer could be said to have kept an existing design in view and made some changes. There should be some original mental application involved when conceiving a new design.9

The introduction of ordinary trade variants into an old design will not make the new design novel or original. Mere workshop improvements will not qualify for registration under the Designs Act. The word original implies that the person had originated something; that by the exercise of intellectual activity he had started an idea which had not occurred to anyone before.

7 Glaxo Smithkline Consumer Healthcare and Co. KG v. Amigo Brushes Private Limited and Anr, 2004 (28) PTC 1 (Del).

8 Samsonite Corporation v. Vijay Sales, supra Note 3.9 Western Engineering Company v. America Lock Company, ILR (1973) 11 Del.

8

Original would mean something that no person had created earlier for any purpose whatsoever. New would imply something which is not necessarily original but which has been applied to an article for the first time. What is novel need not also be new. There may be a new arrangement of features that may appeal to the eye.10

SUBJECT-MATTER OF DESIGNS.

An article is distinguished not only by its utility but also by its visual appeal which too usually play an important role in shaping the buyers preference for the article. Therefore, the design of an article and even design of its packaging is important from the commercial viewpoint.

Designs which are not new or original or have been disclosed to the public anywhere in India or in any other country by publication or not significantly distinguishable from known designs or combinations of known designs or comprise or contain scandalous or obscene matter are not registerable under the Designs Act. A design can be registerable only when it is new or original and not previously published in India. Though the word publication has not been defined by the Designs Act, 2000, to constitute publication, a design must be available to the public or it has been shown or disclosed to some person who is not bound to keep it secret.

Publication can occur in two types

(i) Publication in prior document.

(ii) Publication by prior user.

Publication in prior document would result when the design has already been published in a document which is easily available. The private or the secret use or an experimental use of a design will not constitute publication by prior use. The exhibition of a design or an article to which the design has been applied in an

10 Wimco Ltd. v. Meena Match Industries, AIR 1983 Del 537.

9

industrial or other exhibition notified by the Central Government would not constitute infringement of the design if prior notice of such exhibition is given to the Controller of Patents and Designs and an application for registration is made within six months of the date of first exhibiting or publication of the design.

The Delhi High Court has held that Publication means the opposite of being kept secret. It is considered published if a design is no longer a secret. There is publication if the design has been disclosed to the public or the public is put in possession of the design. The disclosure even to one person is sufficient to constitute publication.11

A design would be registerable if the pattern though already known is applied to a new article. What is essential is that the design must be new with respect to the class of article to which it has been applied. The novelty or originality is to be judged on the evidence of experts in the trade. An expert who is aware of what is common trade knowledge and usage in the class of goods to which the design is applied would be the one entitled to pass the verdict on the novelty and originality. Colour may form a part of design but the colour by itself cannot constitute a subject-matter of design.

11 Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors 2002 (24) PTC 449 [Del]

10

PROCEDURE OF REGISTRATION OF A DESIGN.

The procedure for registration of a design is comparatively simple when compared to procedure for registration of a patent or a trademark.

Briefly, the procedure consists of the following steps:

(1)  Submission of application

(2)  Acceptance / objections / refusal

(3)  Removal of objections/appeal to Central Government

(4)  Decision of Central Government

(5)  Registration of the design.

Submission of application

The proprietor of the design has to file application for registration of the design. According to section 5(1), the controller may on application made by any person claiming to be the proprietor of any new or original design not previously published in any country and which is not contrary to public order and morality, register the design under the Act. The application is to be accompanied by the prescribed fee and in prescribed Form and in prescribed manner.

11

The application under section 5 shall be accompanied by four copies of the representation of the design and the applicant shall state the class in which the design is to be registered. The applicant is also to file a brief statement of novelty with the: application.

The Designs Act, 2000, which he claims for his design lays down 31 classes plus miscellaneous class 99 of goods to which ornamental designs, etc., and which are capable of being registered under this Act generally apply.

Acceptance/Objection

On consideration of the application if the Controller finds that the applicant fulfils all the prescribed requirements, he shall register the designs. If on consideration of the application any objections appear to the Controller, a statement of these objections shall be sent to the applicant or his agent.

Removal of Objection/Appeal to the Central Government

The applicant has to remove the objection within one month of communication of the objections to him failing which the application shall be deemed to have been withdrawn. He may also apply to the Controller for being heard on the matter. When the Controller refuses the application after the submission, he may directly appeal to the Central Government whose decision is final.

Decision of the Central Government

The decision of the Central Government on the registrability of the design is final.

Registration of the Design

On acceptance of design filed in respect of an application, the Controller shall direct the registration and publication of the particulars of the application and the representation of the article to which the design has been applied, in the Official Gazette. When published in the Gazette, the controller may select one or more views of the representation of the design, which in his opinion would depict the design best.

12

(1) When the design is accepted, there shall be entered in the Register of Design, in addition to the particulars required by the Act, the number of the design, the class in which it is registered, the date of filing the application for registration in this country, the reciprocity date, if any, claim for the registration, and such other matters as would effect the validity or proprietorship of design.

(2) When such Register of Design is maintained wholly or partly on computer under floppies or diskettes, such computer floppies or diskettes shall be maintained under superintendence and control of Controller and in case of any dispute or doubt with regard to information of designs, the information as contained in the back-up file or master file shall be final.

(3) Where the accepted design is one in respect of which a reciprocity date has been allowed, registration, the extension or the expiration of the copyright in the said design shall be reckoned from such reciprocity date.

On the completion of the above procedure, the Controller shall grant a certificate of registration to the proprietor of the design.

INFRINGEMENT OF A REGISTERED DESIGN AND REMEDIES UNDER THE ACT.

Infringement of a copyright in design is termed as "Piracy of a registered Design". It is not lawful for any person during the existence of copyright to do the following acts without the consent or licence of the registered proprietor of the design. Section 22 of the Designs Act, 2000, lays down that the following acts amount to piracy:

(1) To publish or to have it published or expose for sale any article of the class in question on which either the design or any fraudulent or obvious imitation has been applied.

13

(2) To either apply or cause to apply the design that is registered to any class of goods covered by the registration, the design or any imitation of it.

(3) To import for the purpose of sale any article belonging to the class in which the design has been registered and to which the design or a fraudulent or obvious imitation thereof has been applied.

In fact any unauthorized application of the registered design or a fraudulent or obvious imitation thereof to any article covered by the registration for trade purpose or the import of such articles for sale is a piracy or infringement of the copyright in the design.

Fraudulent/Obvious Imitation:

A distinction is made between fraudulent and obvious imitation. The only common factor between the two is that both should be imitations. Thus even in the case of fraudulent imitation the design applied must be an imitation of the registered design. In a fraud the imitation has been made with the intention to deceive another person with the knowledge that what is being done is a violation of the other persons right. Where, therefore, fraudulent imitation is established even if the imitation is rather clumsy and not obvious, the Court will declare it as an infringement of copyright in the design. There must be exact duplication, an imitation of the registered design. Nothing less than imitation is sufficient to establish piracy.

Fraudulent imitation must mean If a man knowing that the pattern is a registered design, goes and imitates it, and does that without sufficient invention on his own part, that would be fraudulent imitation, if in fact it is an imitation (an exact copy of the registered design).

Judicial Remedy

The judicial remedy for infringement of a registered design recommended in the Act is damages alongwith an injunction. Section 22(2) stipulates remedy in the form of payment of a certain sum of money by the person who pirates a registered

14

design. A suit in the appropriate manner for seeking the relief in the form of an injunction is also recommended.

Jurisdiction of the Court

A suit under section 22 is to be instituted in a District Court or a High Court depending upon the quantum of damages claimed. The provisions of this section do not exclude action for passing off and for rendition of accounts. A person complaining infringement of his design can certainly ask for accounts from the defendant to show the profits earned by the defendant which would be the loss sustained by him which he could claim as damages. A suit for injunction restraining infringement of registered design and for rendition of accounts is, therefore, maintainable only when filed in the appropriate court.

15

OVERLAPPING LEGISLATIONS: COPYRIGHT UNDER THE DESIGNS ACT & COPYRIGHT ACT

The exclusive right conferred on a design is termed as copyright in design. This should not be confused with exclusive right granted for literary and artistic work also termed a copyright in the literary and artistic work. There may be certain designs which can qualify for registration under both the Designs Act and the Copyright Act. Copyright in an industrial design is governed by the Indian Designs Act 2000.

If a design is registered under the Designs Act, it is not eligible for protection under the Copyright Act.12 In the case of a design which is capable of being registered under the Designs Act, but not so registered, copyright will subsist under the Copyright Act, but it will cease to exists as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the Copyright or with his license by any other person.13 It would, therefore, follow that those industrial designs which are not registerable under the Designs Act get protection under the Copyright Act provided it comes within the scope of section 13 of the Act as original Artistic works.

A design capable of being registered means a design possessing when they were made those essential characteristics which qualify them as designs. If such designs are, at that time, used or intended to be used for the purposes of industrial reproduction, they are not to qualify for Copyright under the Copyright Act.14

There is an overlapping area of the applicability of the Designs Act and the Copyright Act but they cannot be applied at the same time for protection of the same subject-matter.

12 S. 15(1) of the Copyright Act 1957.13 S.15 (2) of the Copyright Act 1957.14 Interlego v. Tyco [1988] RPC 343.

16