indian designs law

7/27/2019 Indian Designs Law

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Awareness Course onIntellectual Property

RightsUNIT 9 INDIAN DESIGNS LAW

Structure

9.1 IntroductionObjectives

9.2 Meaning of Design9.3 Registration and Prohibitions9.4 Copyright in Designs9.5 Piracy of Design and Penalties9.6 Steps for Filing an Application9.7 Summary9.8 Answers and Hints to SAQs

9.1 INTRODUCTION

When consumers decide to buy an article choosing from an array of competing goods

they are influenced in their choice not only by the utility aspect of the goods but also

significantly by the aesthetic aspect the visual appeal of the article. Design impartsthe visual appeal to an object and it serves to differentiate it from other products in the

same category. For the purpose of this chapter the term design is the same as

industrial design. An industrial design is the ornamental or aesthetic aspect of an

article. It may consist of three-dimensional features such as shape or surface or two-

dimensional features such as patterns, line or colours (or their combination). If the

article is not mass-produced or the design cannot be applied on a useful article, the

design would fall under artistic works and more appropriately form the subject

matter of copyright. Some designs may qualify for protection as trade mark.

Engineering designs may be sufficiently innovative, but they will have to seek

protection through patent since they are not regarded as industrial designs.

The object of design registration is to see that the creator of a profitable design should

be rewarded by the exclusive use of it. In India, the law of design protection wascontained in the Designs Act, 1911, which has now been repealed by the Designs Act,

2000 referred to as the Act in the following text.

Objectives

After studying this unit, you should be able to:

highlight the salient features of the new Indian Designs Act, 2000; discuss the procedures for design registration; list the essentials of registration of a design; explain the copyrights in registered designs; and throw light on the remedies under the Act for piracy and violations.9.2 MEANING OF DESIGNUnder the Act, 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. It does not include any

mode or principle of construction or anything, which is in substance a mere


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Indian Designs Lawmechanical device. Trademarks and artistic works are also excluded from the meaning

of design.

The Act protects shape, not function or even functional shape (ie. a shape dictated

solely by the function).

The difference between a design and a trademark is that, while design is part and

parcel of the manufactured article, a trade mark is not necessarily so. A label on a

container of goods is not integral to the goods and it is not a design.

The shape or configuration of a three dimensional article, e.g. a vase, are its design

features; patterns of lines and colours in a textile or wallpaper are their design.

SAQ 1

State whether following statements are true or false.

a) The Designs Act 2000 protects a functional shape.b) A distinctive label on a container of goods is an industrial design.c) Some designs may qualify for protection as trade mark.9.3 REGISTRATION AND PROHIBITIONSCriteria for Registration

To be entitled to protection as intellectual property in India, a design is required to be

registered with the Controller of Designs. The Controller General of Patents, Designs

and Trade Marks is also the Controller of Designs.

To be eligible for registration, a design must be new or original, must not have been

disclosed to the public, must be significantly distinguishable from known designs or

their combinations and must not comprise or contain scandalous or obscene matter. A

design not meeting any of these conditions shall not be registered.

Registration of Designs

The Controller may, on the application of 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 or morality, register the design after due consideration. On

getting the application for registration, the Controller may appoint an examiner to

check whether the design is registerable under the Act and submit a report to the

Controller. The application for registration should be filed in the prescribed form

along with the prescribed fees. For the purpose of registration, goods are divided into

32 classes. A design is registered only in one of these classes. The registration may

be in respect of any or all articles of the class.

After the registration of a design, the Controller publishes the application and the

representation of the article to which the design is applied in the official Gazette and

opens it for public inspection. The Controller then grants a certificate after the

registration of the design and enters the same in the Registry of Designs. If an

application has been refused, the aggrieved person may appeal to the High Court.

Where an application for a design has been abandoned or refused, the application and

any drawings, photographs, tracings, representations or specimens left in connection

with the application shall not at any time be open to public inspection or be published

by the Controller.

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Where a design that has been registered in respect of any article or articles comprised

in a class, the application of the proprietor of the design shall not be refused, nor shall

the registration thereof invalidated, on the ground that the design is not new or

original.

In one of the cases, the petitioner sought cancellation of two designs on the ground

that they were not novel and original as they were being manufactured in India prior

to the date of registration. The Court held that if an importer uses imported goods

without disclosure to anyone else and the design is not freely available, then the mereuse does not amount to publication of the imported design, and the novelty of the

design is not affected on that ground.

The Controller, if satisfied, has the power to substitute another person in place of the

original applicant on a claim by such person that he is entitled to an undivided share

or has an interest in the design. Thereafter, the Controller may direct that the

application shall proceed in the names of the claimants or in the names of the

claimants and the applicant accordingly.

The Controller shall grant a certificate of registration to the proprietor of the design

when registered. During the existence of copyright in a design any person can inspect

the design on making an application giving particulars to identify the design and

paying the prescribed fee.

Registry of Designs

The names and addresses of the proprietors of registered designs, notifications of

assignments and of transmissions of registered designs shall be entered in the register

of designs. The Register may be maintained wholly or partly on computer, floppies or

diskettes, subject to safeguards. The register of design is the prima facie evidence of

any matter authorised to be entered therein.

SAQ 2

Can a design be registered for goods falling in more than one class? Can it be

registered for several articles falling in the same class?

Cancellation of Design

Any person interested may file an application to the Controller for cancellation of the

registration of a design on any of the following grounds:

that the design has been previously registered in India, or that it has been published in India or in any other country prior to the date of

registration, or

that the design is not a new or original design, or that the design is not registerable under this Act.An appeal may lie to the High Court against the order of the Controller.

9.4 COPYRIGHT IN DESIGNS

When a design is registered, the proprietor of the design shall have copyright in the

design forten years from the date of registration. A further extension of five years in

the term can be obtained by making an application to the Controller in the prescribed

manner along with the prescribed fee if the application is made before expiring of the

original term. The right is like a monopoly right given under the Patent Act. There is

an overlap of protection given to designs under both the Designs Act and the

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Indian Designs LawCopyright Act. But the copyright given in designs is not just copyrights but monopoly

rights. It confers on the owner a right to protect the design from piracy (infringement)

through legal action.

Please note that if a design, which is capable of being registered under the Designs

Act has not been so registered it will still have copyright under the Copyright Act.

However, if the design pertains to a commercially produced article, the copyright in

the design under the Copyright Act ceases to exist, when such article has been

reproduced more than fifty times by an industrial process by the owner of thecopyright.

SAQ 3

An industrial design capable of being registered under the Designs Act, 2000 has not

been so registered. Does it enjoy protection under some other Act? Which Act? If it

does enjoy protection, what is the duration of the protection?

9.5 PIRACY OF DESIGNS AND PENALTIES

During the existence of copyright over any design, other persons are prohibited from

using the design except or with the permission of the proprietor, his licensee orassignee. The following activities are considered to be infringement.

To apply the design or any fraudulent imitation of it to any article for sale; To import for sale any article to which the design or fraudulent or obvious

imitation of it, has been applied;

To publish or to expose for sale knowing that the design or any fraudulent orobvious imitation of it has been applied to it.

In a case between Ampro Food Products and Ashok Biscuit Works, the appellant

manufactured biscuits with AP embossed on them. The respondent also manufactured

biscuits with identical design except that letters AB were embossed on them, in place

of AP. The suit claimed injunction bringing a charge of piracy of design. Issuing atemporary injunction, the Court held that in such cases the defence cannot argue that

the appellants registered design was not new or original if no steps had been taken

earlier seeking cancellation of the registration of the design.

In a case between Hindustan Lever Ltd. and Nirma Pvt. Ltd, the plaintiff alleged

infringement of its registered trade mark, passing off, and infringement of the

copyrights in original artistic work and sought permanent injunction to restrain the

defendant from using the impinged carton in relation to soaps or detergent powder.

The defence took the plea that the said label was in fact a design that could be

registered under the Designs Act, and the fact that it was not so registered makes

copyrights if any, under the copyright Act non-existent when the article to which the

design has been applied was reproduced fifty times by industrial process. The Court

ruled that a label to be put on a carton for the goods is nota design.

Penalties

Any person engaged in activities mentioned above shall be liable for everycontravention to pay to the registered proprietor of the design, a sum not

exceeding twenty-five thousand rupees recoverable as a contract debt, or

If the proprietor elects to bring a suit for the recovery of damages for any suchcontravention, and for an injunction against the repetition thereof, the infringer

shall be liable to pay such damages as may be awarded and to be restrained by

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injunction accordingly; provided that the total sum recoverable in respect of any

one design shall not exceed fifty thousand rupees. The district court will be the

lowest court of jurisdiction.

9.6 STEPS FOR FILING AN APPLICATION

1. The already existing designs are searched.2. A representation showing the exact article on which the registration is applied is

prepared.

3. The appropriate class for the design is identified from the internationally accepted32 classes of designs.

4. Evidence of novelty in the design is prepared.5. A priority date for Convention Countries is claimed.6. The required fees should accompany application. Presently the fee for registration

is Rs. 1000 and for renewal, it is Rs. 2000.

7. After completing the above procedures the application can be filed either in theDesign Office in Kolkata or any Patent Offices in Delhi, Mumbai or Chennai.

8. After the examination, if demanded, additional information required by theDesign Office should be submitted as soon as possible.

9. To facilitate easy communication and registration full and correct addressesshould be furnished.

SAQ 4

Represent with the help of a flow chart the process of registering a design in India.

9.7 SUMMARY

An industrial design is the ornamental or aesthetic aspect of an article; it mayconsist of three dimensional features such as shape or surface, or two-dimensional

features such as patterns, lines or colours (or their combination);

A design is registered to enable its creator earn economic reward throughmonopoly rights over the design;

The Act protects shape, not function; it does not protect even the functional shape; While a design is part and parcel of the manufactured article, a trade mark is not

necessarily so;

Infringement of design occurs wheni) a registered design or a fraudulent imitation of it is applied to any article for

sale;

ii) any article, which bears the design or a fraudulent/obvious imitation of it, isimported;

iii) when any article, as given in (ii) above is knowingly published or exposed forsale.

Penalties: Rs.25000/- for every contravention, or if the proprietor brings up a suit,then as the Court decides subject to a maximum of Rs.50,000/-

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9.8 ANSWERS AND HINTS TO SAQs

SAQ 1

a) Fb) Fc) TSAQ 2

No; Yes

SAQ 3

Yes; the design will have the copyright under the Copyright Act. However, since it

pertains to a commercially produced article, its copyright under the Copyright Act will

cease to exist when the relevant article is produced more than 50 times by an

industrial process by the owner of the copyright.

SAQ 4

N

N

Y

Is any objectionconveyed to the

applicant?

Application by proprietor of a

new design to the Controller

indicating class of

goods/articles in the same class

Examination for

registerability

Entry of the design in

the register

Publication of the

application and the

representation of the

article on which the

design is to be applied

in the official gazette

Removal of

Objection

Issue of a certificate ofregistration

indian designs law

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