INTELLECUTAL PROPERTY RIGHTS
LLB 402
UNIT- 4
DESIGN ACT, 2000
Mr. Tarun Sharma
Assistant Professor
DME Law School
[email protected] INTERNATIONAL TREATIES AND
CONVENTIONS FOR THE PROTECTION OF
DESIGNS
Paris Convention (Paris Convention for the Protection of Industrial
Property,1883)
Article 1 (2) of the Paris Convention (Stockholm Act of 1967) stipulates that “the protection of
industrial property has as its object patents, utility models, industrial designs, trade marks, service
marks, trade names, indication of source or appellations or origin, and the repression of unfair
competition”.
In Article 5 quinquies, the Convention conformingly provides that “industrial designs shall be
protected in all the countries of the Union”. However, the Paris Convention, not clearly providing
a definition of industrial designs, leaves it to each individual country of the Union to decide how
to protect them under domestic law
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Locarno Agreement (Locarno Agreement Establishing an
International
Classification for Industrial Designs, 1968)
Revised in 1979 in Stockholm, this agreement sets forth an international
classification for articles representing designs. It is composed of ① main classes
and sub classes, and ② an alphabetical list of articles.
This classification does not bind the scope of protection granted by the
domestic design laws of the contracting states.
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TRIPS Agreement under the World Trade
Organization Agreement (WTOA)
As a result of negotiations based on the GATT Uruguay Round talks, the “World
Trade Organization Agreement (WTOA)” was concluded on December 1993 in
Geneva. In connection with this, a separate agreement regarding protection of
intellectual property called the “TRIPS Agreement” was concluded.
This Agreement obligated its contracting states to provide a high level of protection
and enforcement over a wide variety of areas of intellectual property such as (1)
copyright and related rights, (2) trademarks, (3) geographical indications, (4)
industrial designs, (5) patents, (6) layout-designs of integrated circuits, (7)
protection of undisclosed information, and (8) control of anti-competitive practices
in contractual licenses.
In Section 4 of part II, the TRIPS Agreement sets forth regulations concerning
“industrial designs”.
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Berne Convention (Berne Convention for the Protection of
Literary and Artistic Works, 1886)
Article 2 (7) of the Berne Convention stipulates that “subject to the
provisions of Article 7 (4) of this Convention, it shall be a matter for
legislation in the countries of the Union to determine the extent of the
application of their laws to works of applied art and industrial designs and
models, as well as the conditions under which such works, designs and
models shall be protected. Works protected in the country of origin solely
as designs and models shall be entitled in another country of the Union
only to such special protection as is granted in that country to designs and
models; however, if no such special protection is granted in that country,
such works shall be protected as artistic works”.
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INTRODUCTION
• Earlier the Design Law in India was Governed by Design Act, 1911.
• There has been a considerable growth in the area of Science and
technology since the enactment of the Design Act, 1911
• The Design Act, 1911 has been repealed.
• Presently, the law pertaining to Design in India is governed by Design
Act, 2000
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OVERLAPPING-DESIGN ACT &
COPYRIGHT ACT
When the Design Act, 2000 came into effect the main change was
regarding the exclusion of artistic works as defined in Section 2(d) of the
Copyright Act, 1957 from the definition of term design. There were many
conflicts regarding giving protection to the artistic works under the ambit
of the Design Act.
This issue was explained by the Delhi High Court in the case of
Microfibers Inc. v. Girdhar Co. & Another that the artistic works
which are excluded from protection under the Design Act are in itself a
piece of art, for example, a painting and the artistic work which are to be
used in industry is not excluded from the ambit of protection provided
under Section 2(d) of the Design Act.
In the case of Bharat Glass Tube Ltd. v. Gopal Gas Works, the Court
emphasized the object of the Design Act which is to protect and reward
the inventor of the design for his hard work. The Court further held that
the protection is given to advance the industries.
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The case of Disney Enterprises Inc. v. Prime Housewares Ltd. where
the Disney characters Mickey and Minnie were manufactured by an
industry based in Mumbai by the name of Prime housewares limited. The
case was filed regarding trademark infringement and the main contention
they held that they had international registration of their designs. The Court
held that the trademark of the Mumbai based company was protected but
not their designs and were ordered to deliver all the material which would
infringe the rights of Disney to be destroyed by them.
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IMPORTANT DEFINITIONS
Section 2(a): Articles
Section 2(c): Copyright
Section 2(d): Design
Section 2(g): Original
* Read from Bare Act
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WHAT IS A DESIGN?
Section 2(d) of the Designs Act, 2000 provides the definition of ‘design’.
It states that 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. However, the following are excluded
from the meaning of ‘design’ as provided under Section 2(d) of the
Designs Act, 2000:
1. Any mode or principle of construction or anything which is in
substance a mere mechanical device.
2. Any trademark as defined under Section 2(1)(v) of the Trade and
Merchandise Marks Act, 1958.
3. Property mark as defined in Section 479 of the Indian Penal Code,
1860.
4. Any artistic work as defined under Section 2(c) of the Copyright Act,
1957. 12
IMPORTANT FEATURES OF DESIGN ACT
• 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”.
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• 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.
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PROHIBITION ON REGISTRATION OF
CERTAIN DESIGNS
Section 4
• Designs that lack novelty or originality
• Designs previously disclosed to the public in India or elsewhere through
tangible publication, use, or any other means before the filing date (or
priority date if applicable) of the registration application
• Designs that lack significant distinction from known designs or
combinations thereof
• Designs comprising or containing scandalous or obscene matter
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ESSENTIAL REQUIREMENTS OF
DESIGN REGISTRATION
Before the registration of design as per the Designs Act, 2000 it is
essential that the following requirements are fulfilled:
1. The design should be novel and original:
It's essential to note that only a distinctive design that is innovative and fresh is
eligible for registration. However, a combination of two or more designs already
made public can be registered only if the amalgamation results in fresh visual or
design elements.
In Hello Mineral Water Pvt. Ltd. vs Thermoking California Pure (1999), the
dispute was concerning a water dispenser which was designed in a cylindrical
shape. Delhi High Court held that mere form or shape is not sufficient for the
purpose of novelty. The ultimate test is to consider the design with an instructed
eye to locate the difference between the design previously published and the
registered design.
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In B.Chawla & Sons vs Bright Auto Industries (1980)
The Delhi High Court noted that there were only minor distinctions between the
two challenged designs presented before it. Additionally, the Court emphasized that
making slight additions or alterations to a well-established shape of another product
existing in the market does not grant the design the status of being new and
original.
In the case of Gammeter v. Controller of Patents and Designs, the Calcutta High
Court held that the design for which the novelty is being claimed should be placed
side-by-side with the other design and then decided.
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2. The design should be an already published design:
The design intended for registration must not have been previously made
public, as it would render it ineligible for registration. Private use of the
design does not count as publication and therefore qualifies for registration.
Similarly, if a copy of the design is already available in a public library
accessible to the general public, it may be deemed as published.
Consequently, to secure registration for the design, it should not be
accessible to the public.
In M/S. Kemp & Company & Another vs M/S. Prima Plastics Ltd.
(1998), it was held that mere disclosure of design by the proprietor to any
third person does not amount to publication but such disclosure has to be in
good faith.
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3. The design should not be opposed to morality:
The design which is opposed to morality or is forbidden by the Government of
India or any authorized institution or authority or which can cause disturbance or
breach of public order and peace is simply not eligible for registration. The design
should not contain obscene or scandalous matter.
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PROCEDURE OF
REGISTRATION OF DESIGN
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Chapter II of the Designs Act, 2000 encompasses provisions concerning the
process for registering designs.
FILING OF AN APPLICATION( Section 5)
To initiate the registration process, an application must be submitted to the
patent office using the designated form and accompanied by the required
fees. The application should detail:
1. The category under which the design is to be registered.
2. The products to which the design will be applied.
Furthermore, a distinct application must be submitted for each category of
products.
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EXAMINATION OF THE APPLICATION
Upon receipt of the design registration application, the controller will forward it
for examination to ascertain its eligibility for registration. Upon receiving a
favorable evaluation from the examiner, the controller will approve the application
and continue with the subsequent procedure.
COMMUNICATING THE OBJECTIONS, If any
Following the application examination, should the examiner identify any
deficiencies, they must be promptly communicated to the applicant. Once notified,
the applicant is obliged to address all objections, after which the revised
application must be resubmitted to the relevant patent office for approval within
six months from the official application date. Failure to address all objections
within three months of notification will result in withdrawal of the application.
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PUBLICATION OF PARTICULARS OF REGISTERED DESIGNS
Section 7
After the registration of the design, the Controller shall publish the prescribed
particulars of the design in such manner as may be prescribed (in the Designs
Rules, 2001) after which the design shall be open for public inspection.
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CANCELLATION OF REGISTRATION
1) Any individual with a vested interest may file a petition to the Controller for the
cancellation of a registered design at any point subsequent to its registration, based
on the following grounds:
(a) The design has been previously registered in India.
(b) It has been publicized in India or any other country before the registration date.
(c) The design lacks novelty or originality.
(d) The design is ineligible for registration under this Act.
(e) It does not meet the definition of a design as specified in clause (d) of section 2
2) An appeal can be made to the High Court from any decision made by the
Controller under this section. The Controller retains the authority to refer any such
petition to the High Court at any time, and the High Court is mandated to
adjudicate on any referred petition.
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INFRINGEMENT OF DESIGN
• Designs, like other forms of Intellectual Property, are susceptible to infringement
and unauthorized reproduction by competitors or other parties.
• If a design is unlawfully copied, the owner can seek damages and apply for an
injunction to prevent further use of the design.
• In cases of infringement, the court evaluates the design from the perspective of
an average consumer to determine if there's evident confusion or similarity
between the articles.
• In Disney Enterprises Inc. v. Prime Housewares Ltd., a conflict arose over the
international registration of industrial designs in India.
• Prime Housewares, a Mumbai-based company, manufactured characters like
Mickey Mouse and Donald Duck, leading Disney Enterprises to file a lawsuit for
infringement of their international registered designs.
• The court ruled that while the plaintiff's trademarks were protected under Indian
law, their designs were not.
• An order was issued for the infringement of Disney's trademarks, directing the
Indian company to cease using the infringing materials and surrender them to
Disney Enterprises to prevent further unauthorized use.
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PIRACY OF REGISTERED DESIGN
Section 22 of the Designs Act, 2000 deals with the piracy of registered designs.
According to this section, any obvious or fraudulent imitation of a design which
is already registered without the consent of its proprietor is unlawful. It also
prohibits the import of any material which closely resembles a registered design.
In the case of Bharat Glass Tube Limited v. Gopal Gas Works Ltd., the
respondents (Gopal Glass Works) had registered their design for diamond-shaped
glass sheets and had a certificate of the same. The appellants started using this
design for marketing. These designs were made in collaboration with a German
company.
After knowing that the appellants are using their design, they moved to the Court.
The appellants contended that the respondents’ designs were not new since the
German company had been using it since 1992 and it was already published in
the U.K. Patent Office so it lost its originality. When the matter went to the High
Court on appeal then it restored the designs to the respondents. When the matter
reached the Supreme Court, it upheld the decision of the Calcutta High Court.
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EXAMPLE OF PIRACY OF DESIGN
Let's say a fashion designer creates a unique and innovative clothing
design. They invest time, effort, and resources into developing this
design, which becomes popular and gains recognition in the fashion
industry. However, without their consent, another individual or company
copies the design and produces cheap replicas of the clothing, selling
them at a fraction of the original price.
This act of copying and reproducing the design without permission is a
form of design piracy. It not only undermines the original designer's
creative efforts but also violates their intellectual property rights. The
counterfeit products may be of lower quality, but they can still deceive
consumers who may mistake them for the authentic design.
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REMEDIES FOR PIRACY
Two remedies are available to combat piracy of registered designs under Section
22(2) of the Designs Act, 2000. The proprietor must opt for one of the following
options:
1. Section 22(2)(a): If someone violates Section 22 by engaging in activities
that constitute piracy of a registered design, they are liable to pay a fine of
INR 25,000 per contravention to the registered proprietor, with a maximum
limit of INR 50,000 for any single design. The payment is recoverable as a
contractual debt.
2. Section 22(2)(b): The proprietor can choose to file a lawsuit seeking
damages for the contravention, along with an injunction to prevent future
violations. If successful, the proprietor is entitled to recover damages as
determined by the court, and can also obtain an injunction against the
defendant.
It's important to note that no legal action can be taken if the piracy occurred after
the design ceased to be in effect and before its restoration. Additionally,
according to the second proviso of Section 22(2), legal proceedings must be
initiated in a court no lower than the district judge's court. However, if the
defendant raises grounds for cancellation of the design under Section 19, the
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case must be transferred to the high court for adjudication.
LANDMARK CASES
Rajesh Masrani v. Tahiliani Design Pvt. Ltd.
Facts: In this case, Tahiliani Design Pvt. Ltd. created certain drawings
during the garment-making process, which were subsequently registered
as artistic works under the Copyright Act, 1957. It is alleged that the other
party infringed on these drawings by imitating some of them.
The opposing party argued that since the drawings were not registered
under the Design Act, Tahiliani Design Pvt. Ltd. had no grounds for
claiming a remedy.
Judgment: The Court ruled that registration of the work under the Design
Act is not a prerequisite for maintaining a suit for copyright infringement,
nor is it a necessary condition to be fulfilled.
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M/S.Whirlpool Of India Ltd. v. M/S.Videocon Industries
Ltd.
Facts: In this case, Whirlpool registered two designs. Subsequently,
Videocon also registered a design that bore striking resemblance in
features, configuration, and shape to Whirlpool's designs, appearing to be
a replica upon initial observation. Videocon argued that their design was
already registered, thus exempting them from liability for infringement
and passing off, which they claimed was not applicable to registered
designs.
Judgment: The Court determined that there existed a notable similarity
between the plaintiff's (Whirlpool's) design and the defendant's
(Videocon's) design. Consequently, Videocon was found liable for both
infringement and passing off of Whirlpool's design.
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M/s S K Industries v. Dipak Ghosh
Facts: The plaintiff in this case asserted that a specific cup used for
packing and marketing jelly was protected, and the defendant was
prohibited from utilizing its design.
Judgment: The Court determined that the cup in question lacked novelty
and did not exhibit any unique shape or dimension. It was deemed to be a
standard cup commonly manufactured by numerous producers for general
storage purposes.
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Sree Vishnu Bottles v. The State Of Tamil Nadu
Facts: This case concerns the rights of resellers. The petitioners have been
engaged in a business of purchasing empty beer bottles and paper from
Tamil Nadu and transporting them to Karnataka and Madhya Pradesh for
the past 30 years without encountering any border crossing issues.
However, recently they faced interruptions when stopped from
transporting the goods. The reason cited for the disruption was that some
bottles were registered as designs under the Designs Act, leading to
accusations of piracy of registered designs under Section 22 of the Design
Act. The petitioners argued that there was no legal injunction from the
court prohibiting the transportation of empty bottles in this manner.
Judgment: The High Court ruled that the relief sought by the petitioners
was vague, and it emphasized that the court cannot issue a blanket order in
such matters.
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Sree Vishnu Bottles v. The State Of Tamil Nadu
Facts: This case concerns the rights of resellers. The petitioners have been
engaged in a business of purchasing empty beer bottles and paper from
Tamil Nadu and transporting them to Karnataka and Madhya Pradesh for
the past 30 years without encountering any border crossing issues.
However, recently they faced interruptions when stopped from
transporting the goods. The reason cited for the disruption was that some
bottles were registered as designs under the Designs Act, leading to
accusations of piracy of registered designs under Section 22 of the Design
Act. The petitioners argued that there was no legal injunction from the
court prohibiting the transportation of empty bottles in this manner.
Judgment: The High Court ruled that the relief sought by the petitioners
was vague, and it emphasized that the court cannot issue a blanket order in
such matters.
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Reckitt Benckiser (India) Ltd. v. Wyeth Ltd.
Facts: The crux of this case revolved around the registration of S-shaped
spatulas. The defendant, Wyeth Ltd., argued that the design presented by
the appellant lacked originality since it had already been registered in a
foreign country prior to its registration in India. Furthermore, it was
alleged that there was suppression of facts regarding the prior registration
in the foreign country.
Judgment: The Court determined that if it could be demonstrated that the
design had been disclosed anywhere in India or a foreign country through
means outlined in Section 4(b), then the registration in India would be
deemed void. This could serve as a defense against alleged infringement
under Section 22(3).
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Dabur India Limited vs Mr. Rajesh Kumar And Ors.
(2008)
Facts: Dabur India Limited holds a registered design for its product
"Dabur Amla Hair Oil," which is packaged in bottles with a distinctive
design. The defendants, Rajesh Kumar, manufactured plastic bottles that
were alleged to closely resemble the plaintiff's bottles. However, it was
revealed that the plastic bottles used by the plaintiff were commonplace
and were also utilized by various other companies for packaging hair oil,
fixers, and liquid products. Despite the defendants' imitation of the
plaintiff's bottle design, the plaintiff's bottles lacked any unique features
registered as part of the design; instead, the design encompassed the
entirety of the bottle. Thus, the bottles used by the plaintiff had a generic
shape.
Held: For a design to be validly registered, it must exhibit novelty,
originality, and should not have been previously published. Since the
plaintiff's bottles lacked distinctiveness and were commonly used by other
companies, the court concluded that the plaintiff was not entitled to an
interim injunction.
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CONCLUSION
Designs reflect an individual's creativity and intellect, becoming synonymous with a
particular article. Unique and novel designs attract customers, significantly
influencing their purchasing decisions. Design plays a pivotal role in the success or
failure of a business; favorable designs can boost sales, while disliked ones can lead
to a decline in sales. Therefore, it's crucial to protect designs through registration to
prevent third-party exploitation of creators' hard work and creativity.
The Designs Act, 2000 mandates the registration of designs to provide remedies in
case of infringement, fostering fair competition in the market. This legal protection
not only fosters creativity but also safeguards the interests of consumers and
manufacturers. As the government focuses on industrial development, adequate
protection of innovators' designs becomes imperative.
To strengthen copyright protection in designs, amendments to the Designs Act, 2000
could introduce criminal liability for infringement, discouraging unauthorized
copying and providing better security for creators of registered designs.
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