IPR NOTES

Unit 4

· Consumers are often influenced by the visual appeal of a product, which significantly impacts its sales. A well-
designed article can attract attention quickly, sometimes leading to the entire stock selling out in a short time. This
demonstrates how important design is in marketing and customer choice.

· · The external design of a product holds artistic and commercial value. When a product’s design is visually
attractive, it creates an emotional connection with customers, increasing the chances of purchase and ultimately
raising the product’s market demand and profitability.

· · Designers invest substantial time, effort, and resources in creating unique and appealing designs that can enhance
the product’s success in the marketplace. These designs are intended to stand out among competitors and leave a
lasting impression on consumers.

· · A design is not the product itself but a feature applied to it. It cannot exist separately from the article—it is
integrated into it. Design features include shape, pattern, configuration, and ornamentation. Shapes and configurations
are usually 3D elements, while patterns and ornaments are decorative and typically 2D.

· · In India, intellectual property laws recognize industrial design as a form of protection for the aesthetic appearance
of an article. This legal protection helps creators safeguard their designs from being copied or used without
permission, promoting innovation and fair competition.

HISTORICAL PERSPECTIVE OF DESIGN LAW IN INDIA

· The legal protection of textile designs began in the U.K. during the Industrial Revolution, with the first design law
passed in 1787. Additional laws followed in 1839 and 1842, showing growing recognition of the value of design
protection.

· · The Patents, Designs, and Trade Marks Act of 1883 was later enacted in the U.K. to consolidate protection for all
three areas. However, in 1905, trademarks were separated into their own legislation, leaving patents and designs under
a combined law.

· · In British India, the first law covering designs was the Patents and Designs Act of 1872, followed by the
Inventions and Designs Act in 1888, aimed at protecting both inventions and designs.

· · The Indian Patents and Designs Act of 1911 was modeled on the British law of 1907. It governed both patents and
designs until 1970, when the new Patent Act repealed the patent-related provisions from the 1911 Act.

· · After 1970, designs in India were governed by the old Designs Act of 1911 and its rules until the enactment of the
Designs Act, 2000. This new act, effective from 11 May 2001, replaced the 1911 law and incorporated updates to
align with TRIPS and international agreements. The Designs Rules, 2001 were framed under this new act.

MEANING OF DESIGN UNDER DESIGN ACT, 2000

In Intellectual Property Rights (IPR), "design" refers to the features of shape, configuration, pattern, ornament, or
composition of lines or colors applied to any article, whether in two-dimensional or three-dimensional form, or both,
by any industrial process or means.

A Design is defined under section 2(d) of the Design Act, 2000. Design means only the features of shape, pattern,
configuration, an ornament which is applied to any article in three forms namely two dimensional, three dimensional
or both with the help of any industrial process, whether mechanical, manual, chemical, separate, or combined further
resulting in the finished article and is judged solely by the eyes but it does not include any mode of construction or
anything which is in substance a mere mechanical device and any trademark or property mark or any artistic work.

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,
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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 method of construction or purely mechanical devices, as these are protected under patent
law based on their novelty, obviousness, and industrial use.

Design also does not cover:

 Trademarks, as defined under the Trade Marks Act, 1958.

 Property marks, as defined in the Indian Penal Code, 1860.
 Artistic works, which fall under the Copyright Act, 1957.

The term “article”, as per the Designs Act, means any manufactured object, whether artificial or partly natural, and
includes parts of an article that can be made and sold separately.

Meaning of Design Registration in India

 Design registration in India refers to the legal process of obtaining exclusive rights and protection for the visual
appearance of a product or article. It is governed by the Design Act, 2000, which aims to promote creativity,
encourage innovation, and safeguard the commercial value of unique designs.
 Design registration grants the owner the exclusive right to use the registered design and prevent others from
copying, imitating, or using the design without permission. By registering a design, designers and businesses in
India can protect their original creations, enhance marketability, and establish a distinct identity for their
products.
 Design registration in India involves fulfilling certain requirements, filing an application with the appropriate
authorities, and undergoing an examination process to ensure compliance with legal provisions. The registration
provides a legal framework for designers to assert their rights and take legal action against any infringement or
unauthorized use of their registered designs.

Objective of Design Registration in India?

 The Purpose of obtaining the design registration under the Designs Act is to safeguard a novel or innovative
design to be applied to a specific article under the manufacturing process through an Industrial Process or mode.
 At times, we see that customers’ buying behaviour towards some articles for consumption is inclined not only by
their actual product quality but also by the design of their appearance, e.g., a mobile phone or goggles.
 The main objective of obtaining a design Registration is to make sure that the particular artisan, creator,
craftsman, engineer or the designer of that design having a unique appearance is not deprived and deceived of his
bonafide reward by some copycats, who might tend to use his design to their goods.

ESSENTIAL REQUIREMENT FOR THE REGISTRATION OF DESIGN

There are some prior requirements which are needed to be fulfilled in order to get the registration of the design. They
are as follows-

1. It should be novel and original

The design in order to be registered must be both novel and original which means it should be produced for the first
time. It can be considered for the registration only if that particular design is unique. A combination of two or more
previously published designs can be registered only if the combination produces new visuals or designs.

2. It should not be published previously

The design which is intended for registration should not be published previously. If a copy of the publication is
already available in the public library that may be sufficient to constitute publication. So in order to get the
registration, the design should not be publicly accessible.

In Kemp and Company and others v. Prima Plastics Ltd. 2000 PTC 96 Bom1

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 In this case it was held that if the proprietor of a design discloses it to any other person in good faith, it is not deemed
to be a publication Subsequently, if the registration is obtained of the said design, the earlier disclosure would not
invalidate the copyright thereof.
3. Design should not be contrary to order and morality

The design must not be contrary to morality and order or prohibited by the Government of India or any authorized
institution. The design which can cause disturbance or breach of public order and peace cannot be considered for
registration.

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.

APPLICATION FOR REGISTRATION OF DESIGNS

Section 5 of the Design Act, 2000 deals with the application for registration of designs. As per the section, if any
person who claims to be the proprietor of any new or original design not previously published anywhere and is not
against any public policy or morality makes an application for registration of the design, the controller may register
the design after the examination by the examiner.

Every application which is made for the registration of a design shall be made in the prescribed form along with the
prescribed fees before the patent office. A design that is intended to be registered should be registered in not more
than one class. If the application for registration of any design is rejected by the controller the aggrieved person may
appeal to the HighCourt.

The application which is not made within the prescribed time limit shall be deemed to be abandoned. A design when
registered shall be registered as of the date of the application for registration. A design may be registered in respect of
any or all the articles comprised in a prescribed class of articles.

After the registration of a design, the controller shall cause publication of the prescribed particulars of the design to be
published in such manner as may be prescribed. After the publication of the design, it shall be open to public
inspection.

PROCEDURE FOR REGISTRATION OF DESIGN IN INDIA

1. Filing an application

The first step in the process of registration of the design in India is to file an application made in the prescribed form
along with the prescribed fees before the patent office. The application shall specify the class in which the design is to
be registered must and the articles to which it is to be applied. There shall be a separate application that shall be filed
for each class of articles.
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2. Examination

After receiving the application for the registration of the design the controller will send the application for an
examination so as to check whether the design is capable of registration or not. After receiving the green signal from
the examiner the controller will accept the application and proceed further.

3. Communication of objections

After the examination of the application made by the applicant, if the examiner finds any defects in the application,
the same has to be notified to the applicant. After the defects are communicated to the applicant, the applicant is
required to remove all the objections and shall is required to remove all the objections and shall resubmit the
application to the Patent Office for the acceptance of the application within six months from the official date of the
application. If all the objections are not removed within 3 months after communication the same to the applicant, the
application will be withdrawn.

4. Publication

Once the application for the registration of the design is accepted by the patent office the controller shall cause
publication of the prescribed particulars of the design to be published in such manner as may be prescribed. After the
publication of the design, it shall be open to public inspection. The controller shall also grant a certificate of
registration to the proprietor of the design when registered.

PROHIBITION OF REGISTRATION OF CERTAINDESIGNS

The following designs shall not be registered by the controller.

1. A design that is not new and original.

2. A design that has been published anywhere in India or any other country in tangible form.
3. A design that is not distinguishable from know designs or a combination of know designs or
4. A design that comprises scandalous or obscene matter which can cause disturbance or breach of public order
and peace

WHO IS ENTITLE TO SEEK REGISTRATION

As per the act, 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 can file an application for registration. Any person
mentioned above includes an individual, any firm, any partnership firm, company or an agent on behalf of the
proprietor can also register.

CANCELLATION OF THE REGISTRATION OF THE DESIGN

Provision for cancellation of the registration of the design is laid under section 19 of the act. A registered industrial
design can be canceled any time post-registration, by filing a petition for cancellation in Form 8 along with a
prescribed fee depending on the category (INR 1500 for Natural Person, INR 3000 for SME, INR 6000 for other
applicants than the remainder applicants) to the controller.

The grounds of the cancellation of the registration are as follows-

1. The design is not new and original. It has been already registered previously.
2. It has been published anywhere in India or any other country before the date of registration.
3. It is against public order and morality.
4. The design cannot be registered under the act.

COPYRIGHT IN REGISTERED DESIGN

When the design gets registered, the proprietor of the design shall have copyright in the design for 10 years which can
be further extended for 5 more years by filing an application for it along with the prescribed fees to the controller. But
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the application for the extension of the copyright in the design shall be made before the expiration of the original date
of the 10 years.

In a case copyright in the design ceased to have effect by reason of failure to pay the of the prescribed fees for the
extension of copyright in the design, the proprietor of such design may within one year from the date on which the
design ceased to have an effect, make an application for the restoration of the design in the prescribed manner on
payment of such fees as may be prescribed along with the reason which led to the failure to pay the fees and if the
controller is satisfied that the failure to pay the fee for extension was not intentional, he shall upon the payment of any
unpaid fee for extension restore the registration of the design.

PIRACY OF REGISTERED DESIGN

The provision of piracy of registered designs is made under section 22 of the Designs Act, 2000. Piracy of registered
design is the same as an infringement of the Copyright in the design. Section 22(1) of the Designs Act, 2000 ("the
Act") provides that during the existence of copyright in the design, without a license or written consent of the
registered proprietor, the following acts would be considered piracy of registered design:

1 who for the purpose of sale to apply or cause to be applied, to any article in any class of articles in which the design
is registered, the design or any fraudulent or obvious imitation thereof, or to do anything with a view to enabling the
design to be so applied;

2 to import such article for the purposes of sale;

3 to publish or expose or cause to be published or exposed for sale, such article. Any of the aforesaid acts shall
constitute piracy only if they have been done in course of commerce and not merely for personal use. It is further
necessary that the prohibited acts have been committed in relation to articles falling in the class in which the design
has been registered.

Dabur India Limited v. Rajesh Kumar and Others2

Dabur India Limited has registered design ‘Dabur Amla Hair Oil‘ in bottles having a distinctive design. Defendants,
Rajesh Kumar, and Others manufactured plastic bottles alleged to be an imitation of the bottles of the plaintiff. These
plastic bottles being used by the plaintiff were found to be common bottles used by several other companies for
marketing their hair oil, fixers, and liquid products. Defendants infringed the design of the bottles of the plaintiff.
Plaintiff had no peculiar feature of the bottle registered as a design of the whole bottle registered as a design. Bottles
used by the plaintiff have a common shape of the bottles of the plaintiff. For a validly registered design, there must be
some novelty and originality in the designs sought to be protected and it must not have been republished. It was held
that the plaintiff is not entitled to an interim injunction.

REMEDIES AGAINST THE PIRACY OF REGISTERED DESIGNS

Section 22(2) of the Designs Act, 2001 ("the Act") provides the remedies against piracy of registered designs. There
are only civil remedies available against infringement of copyright in a design. There is no provision for criminal
proceedings against the piracy of registered designs.

The Act provides for two alternative remedies for the proprietor of registered design under Section 22(2) (a) and (b).
The proprietor has to elect one of the following remedies:

1 Section 22(2)(a) provides that if any person acts in contravention of Section 22, he shall be liable to pay to the
registered proprietor of the design a sum not exceeding INR 25,000 rupees for every contravention recoverable as a
contract debt. Provided the total amount recoverable in respect of any one design shall not be more than INR50,000.

2 Section 22(2)(b) provides that the proprietor may bring a suit for the recovery of damages of any such contravention,
and for an injunction against the repetition thereof. If he succeeds, he will be entitled to recover such damages as may
be awarded by the court and restrain the defendant in terms of the injunction granted by the Court.

It has been provided further that no suit or any other proceedings for the relief under Section 22(2) of the Act is to be
instituted in a District Court having jurisdiction. However, where the defendant avails any of the grounds on which
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registration of a design may be canceled under Section 19, the Court shall transfer the suit or such other proceeding to
the High Court for decision.

1. Gopal Glass Works Ltd., v. IAG Company Ltd3

Plaintiff has registered his design named ‘Diamond Square prior to registration of another ‘Kohinoor". The defendant
claimed that its design was not a fraudulent imitation of the plaintiff‘s design. Both designers were found to be similar
after an examination. It was held that the plaintiff is entitled to interim protection from piracy and an interim
injunction was granted.

2. Whirlpool of India Ltd. v. Videocon Industries Limited4

Defendant Videocon also got the registration of the design with the same features, configuration, shape as the
Plaintiff. The design of the Videocon was the replica of the plaintiff‘s design. The court in this case held that the
design of the Videocon is similar to the design which is registered by Whirlpool. Videocon was held liable for the
infringement and passing off of the plaintiff‘s design.