India: Indian Industrial Designs Legislation Shaped To International Trends

The development of Intellectual Property Rights reflects the economic as well as industrial growth of a nation. The concept of globalization has greatly affected the importance of Intellectual Property Rights. Intellectual Property Rights have brought about considerable progress in the field of science and technology. The laws regarding Intellectual property in India have emerged with the passage of time.

Industrial age is suggestive of the advent of rapid advancements in the field of science and technology. From wheel to railway engine several objects originated that helped to revolutionarise the world. Modern age has witnessed similar growths in technical sectors with a vast growth in Industrial Designs.

"Design means the features of shape, configuration, pattern or ornament or composition of lines or color or combination thereof applied to any article whether 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 can be called as a new ornamentation for a functional object.

A design makes the product attractive and appealing thus adding to the commercial value and increasing its marketability. It can well be envisaged that competitors and third parties may try and exploit the design to their advantage. Herein originates the need to protect the design and its concept.

A design is a result of hard work and substantial investments. It is important therefore that the design be protected so that no one else derives benefits from it. Once registered, the properitor is granted exclusive rights to the design. These rights restrict others from using the design for commercial or professional purposes, without due permission of the properitor. Thus no one else can legally manufacture, sell, import or rent a product whose appearance does not significantly differ from the registered design.

The relevant law governing Designs in India is the Designs Act 2000 and the Designs Rules 2001. Designs Act, 2000 is the new law relating to Industrial Designs, which repeals and replaces the earlier Designs Act, 1911. This Act administers its objective well in the quick changes in technology and international developments. India has also reached a mature status in the field of industrial designs and by observing globalization of the economy; the present legislation is walking in step with the changed technical and commercial scenario around the world. Under the TRIPS Agreement, minimum standards of protection of industrial designs have been provided for. Indian Designs law already provides these minimal standards to align with the international pattern

The highlights of the definition of design mentioned in the Designs Act, 2000 are:

• Design deals with external appearance only. It has to be judged by naked eye only.

• It relates to features of shape, configuration, pattern or ornamental decoration or composition of lines or colours applied to any article.

• Application of shape, configuration etc. to an article should be by an industrial process or means.

• In the finished article, it should appeal to and be judged solely by the eye.

• It does not include any trademark or property mark or any artistic work as defined in the Copyright Act, 1957.

Design induces a favourable impression on the consumer which induces him to buy the goods. Design covers the whole body of goods and must be novel and original. Design registration is obtained for novelty in the external appearance only. The registrable design is not the article itself, but a feature, an idea or characteristic look applied to an article e.g. novel shape of a cellular phone or a pager, wash basin, motor car, a locomotive engine etc. The design can be registered only with respect to an article or set of articles. The registrable design must be capable of being applied to an article by an industrial process or means. The article must be movable. Thus, design of buildings, permanent structures and naturally occurring unprocessed objects are not registrable.

The Act specifically prohibits registration of a design which: (a) is not new or original; or (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way; or (c) is not significantly distinguishable from known designs; or (d) comprises or contains scandalous or obscene matter

A design is admissible if only it is incorporated in an article. It can be either three-dimensional or two-dimensional. The shape of a bottle is three dimensional in nature and on the other hand a design on wallpaper is two-dimensional. However, to consider as design, it must be applied to an article itself.

Novelty and originality: A design is admissible only when it is new or original means, not previously published in India. The newness is measured in respect of the class of article to which it has been applied. It is estimated on the testimony of experts in the trade. The person who is authorised to pass the verdict on the novelty and originality is an expert who is aware of what is common trade knowledge and usage in the class of goods to which the design is applied.

Applicable to an article: The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Hence, the industrial plan designs layouts and installations cannot be taken as ‘design’ under the Act.

Visible on the finished article: A design should be appeal solely by the eyes of the consumer. This means a ‘design’ in order to qualify, should be visible on a finished article. For example, the inside arrangements of a closed article cannot be considered as ‘design’ as per the law.

New Combination: A combination of previously known designs can be registered provided the combination produces a new visual appeal.

Colour: Colour can form a part of design but the colour by itself cannot constitute a subject matter of design.

Non-obviousness: The registration of a design is effective only to an article, which is non-obvious in nature. In other words, a matter of common type cannot be registered as design under the law.

No prior publication: The design should not be previously published in India.

In order to comprise ‘publication’, a design must be open to the public or it has been revealed to some person who is not bound to maintain it confidential.

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 an easily available document. Publication by prior use means the use of that particular design before public before it has been put down in papers or magazines. A disclosure to a single person is enough to constitute ‘publication’. Publication means it is no longer a secret according to the law. Like wise, the private or the secret use or an experimental use of a design will not constitute publication.

Any material, which disqualifies the conditions, to be admissible as ‘design’ cannot be taken or considered as design under the law sucgh as :

• any mode or principle of construction or mechanical or other action of mechanism or operation would not be registerable design.
• the design should not include any Trade Mark or property mark or artistic works as defined under the Copyright Act, 1957.
• any article produced in bulk by any industrial process is not included as ‘design’ in order to register as per the Act.
• the design which are Contrary to public order or morality for example, the design comprise or contains scandalous or obscene matter is not admissible as design as per the law.

Any person who claims to be the proprietor of any new or original design (which is not previously published in India) can apply for the registration of the Design In India. The design protection is also extended to non residents. Therefore a foreigner can also file an application to the Controller for registration of a "novel" and "original" design. The Controller on completion of the required procedure shall grant the certificate of registration to the proprietor of the design. The proprietor shall under the Indian law now has the exclusive right on the registered Design. The registration of the design under the Act excludes all persons from using the Design.

1. An application for the registration of design shall be made in the prescribed form and shall be filed in the patent office along with the prescribed fee.

2. Four copies of the representation of the design shall accompany such an application.

3. The application shall state the class in which the design is to be registered and the article or the articles to which the design is to be applied. Separate applications are required to be filed for each class of article.

4. Where words, letters or numerals are not the essence of the design, they shall be removed from the representations or specimens and where they are the essence of the design, the Controller may require the insertion of a disclaimer of any right to their exclusive use.

5. The Controller shall refer the application for examination to the examiner to know whether such design is capable of being registered under the Act and rules made there under.

6. The Controller may accept the application for registration, if he finds that there is no lawful objection in the report of the examiner to the design being registered.

7. However, if on consideration of the report of the examiner, any objection contained therein appears to the Controller as adverse to the applicant or if the controller requires any amendment to the application, a statement of such objections or amendments is sent to the applicant or his authorized agent in writing.

8. If the applicant or his agent does not remove the objections or apply for hearing within 3 months, his application is deemed to have been withdrawn, provided that the period for removal of objection shall not exceed 6 months from the date of filing.

9. After giving the applicant an opportunity of being heard or otherwise if the applicant has not attended to the hearing or has notified that he does not desire to be heard, the Controller may register or refuse to register the design as he thinks fit.

10. The Controller shall grant a Certificate of Registration to the proprietor of the design when registered.

11. An application which owing to any neglect or default of the applicant, has not been completed so as to enable registration to be effected within 6 months from the date of application, shall be deemed to be abandoned.

12. On acceptance of the design filed in respect of the 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.

Once the design is registered, the registered proprietor of the design acquires copyright in the design for 10 years from the date of registration. The same could be extended for a further period of 5 years on payment of the prescribed fee. After the expiry of the period of 15 years, the design is available for public use.

Registration of rights gives the following rights:

• Right to exclusive use of the design
• Right to protect the design from piracy
• Usage of rights even against the Government

The right to exclusive use of the design.

When a design is registered, the registered proprietor of the design shall, subject to the provisions of the Act of 2000, have the 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.

Design registration gives the owner, a monopoly on his or her product, i.e. the right for a limited period to stop others from making, using or selling the product without their permission and is additional to any design right or copyright protection that may exist automatically in the design.

There are certain designs which can be covered by copyright as well. This is termed as ‘copyright in design’. Hence, the person who holds the design which can also be registered under copyright would confer the rights of a copyright as well. For the copyright, it is not necessary to be registered and hence, for an unregistered design, the copyright subsists provided that the particular design is not been reproduced more than fifty times by an industrial process.

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 license of the registered proprietor of the design.

During the existence of copyright in any design it shall not be lawful for any person-

• 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, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
• to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or
• knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

If any person acts in contravention of this section, he shall be liable for every contravention-

• 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 such contravention, and for an injunction against the repetition thereof to pay such damages as may be awarded and to be restrained by injunction accordingly:

The following persons may be infringers of copyright in a design:-

• a person who has applied the design of fraudulent or obvious imitation thereof to the article for the purpose of sale without the license or consent of the proprietor.
• a person who has caused to be applied the design or its imitation as aforesaid.
• a person who has imported for the purpose of sale a pirated article without the consent of the registered proprietor; and
• a person who has published or exposed for sale a pirated article knowing that it is pirated article.

No suit or any other proceeding for relief under the Designs Act shall be instituted in any court below the court of District Judge. In other words, the suit for infringement, recovery of damage etc should not be filed in any court below the court of District Judge.

The judicial remedy for infringement of a registered design recommended in the Act is damages along with an injunction. The Act stipulates as follows.

If any person acts in contravention of the rights of the design holder, he shall be liable

• to pay damages to the registered proprietor of the design
• if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof to pay such damages as may be awarded and to be restrained by injunction accordingly.

The principles for grant of injunction are as follows.

• the plaintiff should make out a prima facie case and demonstrate that the balance of convenience is in his favour;
• interlocutory injunction granted if there is clear evidence that the loss suffered by the plaintiff cannot be monetarily compensated in the success in the action;
• interlocutory injunction will not be granted if the validity of registration in question;
• interlocutory injunction will not be granted if the defendant gives an undertaking to keep an account and according to that undertaking the plaintiff would be sufficiently compensated in the success of the suit.

Art has long represented a symbol of luxury and wealth. The world has gradually shifted to a scenario where art is incorporated in objects to an extent that the most common of objects have a touch of art. Art in the commercial world is best described in the form of Industrial Designs. A selling design is a competitive advantage in the present day world. The advantages of registering a design lies in taking mileage over competing products, preventing others from using design, keeping options open for granting of license to others, avoiding interim injunction arising out of a suit filed owner of prior registered same/similar design.

The fundamental motive of design law it to foster and safeguard the design element of industrial production. It is also contemplated to encourage innovative practice in the field of industries. The smooth registration process and the enhanced test for infringement would support designers in obtaining and using registered designs in India better than ever before.

Actual resolution of legal issues depends upon many factors, including variations of fact and laws of the land. Though the firm has taken utmost care in the preparation of this article, the information contained herein is not intended to constitute any legal advice and the firm cannot accept any responsibility towards those who rely solely on the contents of this article without taking further specialist advice. The reader should always consult with legal counsel before taking action on matters covered by this article.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.