Awareness Course on Intellectual Property Rights

UNIT 9 INDIAN DESIGNS LAW

Structure
9.1 9.2 9.3 9.4 9.5 9.6 9.7 9.8 Introduction
Objectives

Meaning of Design Registration and Prohibitions Copyright in Designs Piracy of Design and Penalties Steps for Filing an Application Summary 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 imparts the 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 twodimensional 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 In India, the law of design protection was contained in the Designs Act, 1911, which has now been repealed by the Designs Act, 2000 referred to as the Act in the following text.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 DESIGN

Under 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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mechanical 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. Spend 3 min.

Indian Designs Law

9.3

REGISTRATION AND PROHIBITIONS

Criteria 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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Awareness Course on Intellectual Property Rights

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 mere use 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. Spend 2 min. 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

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

Copyright 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 the copyright. 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?

Indian Designs Law

Spend 3 min.

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 or assignee. 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 or obvious 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 a temporary 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 not a design. Penalties Any person engaged in activities mentioned above 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, the infringer shall be liable to pay such damages as may be awarded and to be restrained by

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Awareness Course on Intellectual Property Rights

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 accepted 32 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 the Design Office in Kolkata or any Patent Offices in Delhi, Mumbai or Chennai. 8. After the examination, if demanded, additional information required by the Design Office should be submitted as soon as possible. 9. To facilitate easy communication and registration full and correct addresses should be furnished. Spend 5 min. 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 may consist 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 through monopoly 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 when i) 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, is imported; iii) when any article, as given in (ii) above is knowingly published or exposed for sale.
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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/-

Indian Designs Law

9.8
SAQ 1 a) F b) F c) T SAQ 2 No; SAQ 3

ANSWERS AND HINTS TO SAQs

Yes

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
Application by proprietor of a new design to the Controller indicating class of goods/articles in the same class

Examination for registerability

Is any objection conveyed to the applicant?

Removal of Objection Y

N Entry of the design in the register N

Issue of a certificate of registration

Publication of the application and the representation of the article on which the design is to be applied in the official gazette
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