Introduction of Design Act 2000
A customer’s attraction to a product is influenced heavily by its appearance, which significantly impacts sales. Vendors invest considerable time and resources in creating unique product designs to boost sales and profits. A design is connected to an article and cannot exist independently; it is distinct from the article itself.
The Designs Act, 2000 in India was enacted to protect the visual, non-functional aspects of products. The Act follows the ‘first to file, first to get’ principle, encouraging innovators to promptly register their designs to gain exclusive rights and prevent infringement.
The Act is divided into eleven chapters, covering areas like design registration, copyright, and other aspects of intellectual property.
Origin of Design Act, 2000
The Patents and Designs Act, 1872 was India’s first law regulating designs during colonial rule. It was followed by the Inventions and Designs Act, 1888 for protecting inventions and designs. Later, the Indian Patents and Designs Act, 1911, influenced by the British law of 1907, was introduced. The Patent Act of 1970 repealed the patent sections of the 1911 Act, leading to the eventual repeal of the Designs Act, 1911.
Finally, India enacted the Designs Act, 2000, effective from May 11, 2001, keeping many provisions of the 1911 Act but updating them to align with the TRIPS Agreement and other international conventions. The substantive law of the Designs Act, 2000 must be read along with the Designs Rules, 2001, which provide procedural guidance.
Definition of design under the Designs Act, 2000
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 colors 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.
Striking features of the Designs Act, 2000
The Designs Act, 2000 introduced several key features:
- Locarno Classification: Designs are classified based on subject matter, not material composition.
- Absolute Novelty: Designs must be completely new worldwide, without prior use or publication.
- Restoration of Designs: A lapsed design registration can be restored.
- Stricter Penalties: Penalties for breaches have been made more severe.
- Revocation of Secrecy Period: The two-year confidentiality period for registered designs has been removed.
- Case Transfers: District courts can transfer cases to the Supreme Court.
- Substitution of Application: Applicants can substitute their applications before registration.
- Anti-Competitive Provisions: Certain clauses regulate anti-competitive practices in licensing.
- Delegation of Powers: The Controller’s powers can be delegated to other controllers.
Essential requirements for the registration of design
Noveltyand Originality: Only unique and original designs can be registered. A combination of existing designs can be registered if it results in a new visual appearance.
- Case: Hello Mineral Water Pvt. Ltd. vs Thermoking California Pure (1999) – The Delhi High Court ruled that mere shape or form isn’t enough for novelty; the design must show noticeable differences to an informed observer.
NoPrior Publication: The design must not have been previously published. Private use does not count as publication. However, public access, like in a library, qualifies as publication.
Case: M/S Kemp & Company & Another vs M/S Prima Plastics Ltd. (1998) – Disclosure to a third party doesn’t amount to publication if done in good faith.
Moralityand Public Order: Designs that are immoral, prohibited by authorities, or could disrupt public order are not eligible for registration. Vulgar or controversial designs are excluded.
Who can register design under the Designs Act, 2000
According to the requirements of the Designs Act of 2000, any person who claims to be the proprietor or owner of any novel or original design that has not previously been published in any country and is not harmful to public order or morality may apply for registration of such design. An individual, partnership firm, company, or agency acting on behalf of the proprietor is an example of such a person.
Application to register designs
Section 5 of the Designs Act, 2000 deals with the application process for design registration. It allows any person who claims ownership of a new or original design — not previously published and not against public policy or morality — to apply for registration. Applications must be filed in the prescribed form, manner, and fee at the appropriate patent office, and a design can only be registered under one class. If there’s doubt about the class, the Controller decides.
The Controller also has the authority to reject a registration application, with an appeal option to the Supreme Court. If the applicant defaults or neglects to complete the registration within the statutory period, the application is considered abandoned.
What happens when the design is registered
When a design is registered, the owner obtains copyright protection for ten years from the date of registration. This period can be extended by five more years if the owner applies for an extension in the prescribed manner before the initial term expires and pays the required fee.
If copyright lapses due to non-payment of the extension fee, the owner can apply for restoration within one year from the date of lapse, by applying with the prescribed fee and an explanation for the default. If the Controller is satisfied that the default was genuine and not intentional, the design’s copyright will be restored upon payment of the outstanding fees.
Piracy of registered design
Section 22 of the Designs Act, 2000 deals with piracy of registered designs, treating it as an infringement of copyright. During the copyright period, no one can, without the owner’s license or written consent:
- (a) Apply the design or a fraudulent/imitation of it to any article for sale.
- (b) Import such articles for sale.
- (c) Publish or expose such articles for sale after knowing about the unauthorized application of the design.
Piracy only occurs if these acts are done commercially, not for personal use, and involve articles from the registered class of the design.
In cases of alleged infringement, courts assess the matter from the perspective of an average customer, focusing on whether there is likely to be customer confusion regarding the design.
Remedies against the piracy of registered designs
Section 22(2) of the Designs Act, 2000 outlines the civil remedies available for piracy of a registered design, as the Act does not provide for criminal prosecution.
The registered owner can choose one of two remedies:
- Monetary Penalty (Section 22(2)(a)):
The infringer must pay INR 25,000 per breach, recoverable as a contract debt, with a maximum limit of INR 50,000 for a single design. - Damages and Injunction (Section 22(2)(b)):
The owner can file a suit for damages and seek a court injunction to stop further infringement. If successful, the court may award damages and grant an order restraining the defendant.
Cancellation of registration of the registered design
Section 19 of the Designs Act, 2000 allows cancellation of a registered design by filing a petition with the Controller after registration, using Form 8 and paying the prescribed fee (INR 1500 for individuals, INR 3000 for SMEs, INR 5000 for large companies).
Grounds for cancellation include:
- The design was already registered in India.
- The design was published earlier in India or abroad.
- The design is not new or original.
- The design is not registrable under the Act.
- The design does not fit the legal definition under Section 2(d).
Appeals against the Controller’s decision lie with the High Court, and the Controller may also refer cases to the High Court for decision.
Landmark judgments on registration of designs
Gopal Glass Works Ltd. vs Iag Company Ltd. And Ors. (2006)
Plaintiff had registered his design named ‘Diamond Square’ prior to registration of ‘Kohinoor’ by the defendant. When contentions were raised, the defendant had 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.
Whirlpool of India Ltd vs Videocon Industries Ltd (2004)
Defendant, Videocon, had the registration of the design with the same features, configuration, and 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 therefore held liable for the infringement and passing off of the plaintiff’s design.
Contributed By: Arzoo Kala ( Intern )