Intellectual Property Laws
JAMIA MILLIA ISLAMIA
DESIGN ACT, 2000
SUBMITTED BY:-
JIJO RAJ P
B.A. LL.B(H.)
15BLW0011
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ACKNOWLEDGEMENT
I, would like to express my deep sense of gratitude towards our IPR teacher, Prof.
Shabana . It was she who gave me a project on this topic and guided me thoroughly
to make this project easily. The process of making this project gave me
information about a lot of things which I did not know earlier and this would not
have been possible without Mam’s help.
I would also like to thank my friends and family members who helped me in the
making of this project.
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CONTENTS
SL. PARTICULARS
1. INTRODUCTION
2. WHAT IS AN “ARTICLE” UNDER THE ACT?
3. WHO CAN APPLY FOR REGISTRATION OF
A DESIGN?
4. WHAT IS THE MEANING “DESIGN”
WITHIN THE SCOPE OF THE DESIGNS
ACT?
5. WHAT IS THE PROCESS OF
REGISTRATION?
6. WHAT CAN BE REGISTERED UNDER THE
ACT?
7. TERM OF PROTECTION
8. PROTECTION FROM INFRINGEMENT
9. NOTABLE EXAMPLES OF “DESIGNS” IN
INDIA
10. NOTABLE EXAMPLES OF “DESIGNS” IN
INDIA
11. WHAT ARE THE RIGHTS CONFERRED BY
REGISTRATION?
12. ASSIGNMENT
13. CANCELLATION OF DESIGN
14. PIRACY
15. REMEDIES
16. PARIS CONVENTION
17. THE SALIENT FEATURES OF THE DESIGN
ACT, 2000
18. DESIGN ACT 1911 AND 2000 : A
COMPARISON
19. DESIGN AMENDMENT RULES 2008
20. PROBLEMS WITH THE DESIGN LAW
REGIME IN INDIA
21. RECENT CASE LAWS
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INTRODUCTION
God gifted a wonderful thing called Brain to Man and Mother Nature endowed him with
the abundant physical and biological resources on the earth. Man started creating his own
world by application of his brain or mind and by utilization of these natural resources.
Man has also been bestowed with imagination and creativity. With his imagination and
creativity, he has been producing various articles or products for his needs, comfort and
convenience. In the earlier era, the creations and inventions by him fell in a public
domain. These were the common properties. Anybody could use and copy these creations
and inventions without any restriction, reservation or payment. However, with the
passage of time, the importance and value of these creations was realized. The
commercial aspect started playing a significant roll in these creations. By end of
Twentieth Century, the things created and invented by the human mind were recognized
as an intellectual property of the owner .
Science and technology started boosting up in the beginning of 20th century, and the urge
to provide more reliable judicial system came in place for better protection of this field
and for the protection of the industrial designs. The steps were required to be taken to
promote more and more development in design industry by providing protection under
registered design. Though it was very essential to protect the design only to the extent it
was required and not any more than that and to allow use of available design for free too.
The current Act is in line with the TRIPS agreement and therefore line with globalisation
of trade and commerce.
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The Industrial product basically includes two factors, i.e. artistic work and functioning
part of the product. Though in Design Act only artistic work is covered and not
functioning part of the product, though the artistic work should be unique and not usual.
For example, table with for legs and top would not be considered as design, but the table
with unique top and unique style of bottom can be registered.
Day by day industrial design becoming daily part of the life of the consumer by catching
consumers eyes through unique designs. For the same reason, it has become essential to
provide protection to such industrial designs.
The expression "Design' means only the features of shape, configuration, pattern or
ornament applied to any article 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. The design means the features applied to an article and not
the article itself. The features are conceived in the author's intellect who give those ideas
conceived by him a material (visual) form as a pictorial illustration, or as a specimen,
prototype, or model. By registration under the Act, the features are protected as design.
The protection is given for independently created industrial designs that are new or
original, for example, the distinctive shape of a coke bottle or a pen or a textile design.
The protection of design is for a maximum period of fifteen years.1
Industrial designs in India are protected under the Designs Act, 2000 (“Designs Act”),
which replaced the Designs Act, 1911. The Designs Act has been in effect since May 11,
1
The Designs Act, 2000, Gazette of India, Extraordinary part H-Section I, 2002
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2001. The Designs Rules, 2001 have been framed under the Designs Act. The Designs
Act incorporates the minimum standards for the protection of industrial designs, in
accordance with the TRIPS agreement. It provides for the introduction of an international
system of classification, as per the Locarno Classification.
What is an “article” under the Act?
Under this legislation, an “article” is any manufactured object. The object may be made
of any substance, artificial or a mixture of artificial and natural.
An article should include any part that is capable of being made and sold separately. The
terms ‘pattern’ and ‘ornament’ refer to decorative elements applied to an article, such as
an ornamental cap of a bottle, like in perfumes. ‘Shape’ and ‘configuration’, have a direct
link to the article’s structure, such as the distinctive shape of a Coca-Cola bottle.
Who can Apply for Registration of a Design?
Any person claiming to be the “proprietor of any new or original design” 2 not previously
published in any country and is not contrary to public order or morality can apply for the
registration of the design. The expressions “public order” or “morality” have not been
defined in the Designs Act. The term “original,” with respect to design, means a design
originating from the author of such a design and includes the cases that, although old in
themselves, are new in their application. Absolute novelty is now the criterion for
registration.
2
Per Section 2(j) of the Designs Act: ”proprietor of a new or original design”,
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What is the Meaning “Design” Within the Scope of the Designs Act?
As per the Designs Act, “design” means only the features of shape, configuration,
pattern, ornament or composition of lines or colours applied to any “article”76 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, “design” does not
include any mode or principle of construction, or anything which is in substance a mere
mechanical device, and does not include any trademark (as defined in section 2(1) (v) of
the Trade and Merchandise Marks Act, 1958), or property mark (as defined in section
479 of the Indian Penal Code), or any artistic work (as defined in Section 2 (c) of the
Copyright Act, 1957). In order to obtain registration under the Designs Act, the design
must be applied to an article. In other words, a mere painting of a natural scene or its
presentation on paper is not entitled for registration under the Designs Act.
What is the Process of Registration?
The process of registration of a design under the Designs Act requires the following
steps:
• File an application for registration of design with the prescribed fee with the
Controller of Patents and Designs. Photographs of the articles from all angles must
be filed along with the statement of novelty.
• Reply to the objections raised by the Controller.
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• Upon removal objections, the design is registered. When registered, a design is
deemed to have been registered as of the date of the application for registration.
• After registration, the particulars of the design are published.
• If the Controller rejects the application, the aggrieved person can appeal to the
High Court.
There is no opposition procedure prior to registration.
What can be registered under the Act?
In order to register a design, it must have the following features:
• It must be new and original.
• It must be capable of being made and sold as an individual item.
• It should not be in publicly domain prior to filing an application. Thus the design
should be private and unpublished.
• It should be explicitly distinguishable from already existing designs.
• It should not have any obscene or inappropriate content.
Term of protection
For any IPR protection, there is a time period for which that protection applies.
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For designs, this term of protection is 10 years from the date of registration of that
design. After 10 years, the protection can be extended for a period of 5 years. Once this
period is complete the design falls in public domain and may be used unrestricted by
anyone.
All registered designs are open for cancellation even after the registration has been
granted on the grounds that it does not qualify as a design or that it does not fulfill the
criteria for protection under the Act.
Protection from infringement
Like trademarks, designs too are also susceptible to infringement mostly along the lines
of passing off. It is an illegal act to make use of a registered design, or a fraudulent or
obvious imitation of a registered design, without authorization from the registered owner
of such design.
In case of such an infringement, the registered owner may file a suit to recover a nominal
sum as damages from the infringer, and also ask that the infringement stop taking place.
In order to ascertain infringement, the Court or any adjudicatory body need not directly
compare the two articles, but look at them from the point of view of the average customer
and see if the two are causing an obvious confusion in the minds of the consumer.
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Notable examples of “designs” in India
Troikaa Pharmaceuticals, a pharma company has protected its “D” shaped tablet
DYNAPAR by registering the shape and colour of the tablet under the Design Act. it has
also successfully sued other companies for copying the said design.
Mattel lost out on protecting the design of their Scrabble board as the design was already
in public domain prior to filing an application.
Whirlpool successfully registered their distinctively shaped washing machine and
even won a lawsuit against Videocon for infringing it.
What are the Rights Conferred by Registration?
Registration of a design confers upon the registered proprietor a “copyright” with respect
to the design. Under the Designs Act, the word “copyright” refers to the exclusive right to
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apply the design to any article in any class in which the design has been registered. The
first term of registration is ten years after which it can be renewed for an additional five-
year period.
Assignment
When a person becomes entitled by assignment, transmission, or other operation of law
to the copyright of a registered design, a record of the title must be registered by an
application to the Controller for the same, accompanied by the prescribed fee and proof
of title.
When a person becomes entitled to any right in the registered design either by way of a
mortgage, a license, or otherwise, an application in the prescribed form must be made to
the Controller to register his title.
Cancellation of Design
Any person interested may present a petition for a cancellation of the design registration
at any time after the registration, on the following grounds: that the design has been
previously registered in India; that it has been published in India or in any other country
prior to the registration date; that the design is not a new or original design; that the
design is not registrable under the Designs Act or that it is not a design as defined under
Section 2(d) of the Designs Act. An appeal from any order by the Controller can be filed
with the High Court.
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Section 15 of the Copyright Act, 1957 states that the copyright in any design ,which is
capable of being registered under the Designs Act, but is not, will lose its copyright as
soon as the design has been reproduced 50 times by an industrial process by either the
owner of the copyright or his licensee.
Piracy
Section 22 of the Designs Act lists the different acts that amount to piracy of the
registered design, including:
1) any application of the registered design for the purpose of sale during the existence of
the copyright in the design without a license or the express consent of the registered
proprietor;
2) or the importation for sale without the consent of the registered proprietor of 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; or,
3) knowing that the design, or a fraudulent or obvious imitation has been applied to any
article in any class of articles in which the design is registered, published, or exposed for
sale, without the consent of the registered proprietor of such an article.
Any grounds on which the design can be cancelled can also be used as a defense in an
infringement action.
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Remedies
The Designs Act provides for civil remedies in cases of infringement of copyright in a
design, but does not provide for criminal actions. The civil remedies available in such
cases are injunctions, damages, compensation, or delivery-up of the infringing articles.
Paris Convention
Reciprocity for the purpose of claiming priority is now allowed from the applications
originating from the Paris Convention countries
The salient features of the Design Act, 2000 can be drawn as follows:
1. definition of the terms “article”, “design” has been given vide scope.
2. the scope is given to the term “prior publication”.
3. Introduction of provision for delegation of powers of the Controller to other
officers and stipulating statutory duties of examiners.
4. Provision of identification of non-registrable designs.
5. Provision for substitution of applicant before registration of a design.
6. Substitution of Indian classification by internationally followed system of
classification.
7. Provision for inclusion of a register to be maintained on computer as a Register of
Designs.
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8. Provision for restoration of lapsed designs.
9. Provisions for appeal against orders of the Controller before the High Court
instead of Central Government.
10. Revoking of period of secrecy of two years of a registered design.
11. Providing for compulsory registration of any document for transfer of right in the
registered design.
12. Introduction of additional grounds in cancellation proceedings and provision for
initiating the cancellation proceedings before the Controller in place of High
Court.
13. Enhancement of quantum of penalty imposed for infringement of a registered
design.
14. Provision for grounds of cancellation to be taken as defence in the infringement
proceedings to be in any court not below the Court of District Judge.
15. Enhancing initial period of registration from 5 to 10 years, to be followed by a
further extension of five years.
16. Provision for allowance of priority to other convention countries and countries
belonging to the group of countries or inter-governmental organizations apart from
United Kingdom and other Commonwealth Countries.
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17. Provision for avoidance of certain restrictive conditions for the control of
anticompetitive practices in contractual licenses.
Design Act 1911 and 2000 : A Comparison
The Designs Act, 2000 which came into effect from May 11, 2001 replacing the earlier
Designs Act, 1911.
1. International classification based upon Locarno classification has been adopted
wherein the classification is based on articles -the subject matter of design. Under the
previous law a 'Design' was classified on the basis of the material of which the article was
made.
2. Under new law, a Design registration can now be obtained for new or original features
of shape, configuration pattern, ornamentation or composition of lines or colours as
applied to an article, whether in 2 or 3 dimensions or both
3. A concept of "absolute novelty" has been introduced whereby a 'novelty' would now be
judged based on prior publication of an article not only in India but also in other
countries. Under the previous law, the position was ambiguous.
4. A Design registration has been brought within the domain of the public records right
from the date it is physically placed on the Register. Any member of public can take
inspection of the records and obtain a certified copy of the entry. In the previous Act,
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there was a 2-year confidential period -post registration -which prohibited taking
inspection/certified copy of any entry in the records.
5. A Design registration would be valid for 10 years (from the date of registration which
is also the date of application) renewable for a further period of 5 years
6. Under the previous law the validation period was 5 years which was extendable for 2
terms of 5 years each.
7. A Design registration can be restored within a year from its last date of expiry. Under
the previous law, no provision relating to restoration upon expiration of the Design
registration was provided.
8. Cancellation of a Design registration under the new law is possible only before the
Controller and there are a couple of additional grounds which have been recognized:-
9. The subject matter of Design not registerable under the Act
• The subject matter does not qualify as a 'Design' under the Act.
• The subject matter does not qualify as a 'Design' under the Act
Under the previous Act, the cancellation was provided for before the Controller within 12
months from registration on limited grounds and in the High Court within 12 months or
thereafter.
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Design Amendment Rules 2008
Pursuant to section 353 of the Building Act 2004, the Minister for Building and
Construction makes the following rules:
Title
• These rules are the Licensed Building Practitioners Amendment Rules 2008.
Commencement
• These rules come into force on 1 November 2008.
Principal rules amended
• These rules amend the Licensed Building Practitioners Rules 2007.
Schedule 1 amended
• Schedule 1 is amended by omitting competency 1 from the licensing classes of site
1, site 2, site 3, and carpentry and substituting the following competency:
"Competency 1: Demonstrate knowledge of the regulatory environment of the
building construction industry"
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• Schedule 1 is amended by omitting competency 2 from the licensing class of
carpentry and substituting the following competency: "Competency 2:
Demonstrate knowledge of current building and trade practice"
• Schedule 1 is amended by adding the licensing classes competencies like roofing,
external Plastering, bricklaying and Block laying.
Problems with the design law regime in India
Procedurally, applying for design protection is the easiest among other IP protection, the
use of this protection by companies and individuals is relatively less than that of
trademarks, copyrights and patents.
One of the reasons why design is so infrequently protected is because in many industries
such as jewelry and shoes, the designs change rapidly to keep up with consumer trends.
The requirement that prior to registration a design cannot be in public domain thus cannot
be met by most of these industries.
Artistic works such as designs of dresses by fashion designers cannot be given protection
under the Design Act, and most fashion designers prefer copyright protection in any case.
Another problem that the design protection regime faces is the term of protection. 15
years is too short a time. A company/individual would rather resort to trademark or
copyright protection depending on the article in question, to get a longer term of
protection.
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In case an article is original and can be protected by both design and copyright, the
overlap between the Copyright Act and the Design Act is not allowed, hence mostly the
Copyright Act is chosen to get a better term of protection.
In the United States and the United Kingdom, and various other places as well,
unregistered designs are allowed to be out in public for a limited time so that they can be
commercially exploited while the registration application is being processed. Many
possible changes can be undertaken in the Indian law in the near future.
Recent Case Laws
a) Aparia Tools Limited v. Ambica Overseas and Anr
In the above case, the plaintiffs have filed a suit claiming perpetual injunction
restraining the defendants from applying or causing to be applied in relation to
wrenches and pliers or any other goods contained in class 01 of the Designs Act 1911(
now repealed and substituted by the designs act 2000) which is identical or
deceptively similar to or a fraudulent imitation of the plaintiffs registered designs. In
March 1994, the plaintiff conceived a novel design of an adjustable Wrench. With a
view to protect the unique design and novelty of this product, an application was
made for registration of the same on or about 28th March 1994 and registration was
accepted.In1998 the plaintiff conceived and developed a Plier with a unique design.
With a view to protect this design, the plaintiff made an application on 5th January
1999 and that application was accepted. Hence by virtue of these registration
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certificates, the plaintiff acquired status as registered proprietor of the copyright in the
said designs.
In May 2003 the plaintiff learnt that first defendant was manufacturing and selling,
through defendant No. 2, in Mumbai, adjustable Wrench which was a fraudulent and
obvious imitation of the plaintiff's registered design.
Thus, the first defendant had committed and continues to commit infringement and
piracy of the plaintiff's registered designs.
The Designs Act as originally enacted and now amended, has enlarged the scope of
definition of terms "Article" and "Design". It has introduced the definition of the term
"Original". The term "Original" as defined in Section 2(g) reads thus:
"(g) 'original', in relation to a design, means originating from the author of such
design and includes the cases which though old in themselves yet are new in their
application."
'Article' means any article of manufacture and any substance, artificial, or partly
artificial and partly natural; and includes any part of an article capable of being made
and sold separately."
The defendants contended that there is nothing novel and the articles with their shapes
and designs are part of common trade. It may be true that there are several
manufacturers of these articles. However, the uniqueness insofar as adjustable
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Wrenches in the plaintiffs design is the scale mark. The defendants have contended
that plaintiffs are not proprietors of new or original design and the design registered is
pre-existing common type. Defendants have submitted that the plaintiffs are not aware
of hard realities about hand tool manufacturers and the plaintiffs should not, because
of money power; attempt to suffocate genuine competition in business. The court
considering the above circumstances held that since the plaintiffs had failed to make
out a prima facie case, the motion for injunction was dismissed.
B) Glaxo Smithkline Consumer Healthcare Gmbh and Co. Kg v. Amigo Brushes
Private Limited and Anr. (2004, 14 ILD 357Del)
In the above case the plaintiff filed a suit for permanent injunction for restraining the
defendant from manufacturing and selling offending toothbrushes, which infringed
the registered design of the plaintiff or which were fraudulent or obvious imitation. It
was alleged that plaintiff was a company organized under the laws of Germany. It was
engaged in a variety of business in the healthcare field, especially in the design and
sale of toothbrushes. The suit is filed in respect of design of toothbrushes, which
comprises a distinctive aesthetic toothbrush in respect of which the plaintiff had
obtained a design registration.
By virtue of said design registration and Section 48(5) of the Designs Act, 2000, the
plaintiff has the copyright in the design for an initial period of 5 years from the date of
the registration and this period is extendable by two successive periods of 5 years
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each. Plaintiff has also obtained corresponding design registrations of this toothbrush
model in several parts of the world. Recently, the plaintiff came to know that
defendant has recently commenced sale of toothbrushes under the brand name
"Pepsodent Cushion", which is a fraudulent and obvious imitation of the plaintiff's
design. The entire controversy centers around the design of the handle grip part of the
toothbrush used for gripping the toothbrush while in use. The plaintiff claims that the
design of its handle is novel and original and has been registered. In a suit for
injunction filed against the defendants, the Delhi High Court held that the tooth
brushes mainly have 2 components viz., the plastic handle and the bristles. The handle
itself has 3 sub components which are (a) the head (b) the neck (c) the handle grip.
While holding that the handle of the tooth brush could not be detached from other
components and sold out separately, the court dismissed an application for
interlocutory injunction against the defendants on the grounds that the handle (grip) of
the toothbrush detached from its other components is incapable of being registered as
a design, therefore the question of piracy of the plaintiff's toothbrush's design under
section 22 of the Designs Act 2000 could not arise. The court held that the similarity
of toothbrushes of the plaintiff and the defendant cannot be judged simply on looking
at the tail of the handle i.e. the grip portion.
C) Rotela Auto Components (P) Ltd. & Anr. v. Jaspal Singh & Ors. (2002 {24} PTC
449 Del)
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In the above case it was held that Design was a conception, suggestion or an idea of a
shape and not an article. If it has already been anticipated, it is not new or original. If it
has been pre-published, it cannot claim protection as publication before registration
defeats the proprietors rights to protect under the Designs Act, 2000.Unless the design is
new and original, registration cannot be effective. In the present case since the design has
been pre-published, it cannot claim protection. The registration of the design is of recent
date , but since the design has been published earlier, the ground of defence mentioned in
section 19 of the designs act 2000 can be taken by the defendants, pursuant to sub-section
(3) of section 22 of the act. Therefore no injunction can be granted as there is a serious
dispute as to the validity of the design to be tried in the suit. The injunction order granted
earlier has also been vacated.
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