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PROTECTION AND ENFORCEMENT OF DESIGN RIGHTS IN INDIA

September 1, 2020

By Dhruv Mathur and Isha Tiwari

Introduction

An innovative design has the potential to revolutionize the industry. Simplest of designs with their inherent efficiency and uniqueness have catered to consumers’ basic needs for decades. Seldom known famous designs which might have skipped one’s attention, but not their needs include the ball-point pen, bendy straw, angelpoise lamp, Post-it® notes and Tupperware®, to name a few. So, why is design an essential criteria for an article, and does it warrant separate legal protection? The scope of the article attempts to highlight the growing significance of design rights and its current scenario in India.

What is a Design?

Design rights protect the novel features such as shapes, configuration, colour combination, surface ornamentation, composition of lines, or patterns of an article, whether in two dimensional or three dimensional or in both forms, which provide an aesthetic element instead of a functional quality. In India, filing, prosecution and registration of an industrial design is governed by the Designs Act, 2000 (hereinafter referred to as the ‘Act’), alongwith its corresponding Designs Rules, 2001. The Act has been enacted in mandate with the minimum scope of protection granted to designs as per Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), while conforming to international protection standards. As per the Act, a ‘design’ includes 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[1].

Scope of protection under the Act excludes the following:

  • any mode or principle of construction;
  • anything which is in substance a mere mechanical device; and
  • any trade mark as defined in clause (v) of sub-section (1) of section 2 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 clause (c) of section 2 of the Copyright Act, 1957.

Any person (natural or juridical), claiming to be the proprietor of any new or original design, can file for registration of such design[2].

Design Filing Trends- India

The Annual Report (2017-2018) released by the Controller General of Patents, Designs and Trademarks (CGPDTM) reported an increase of 15.9% in design application filings over the last year.

Applied to an Article

Besides the fundamental criteria of providing a visual appeal to the final consumer, a design must be applied to an article and not the article itself, in order to seek protection under the said statute. Article means any article/substance, whether artificial or partly artificial and partly natural, and capable of being made and sold separately[3] such as the iconic designs of Apple’s iPhone (Reg. No. D0842298) and Volkswagen’s Beetle (Reg. No. D0774952).  As per Section 6 of the Act, a design may be registered in respect of any or all of the articles in a prescribed class of articles, and registration of designs for multiple articles in the same class is not barred. Thus, if an article is capable of being manufactured or sold separately and visually appeals the eye, a design can be registered separately in respect of that article. Design protection can also be claimed for a ‘set’ of articles, which have same characteristics and are usually sold together[4]. This ensures a wide ambit of protection to the registrant and subsequently, aides in challenging infringement of a registered design in respect of same/similar articles.

Design Registration- India

The Act purports to protect novel or original designs, capable of being applied to a particular article that can be manufactured by an industrial process/means. Designs play an integral part in a consumer’s shopping experience, as often times, the articles are purchased on both utilitarian and aesthetic aspects. The important purpose of design registration is to ensure that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods. Hence, originality of a new design has been deemed as origination of a design from the author of such design and includes the cases which though old in themselves yet are new in their application[5]. Similar obiter was cited by the Hon’ble High Court in Shree Vari Multiplast India Pvt. Ltd. v/s Deputy Controller of Patents & Designs & Others that the law of design right does not prevent competitors from using same methods or principle of constructing to create competing designs, so long the competing designs do not have the same shape or configuration as that of the original design of the proprietor.

Therefore, some essential criteria for design registration, as per Section 4 of the Act, mandates a design to be:

  • New or novel;
  • Has not been anticipated by publication or use anywhere in the world, including in India or prior claimed in application elsewhere i.e. does not form a part of public domain or state of the art;
  • Significantly distinguishable from known designs or combination of known designs; and
  • Should not contain any scandalous or obscene matter

The subtext is evident on a bare perusal of the provision that the applicant for registration makes a declaration on a prescribed form, in lieu of the design for which registration is sought, and that the same is not vulnerable to any condition as stipulated under Section 4 of the Act[6].

Locarno Classification

The Locarno Agreement was first introduced in 1968 as a touchstone for uniform international classification of goods for registration of industrial designs. The Classification houses classes and sub-classes of 5,000 alphabetically-listed goods[7]. With India’s formal accession to the Locarno Classification Agreement in June, 2019

Representation of a design 

In order to effectively enforce one’s design rights, it is pertinent to represent all the elements of a design. If a design’s features are capable of segregation and each fulfils the essential criteria for registration, separate applications can be filed under the Act. In Vega Auto Accessories (P) Ltd. vs S.K. Jain Bros. Helmet (I) Pvt[8] , the Hon’ble Court opined that while comparing two designs, their sameness of the features does not necessarily mean that the two designs must be identical in all the aspects and should differ on none. Rather they can be substantially same even.

Enforcement of Design Rights

Duration of protection

Once a design meets the statutory conditions, it is registered and the proprietor of the design acquires a copyright over that design which lasts for a duration of 10 years from the date of registration (in cases where claim to priority has been allowed, the duration is 10 years from the priority date), further extendable to an additional period of 5 years upon a request made within the said protection period.[9] The date of registration, except in case of priority, is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.

Infringement

A registered owner of a design acquires exclusive rights to apply the design in respect of article(s) for which registration is sought for. A fraudulent or obvious imitation of the design thereof, in respect of a similar article, for the purpose of sale or importation of such article, without the written consent of the registered proprietor, amounts to piracy of a registered design[10]. Publication or exposing such articles for sale with knowledge of the unauthorized application of the design to them also involves piracy, attracting pecuniary damages and injunction reliefs. A suit for infringement of copyright in design or piracy of registered design shall be filed before the Controller of Designs, and shall possess powers of a civil court in disposing off the same.

Marking of an article to obtain Relief under the Act

It is the duty of the registered owner of a design to affix on his article(s) on which registered design has been applied, with the prescribed mark or words or figures, which expressly denote that such a design has been registered with the Controller. A failure to do so renounces the right to file a claim of infringement and damages in the future. In such a case the registered owner must show proof beyond reasonable doubt that –

  1. All necessary steps to mark the article were taken; or
  2. Infringement took place after receiving knowledge of the copyright existence

 Overlap of protection vis-a-vis Design Rights

Design rights are notoriously famous for overlapping with other IP rights inter alia copyrights. Although, scope of protection extends only to the aesthetic features of a design and not to functionality, unlike under patents which grant protection to inventions resulting in technological advancements and functionality thereof.

By definition, the registered proprietor of a design acquires a copyright in the said design. There is no simultaneous protection for a design under the Copyright Act and the Designs Act, as Section 15(1) of the Copyright Act bars copyright protection to a registered design. Copyright in an unregistered design would also cease once the design has been reproduced more than 50 times by an industrial process by the owner or with his license, by another person[11].

Design Protection under the Paris Convention

India is one of the countries signatory to the Paris Convention. Therefore, the provisions for the right of priority are applicable. Based on a regular application first filed in any one of the contracting state, the applicant may, within a time-period of not more than six months (from the date of filing the first application in India), apply for design protection in other contracting states. The latter application will be treated as if it had been filed on the same day as the first application.

Penalty and Compensation

In reference to Section 22(2) of the Act, a base amount is provided by the legislation to the aggrieved party as statutory compensation i.e. a minimum of INR 25,000, which goes a maximum of INR 50,000 at present. The party also has the option to file a suit for recovery of damages based on the accounts of actual profits, alongwith injunction. In the recent case of Steelbird Hi-Tech India Ltd. vs. Asia Fibre Glass Products & Anr.,[12] wherein the Defendant was engaged in manufacturing and trading of helmets with identical design as those of the Plaintiff’s. It was contended that due to the uniqueness and novelty of the helmet’s design, the Plaintiff’s product had acquired a substantial reputation in the market, both India and abroad and is solely associated with the Plaintiff alone. Although, a fair observation that the design of a helmet may be restricted to certain shapes, the Hon’ble Court passed an ex parte permanent injunction, alongwith entitlement to the Defendant’s profits worth over INR 96 lacs. The case highlights the paucity in the provision and the judicial review exercised to rectify and interpret the relevant law in question as statutory compensation under Section 22 leaves the party open to receive a few pennies as compared to the actual losses and damages suffered, and the damages offered in a suit would rest entirely on the Court’s discretion upon producing an accurate account of infringer’s profits.

Conclusion

Designs play a crucial role in visually differencing one’s products from its competitors and with the rise of competition in the industry, protecting one’s designs is pertinent to attain an edge in the industry. The criteria of visual appeal to be a design, leaves an impression in the consumer’s mind and over the time, associates with the owner alone. The Designs Act, 2000, was formulated with an intent to promote innovation and creativity in sync with the global industrial and technological sector. The niche and extensive framework, with its streamlined application process and period amendments, ensures proprietors/owners are awarded statutory rights, in harmony with international treaties and agreements such as the 2014 amendment to the Designs Rules which brings in ‘small entity’ as a new category of applicant in addition to natural person. Moreover, we also look forward to have the Start-ups included in the list of applicants in the Indian Design Laws.

[1] Section 2(d) of the Designs Act, 2000

[2] Section 5 of the Designs Act, 2000

[3] Section 2(a) of the Designs Act, 2000

[4] Rule 2 (e) of the Design Rules, 2001

[5] Section 2(g) of the Designs Act, 2000

[6] Pentel Kabushiki Kaisha & Anr. vs M/S Arora Stationers & Ors CS(COMM) 361/2017

[7] FAQs : Locarno Classification; https://www.wipo.int/classifications/locarno/en/faq.html; accessed on May 18, 2020

[8] CS(COMM) 837/2017

[9] Section 11(1) of the Designs Act, 2000

[10] Section 22(1) of the Designs Act, 2000

[11] Section 15(2) of the Copyright Act, 1957

[12] CS(COMM) 1366/2016

Read more about Design Laws in India over here

 

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