CRITICAL ANALYSIS OF THE DESIGNS ACT, 2000.

SUBMITTED AS A PARTIAL FULFILLMENT OF THE COURSE

CURRICULLUM OF CLINICAL PAPER (IPR).
SUBMITTED TO: MRS. NIDHI BUCH
FACULTY CO-ORDINATOR
SUBMITTED BY: REGN NO. 04A05.
! SEMESTER.
GU"ARAT NATIONAL LA# UNI$ERSITY.
1
CONTENTS PAGE NUMBER
1.Introduction 3
2. Salient new features of the
designs Act, 2000.
4
3. Essential characteristics of a design. 6
4. Subject-matter of designs. 8
5. Procedure of registration of a design. 10
6. nfringement of a registered design and
remedies under the act.
1!
". #$erla%%ing &egislations' (o%)right
*nder +he ,esigns -ct . (o%)right -ct.
14
INTRODUCTION
!
Liberalization has brought with it unlimited options for the Indian
consumer who now has numerous alternatives for an single
product. !his change has revolutionized the Indian consumers
outloo" as also the sellers approach. #o longer do the sellers
have to establish onl their reliabilit and integrit in the mar"et,
but the have to also appease the aesthetic senses of the
consumer. $ore than ever before, sellers are re%uired to pac"age
and mar"et their products in a manner which appeases the
consumer and which a consumer could recognize and relate to.
&onsidering the huge amount of capital and effort e'pended b
manufacturers and mar"eters in establishing the recognition of
consumers through the presentation and appearance of their
products, it is essential that the law protect the designs that
emanate from these efforts of the manufacturers of goods.
Li"e other intellectual propert rights, the right in a design is also
an intellectual propert right. !he ob(ect of the )esigns Act is to
protect the aesthetic appearance of an article if it is original or
novel. !he law presumes that an aesthetic appearance is the
result of intellectual efforts. !he protection given b the law
relating to designs to those who produce new and original
designs is primaril to advance industries and "eep them at a
high level of competitive progress. !here has been a
considerable increase in the registration of designs. !o provide
more effective protection to registered designs and to promote
designs activit, in order to promote design element in an article
of production, it has become necessar to ma"e the legal sstem
of providing protection to industrial designs more efficient. It is
also intended to ensure that the law does not unnecessaril
e'tend protection beond what is necessar, to create the
re%uired incentive for design activit, while removing
impediments to the free use of available designs.
!he )esigns Act, 2000 is a consolidating and amending Act
relating to the protection of design. *rom the statements of the
ob(ects and reasons of the new Act, it appears that the framers of
the law became aware of the considerable progress in the field of
Science and technolog, the changing scenario in the
international trade and globalization of Indian econom, which
had ta"en place since the enactment of the old Act in 1+11, also
made it essential for this law to be at par with the international
trends in design administration. As such, one of the ob(ects of the
3
new Act was to ensure effective protection to registered designs.
,ne of the ob(ects was also to ensure that law does not
unnecessaril e'tend protection beond what is necessar to
create the re%uired incentive for design activit and one of the
main ob(ects was to remove impediment to the free use of
available design.
1

SALIENT NEW FEATURES OF THE DESIGNS ACT, 2000.
1. International classification based upon Locarno
classification
2
has been adopted wherein the classification is
based on articles, the sub(ect matter of design. -nder the
previous law a )esign was classified on the basis of the material
of which the article was made.
2. A ro!ision clai"in# riorit$ from a )esign application filed
in an &onvention countr has been introduced. India is a
member of .!,, /aris convention and has also signed /atent &o0
operation !reat. As a result members to these conventions can
claim priorit rights.
1. !he definition of )esign under the new Act has been %i&'n'&.
-nder the previous law, the )esign registration was granted onl
for the visual appearance of an article which included shape,
configuration pattern, and ornamentation whether in 2 or 1
dimensions. -nder new law, a )esign 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 1 dimensions or both.
2. A conc't of a(sol)t' no!'lt$ has been introduced
whereb a novelt would now be (udged based on prior
publication of an article not onl in India but also in other
countries. -nder the previous law, the position was ambiguous.
3. A D'si#n r'#istration has been brought within the &o"ain
of t*' )(lic r'cor&s right from the date it is phsicall placed
on the 4egister. An member of public can ta"e inspection of the
1
IAG Company Ltd. $. Triveni Glass Ltd. !005 /300 P+( 143
!
See &ocarno (lassification1 a$ailable at htt%'22333.i%o.go$.u42t)%es2design2d-a%%l)ing2d-after2d-
class.htm.
4
records and obtain a certified cop of the entr. In the previous
Act, there was a 20ear confidential period post registration,
which prohibited ta"ing inspection5certified cop of an entr in
the records.
6. A )esign registration would be valid for 10 ears 7from the
date of registration which is also the date of application8
renewable for a further period of 3 ears. -nder the previous law
the validation period was 3 ears which was e'tendable for 2
terms of 3 ears each.
9. A )esign registration can be restored within a ear from its
last date of e'pir. -nder the previous law, no provision relating
to restoration upon e'piration of the )esign registration was
provided.
:. &ancellation of a )esign registration under the new law is
possible onl before the &ontroller and there are a couple of
additional grounds which have been recognized;
:.1 !he sub(ect matter of )esign not registerable under the Act.
:.2 !he sub(ect matter does not %ualif as a )esign under the
Act.
-nder the previous Act, the cancellation was provided for before
the &ontroller within 12 months from registration on limited
grounds and in the <igh &ourt within 12 months or thereafter.
+. -nder the new Act, a )istrict &ourt has been given power to
transfer a case to the <igh &ourt having (urisdiction in the event
the defendant challenges the validit of )esign registration.
!he above mentioned new features have been introduced with
the intent of bringing the Indian design legislation in conformit
with other design legislations of the advanced economies of the
world and at the same time give necessar impetus to trade and
industr in this countr.
5
ESSENTIAL CHARACTERISTICS OF A DESIGN.
!hose who wish to purchase an article for use are often
influenced in their choice not onl b its practical efficienc but
also b its appearance.
1
!he phsical appearance of goods reall
means design. !he appearance of an article is dictated b the
design it wears. !he primar purpose of a design is to interest the
aesthetic and visual senses of a consumer with intent to induce
him into purchasing the article, without the necessit of having to
reveal the identit of the manufacturer or the producer. )esign
must necessaril mean something which determines the
appearance of an article, or some part of an article. )esigns are
applied to an article with the ob(ective of ornamenting the article.
If a particular feature is so embossed on an article that it does
not appeal to the ee at all and is not capable of attracting a
3
Samsonite (or%oration $. 5ija) Sales 1668 /180 P+( 3"! 7,el8.
6
purchaser in an manner for the purchase thereof, then such
feature will not fall within the scope of a design.
2
)esign, is defined in S'ction 2 +&, of t*' D'si#ns Act 2000 as
follows;
S. 27d8 = )esign means onl the features of shape, configuration,
pattern, ornament or composition of lines or colours applied to
an article whether in two dimensional or three dimensional or in
both forms, b an industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the
finished article a'al to an& ar' -)&#'& sol'l$ ($ t*' '$'>
but does not include an trade mar" as defined in clause 7v8 of
sub0section 718 of section 2 of the !rade and $erchandise $ar"s
Act, 1+3: or the propert mar" as defined in section 29+ of the
Indian /enal &ode or an artistic wor" as defined in clause 7c8 of
section 2 of the &opright Act, 1+39.
)esign primaril represents features of shapes, configuration,
pattern, ornament or composition of lines. )esign does not impl
the article but the features which are a conception, suggestion or
an idea of a shape.
3
Such features should be applied to an article,
which in the finished article appeals to and are (udged solel b
the consumers ee.
If a design is not visible to the ee then it will not %ualif for
registration under the )esigns Act for the ver reason that it
would fail to influence consumers into purchasing the article on
which it is embossed.
6
!he ee should be the ee of an average
consumer and not that of an e'pert or an e'perienced 5 seasoned
dealer.
*or the purposes of registration under the )esigns Act it is not of
significance whether the design has an utilit and5or
usefulness.
9
!hus an important aspect of a design is that it should
have the abilit of being the deciding factor for purchase of an
4
(orning1 ncor%orated1 *.S.- $. 9aj :umar ;arg1 !004 54 S(& 3"8.
5
9otela -uto (om%onents /P0 &td. and -nr. $. <as%al Singh and #rs !00! /!40 P+( 446 7,el8
6
9e. Stenor Ltd. $. Whitesides (Clitheroe) Ltd.1 63 9P( 81.
"
article b a consumer. If a consumer develops a positive
perception of an article purel on the basis of its outwardl
features, irrespective of its utilit, then such features would
definitel %ualif for registration under the )esigns Act. Similarl,
a visual characterization of an article which influences a person
to purchase an article in preference to other articles which are
identical in function but differ in appearance, such
characterization would also meet the criteria of a design.
:
If the
features of a design are dictated, caused or prompted solel b
or attributable onl to the function which the article is re%uired to
perform, then such features cannot be registered as a design,
even though such features ma also appeal to the ee. A design
will not protect an technical features of an article.
*or a design to %ualif for registration under the )esigns Act it is
important that the design should also he new and original. !he
test for novelt and originalit is dependent on determining the
tpe of mental activit involved in conceiving the design in
%uestion. If the design is a mere trade variation of a previous
design then the designer could be said to have "ept an e'isting
design in view and made some changes. !here should be some
original mental application involved when conceiving a new
design.
+

!he introduction of ordinar trade variants into an old design will
not ma"e the new design novel or original. $ere wor"shop
improvements will not %ualif for registration under the )esigns
Act. !he word original implies that the person had originated
something> that b the e'ercise of intellectual activit he had
started an idea which had not occurred to anone before.
,riginal would mean something that no person had created
earlier for an purpose whatsoever. #ew would impl something
which is not necessaril original but which has been applied to an
article for the first time. .hat is novel need not also be new.
!here ma be a new arrangement of features that ma appeal to
the ee.
10

"
;la=o Smith4line (onsumer >ealthcare and (o. :; $. -migo ?rushes Pri$ate &imited and -nr1 !004
/!80 P+( 1 /,el0.
8
Samsonite Corporation $. Vijay Sales1 supra @ote 3.
6
Aestern Engineering (om%an) $. -merica &oc4 (om%an)1 &9 /16"30 11 ,el.
10
Wimco Ltd. $. eena atch Industries! -9 1683 ,el 53".
8
SU./ECT01ATTER OF DESIGNS.
An article is distinguished not onl b its utilit but also b its
visual appeal which too usuall pla an important role in shaping
the buers preference for the article. !herefore, the design of an
article and even design of its pac"aging is important from the
commercial viewpoint.
)esigns which are not new or original or have been disclosed to
the public anwhere in India or in an other countr b
publication or not significantl distinguishable from "nown
designs or combinations of "nown designs or comprise or contain
scandalous or obscene matter are not registerable under the
)esigns Act. A design can be registerable onl when it is new or
original and not previousl published in India. !hough the word
publication has not been defined b the )esigns Act, 2000, to
constitute publication, a design must be available to the public or
it has been shown or disclosed to some person who is not bound
to "eep it secret.
/ublication can occur in two tpes
7i8 /ublication in prior document.
7ii8 /ublication b prior user.
/ublication in prior document would result when the design has
alread been published in a document which is easil available.
!he private or the secret use or an e'perimental use of a design
will not constitute publication b prior use. !he e'hibition of a
design or an article to which the design has been applied in an
industrial or other e'hibition notified b the &entral ?overnment
would not constitute infringement of the design if prior notice of
such e'hibition is given to the &ontroller of /atents and )esigns
and an application for registration is made within si' months of
the date of first e'hibiting or publication of the design.
!he )elhi <igh &ourt has held that /ublication means the
opposite of being "ept secret. It is considered published if a
design is no longer a secret. !here is publication if the design has
6
been disclosed to the public or the public is put in possession of
the design. !he disclosure even to one person is sufficient to
constitute publication.
11
A design would be registerable if the pattern though alread
"nown is applied to a new article. .hat is essential is that the
design must be new with respect to the class of article to which it
has been applied. !he novelt or originalit is to be (udged on the
evidence of e'perts in the trade. An e'pert who is aware of what
is common trade "nowledge and usage in the class of goods to
which the design is applied would be the one entitled to pass the
verdict on the novelt and originalit. &olour ma form a part of
design but the colour b itself cannot constitute a sub(ect0matter
of design.
11
"otela Auto Components (#) Ltd. and Anr. $. $aspal Sin%h and &rs !00! /!40 P+( 446 7,el8
10
2ROCEDURE OF REGISTRATION OF A DESIGN.
!he procedure for registration of a design is comparativel
simple when compared to procedure for registration of a patent
or a trademar".
@riefl, the procedure consists of the following steps;
718 Submission of application
728 Acceptance 5 ob(ections 5 refusal
718 4emoval of ob(ections5appeal to &entral ?overnment
728 )ecision of &entral ?overnment
738 4egistration of the design.
S)("ission of alication
!he proprietor of the design has to file application for registration
of the design. According to section 3718, the controller ma on
application made b an person claiming to be the proprietor of
an new or original design not previousl published in an
countr and which is not contrar to public order and moralit,
register the design under the Act. !he application is to be
accompanied b the prescribed fee and in prescribed *orm and in
prescribed manner.
!he application under section 3 shall be accompanied b four
copies of the representation of the design and the applicant shall
state the class in which the design is to be registered. !he
applicant is also to file a brief statement of novelt with the;
application.
!he )esigns Act, 2000, which he claims for his design las down
11 classes plus miscellaneous class ++ of goods to which
ornamental designs, etc., and which are capable of being
registered under this Act generall appl.
11
Acc'tanc'3O(-'ction
,n consideration of the application if the &ontroller finds that the
applicant fulfils all the prescribed re%uirements, he shall register
the designs. If on consideration of the application an ob(ections
appear to the &ontroller, a statement of these ob(ections shall be
sent to the applicant or his agent.
R'"o!al of O(-'ction3A'al to t*' C'ntral Go!'rn"'nt
!he applicant has to remove the ob(ection within one month of
communication of the ob(ections to him failing which the
application shall be deemed to have been withdrawn. <e ma
also appl to the &ontroller for being heard on the matter. .hen
the &ontroller refuses the application after the submission, he
ma directl appeal to the &entral ?overnment whose decision is
final.
D'cision of t*' C'ntral Go!'rn"'nt
!he decision of the &entral ?overnment on the registrabilit of
the design is final.
R'#istration of t*' D'si#n
,n acceptance of design filed in respect of an application, the
&ontroller 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 ,fficial ?azette.
.hen published in the ?azette, the controller ma select one or
more views of the representation of the design, which in his
opinion would depict the design best.
718 .hen the design is accepted, there shall be entered in the
4egister of )esign, in addition to the particulars re%uired b the
Act, the number of the design, the class in which it is registered,
the date of filing the application for registration in this countr,
the reciprocit date, if an, claim for the registration, and such
other matters as would effect the validit or proprietorship of
design.
728 .hen such 4egister of )esign is maintained wholl or partl
on computer under floppies or dis"ettes, such computer floppies
1!
or dis"ettes shall be maintained under superintendence and
control of &ontroller and in case of an dispute or doubt with
regard to information of designs, the information as contained in
the bac"0up file or master file shall be final.
718 .here the accepted design is one in respect of which a
reciprocit date has been allowed, registration, the e'tension or
the e'piration of the copright in the said design shall be
rec"oned from such reciprocit date.
,n the completion of the above procedure, the &ontroller shall
grant a certificate of registration to the proprietor of the design.
INFRINGE1ENT OF A REGISTERED DESIGN AND
RE1EDIES UNDER THE ACT.
Infringement of a copright in design is termed as A/irac of a
registered )esignA. It is not lawful for an person during the
e'istence of copright to do the following acts without the
consent or licence of the registered proprietor of the design.
Section 22 of the )esigns Act, 2000, las down that the following
acts amount to pirac;
718 !o publish or to have it published or e'pose for sale an
article of the class in %uestion on which either the design or an
fraudulent or obvious imitation has been applied.
728 !o either appl or cause to appl the design that is registered
to an class of goods covered b the registration, the design or
an imitation of it.
718 !o import for the purpose of sale an article belonging to the
class in which the design has been registered and to which the
design or a fraudulent or obvious imitation thereof has been
applied.
13
In fact an unauthorized application of the registered design or a
fraudulent or obvious imitation thereof to an article covered b
the registration for trade purpose or the import of such articles
for sale is a pirac or infringement of the copright in the design.
Fra)&)l'nt3O(!io)s I"itation4
A distinction is made between fraudulent and obvious imitation.
!he onl common factor between the two is that both should be
imitations. !hus even in the case of fraudulent imitation the
design applied must be an imitation of the registered design. In a
fraud the imitation has been made with the intention to deceive
another person with the "nowledge that what is being done is a
violation of the other persons right. .here, therefore, fraudulent
imitation is established even if the imitation is rather clums and
not obvious, the &ourt will declare it as an infringement of
copright in the design. !here must be e'act duplication, an
imitation of the registered design. #othing less than imitation is
sufficient to establish pirac.
*raudulent imitation must mean If a man "nowing that the
pattern is a registered design, goes and imitates it, and does that
without sufficient invention on his own part, that would be
fraudulent imitation, if in fact it is an imitation 7an e'act cop of
the registered design8.
/)&icial R'"'&$
!he (udicial remed for infringement of a registered design
recommended in the Act is damages alongwith an in(unction.
Section 22728 stipulates remed in the form of pament of a
certain sum of mone b the person who pirates a registered
design. A suit in the appropriate manner for see"ing the relief in
the form of an in(unction is also recommended.
/)ris&iction of t*' Co)rt
A suit under section 22 is to be instituted in a )istrict &ourt or a
<igh &ourt depending upon the %uantum of damages claimed.
!he provisions of this section do not e'clude action for passing
off and for rendition of accounts. A person complaining
infringement of his design can certainl as" for accounts from the
defendant to show the profits earned b the defendant which
14
would be the loss sustained b him which he could claim as
damages. A suit for in(unction restraining infringement of
registered design and for rendition of accounts is, therefore,
maintainable onl when filed in the appropriate court.
O5ERLA22ING LEGISLATIONS4 CO26RIGHT UNDER THE
DESIGNS ACT 7 CO26RIGHT ACT
!he e'clusive right conferred on a design is termed as copright
in design. !his should not be confused with e'clusive right
granted for literar and artistic wor" also termed a copright in
the literar and artistic wor". !here ma be certain designs which
can %ualif for registration under both the )esigns Act and the
&opright Act. &opright in an industrial design is governed b
the Indian )esigns Act 2000.
15
If a design is registered under the )esigns Act, it is not eligible
for protection under the &opright Act.
12
In the case of a design
which is capable of being registered under the )esigns Act, but
not so registered, copright will subsist under the &opright Act,
but it will cease to e'ists as soon as an article to which the
design has been applied has been reproduced more than 30
times b an industrial process b the owner of the &opright or
with his license b an other person.
11
It would, therefore, follow
that those industrial designs which are not registerable under the
)esigns Act get protection under the &opright Act provided it
comes within the scope of section 11 of the Act as original Artistic
wor"s.
A design capable of being registered means a design possessing
when the were made those essential characteristics which
%ualif them as designs. If such designs are, at that time, used or
intended to be used for the purposes of industrial reproduction,
the are not to %ualif for &opright under the &opright Act.
12
!here is an overlapping area of the applicabilit of the )esigns
Act and the &opright Act but the cannot be applied at the same
time for protection of the same sub(ect0matter.
1!
S. 15/10 of the (o%)right -ct 165".
13
S.15 /!0 of the (o%)right -ct 165".
14
Interle%o $. Tyco 716888 9P( 343.
16