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Introduction
Contents
Introduction
Box1 The Object of the Act is to Protect Aesthetic Shape and not Function or Functional Shape
In order to get statutory protection under the Designs Act, 2000 the design has to satisfy the definitional requirements of Section 2
(d). As per the definition, design does not include any mode or principle of construction or anything which is in substance a mere
mechanical device. In Escorts Construction Equipment Ltd Vs Action Construction Equipment Pvt Ltd, 1999 PTC 36(Del), the Delhi
High Court had occasion to interpret this part of the definition (as contained in the Designs Act, 1911). This case was concerning the
alleged illegal copying of a design by the respondent of Pick-N-Carry Hydraulic Self Mobile Cranes manufactured by the plaintiff. Though
the case was not directly coming under the Designs Act, the Court examined whether the said design was capable of registration under
the Designs Act. After examining the definition of design under the Act, the Court held that the design in question was incapable of
registration. According to the Court the definition made it amply clear that the primary object of the Act was to protect shape and not
function, or functional shape. The expression design does not include a method or principle of construction or features or shape or
configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.
Rejecting the contention of the plaintiff who claimed protection of certain specific parts of the crane, the Court held: The aforesaid
parts of the crane are made in a particular shape so as to interrelate with others mechanically. These parts of the crane are not made
to appeal to the eye but solely to make the crane work or function. Most of the key components or parts, unseen in the crane for which
they were required, had only to pass the test of being able to perform their function. They would be judged by performance and not by
appearance. Consequently, the aforesaid key components or parts are incapable of being registered as designs.
Developments
1872
The Patents and Designs Act was passed. The first Indian legislation to protect industrial designs
1888
1911
The Patents and Designs Act amended and consolidated the law relating to inventions and industrial designs. Based on the UK
Patents and Designs Act of 1907. Patent administration came under the Controller
1912
The Patents and Designs Act, 1911 came into force on 1st January
1930
Amendments to the 1911 Act. Eligibility criteria for design registration changed from new and original design to new or original
design
1970
The Patents Act passed by the Parliament. Provisions relating to Patents deleted from the 1911 Act. The short title of the Act
changed to The Designs Act, 1911
1972
20th April: The Patents Act notified by the Central Government and became operational
2000
The Designs Act passed by the Parliament. The Act of 1911 repealed. Came into force on 25th May
2001
11th May: The Designs Act came into force. Designs Rules 2001 notified by Department of Industrial Policy, Ministry of
Commerce and Industry
2007
8th February: National Design Policy adopted. Among other things aims at promotion of Indian design through a well-defined and
managed regulatory, promotional, and institutional framework. Action plan for implementation of the policy was also adopted
2009
2nd March: The Central Government constituted the India Design Council. The Council is intended to act as the national strategic
body for multi-disciplinary design and to get involved in promotion of design with the ultimate vision to make Indian Industry a
design enabled industry
2008
2011
Manual of Designs Practice and Procedure published by the Office of the Controller General of Patents, Designs, and Trade Marks
Explicitly provides for non-registration of an article which does not have a separate
identity and which is really an integral part of another article.
Enlarges the scope of prior publication from India to the entire world.
The appeal from the decision now lies to the High Court. Under the 1911 Act, the
appeal had to be filed to the Central Government.
Under the 1911 Act, revocation authority vested with the controller only if a petition
was filed within one year and on limited grounds. In all other cases petition to be
filed in the High Court. Under the 2000 Act, petition to be filed before the Controller
in all cases and no time period prescribed. Grounds for challenging the registration
expanded. Appeal lies to the High Court from the decision of the Controller.
Quantum of Compensation S. 22
Period of secrecy S. 7
The two year period of secrecy in the 1911 Act has been done away. Instead provides
for mandatory publication of the registration of a design and provision for open public
inspection.
This new provision empowers the Controller not to disclose designs if such disclosure
is prejudicial to the interest of security of India and not to initiate cancellation
proceedings with respect to certain designs on a notification by the Central
Government in this behalf.
Register of designs S. 10
System of classification
Schedule III Design Rules
Note: As explained earlier, the 2000 Act was passed in the context of the rapid process of globalization and changes taking place in the technological field, the
2000 Act was a substantial modification on the 1911 Act. The major changes brought out by the Act are explained with the help of the above table.
Total Registered
Registration
Gems and Jewellry
Publication
Enforcement
Leather Shoes
Table 3 Key issues raised in the survey are categorized in the table below
Registration
Examination
Formalities should be
reduced
Registration time must
be reduced to 6 months
and proper status
updates must be given
from time to time
Awareness should be
raised with respect
to option of online
registration
Need to speed
up the process
given the
demand for the
final product
and market
competition
General
Lack of awareness
Lack of trust on
the enforcement
mechanism
Tendency to avoid legal
hassles
Informal markets and
size of these markets
in some products
segments limits the
scope of monitoring
BOX 3 Protection under the Design Act, 2000 and the Copyright Act, 1957
As discussed above, conventionally designs have been
considered both under the domain of artistic work and
industrial production. This has led to ambiguity and overlap
with other IPR laws like copyright law, trademark law, utility
model and unfair competition law. This overlap has been
carefully evaded in both Paris and Berne convention which
identified that designs are subject matter for copyright as
well as industrial production (Dutfield and Suthersanen,
2008) . Hence, there will be works that are both protectable
under copyright law as well as under designs law. Indian law
has tried to resolve this by the provision of Section 15(2),
Copyright Act of 1957 which deals with the rights to which a
holder of an original artistic work is entitled.
In Microfibers Inc. vsGirdhar& Co. &Anr, the Delhi High Court
has clarified the interplay between the Designs Act, 2000
and the Copyright Act, 1957 in the light of section 2(d) which
excludes artistic works under the Copyright Act from the
definition of design. The original paintings/artistic works
which may be used to industrially produce the designed
article would continue to fall within the meaning of the artistic
work defined under Section 2(c) of the Copyright Act, 1957
and would be entitled to the full period of copyright protection
as evident from the definition of the design under Section
2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant. It is the exclusive right of the holder of a
Copyright in an original artistic work to reproduce the work in any material form. If the design is registered under the Designs Act, the
Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been
registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an
article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection
under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.
Nature of protection of designs under the Copyright Act vis--vis the Designs Act
Designs
Copyright
Needs to be registered
10
References
Carvalho, Nuno Pires de. (2011).The TRIPS regime of
trademarks and designs. Kluwer Law International,
Netherlands
Correa, C. (2007). Trade Related Aspects of Intellectual
Property Rights (Volume VI of Commentaries on the
GATT/WTO Agreements). Oxford University Press.
Oxford. UK.
Graham Dutfield and Uma Suthersanen. (2008). Global
Intellectual Property Law. Edward Elger Publication.
Inge Govaere, Hanns Ullrich. (2007). Intellectual Property,
Public Policy and International Trade. P.I. E Peter Lang.
Nadar, B P (2010). Evolution of Designs Act in India
&Protection of Industrial Design underInternational
IPR Regime. Retrieved April 16, 2012, from
http://www.scribd.com: http://www.scribd.com/
doc/53318556/Evolution-of-Designs-Act-inIndia-Protection-of-Industrial-Designs-underInternational-IPR-Regime
Narayanan, P (2002). Law of Copyright and Industrial
Designs.
Venkatraman, S. (2010). Understanding designs act.
Universal Law Publishing.
WIPO (2012 ). Intellectual Property Statistics. Available
at
<http://www.wipo.int/ipstats/en/statistics/
country_profile/countries/in.html>. last accessed on
10 January, 2013