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Briefing Paper

Protection of Industrial Design in India: Issues
and Challenges
March 2013

Introduction

Contents
Introduction

1

Protection of ID: International
Agreements and India
3
The Legal and Policy Framework in India 4
Key Issues and Recommendations

6

The Briefing Paper has been prepared by Gaurang
Meher Diljun, M V Shiju, and Nitya Nanda and
published by TERI under the project, “Post-TRIPS IPR
Regime in India” supported under the Prosperity
Fund of the Foreign and Commonwealth Office of
the UK.

In the era of globalization, it is increasingly evident that
the competitiveness of any enterprise depends on its
ability to innovate its product and service with an objective
to distinguish itself from its competitors in the market. It
is common for manufacturers to capture product market
or create a niche for their product by differentiating, an
otherwise similar product (substitutes in terms of functionality)
on the basis of ‘eye appeal’. Even if these products are
not perfect substitutes, the choice of consumers and in turn
market demand; may, to a large extent, depend on the
appearance. In this respect, Industrial Designs (ID) have
become a significant element in a product’s value chain.
This allows a high potential and incentive for profitability
for business through investment in ID especially large
producers. For such product segments, ‘design’ feature is
an essential component and hence is protected to avoid
imitation with an intention of passing off.
ID stand at the junction of artistry and industry and
are applicable to many different product markets and
nature of protection may vary from cultural artistic market
to a consumer-oriented general product market. The
various arguments extended to seek protection for design
is grounded on the role of designs in maintaining and
promoting competition within a market economy. Govaere
(2007) states, “Like patent and copyright, design rights
have a reward and incentive function, but the objective is
different. The objective of granting an exclusive right in an
industrial design can be defined as providing the possibility
of obtaining a return for investment made, and progress
achieved, in the field of aesthetics in order to stimulate

The Energy and Resources Institute

The Court further emphasized that the protection given with respect to designs “is primarily to advance industries and to keep them in high level of competitive progress”. The Energy and Resources Institute (TERI) undertook a detailed study on the evolution of ID registration in light of post TRIPS amendments in the national legislation. For designers alike. Designs that are linked to technical or functional aspects are granted patent rights. the aforesaid key components or parts are incapable of being registered as designs”. 1  2 2008 (1) CTMR 500 (SC): AIR 2008 SC 2520. in the case of Bharat Glass Tube Limited v. intellectual input can provide a valuable income stream and rights of a good design can be sold. unseen in the crane for which they were required. Consequently. and compliance concerns that are limiting the scope and potential of such IP protection especially with respect to Micro. Industrial designs refer to one of the categories of Intellectual Property Right (IPR) where the design system focusses on only the aesthetic feature of an article derived from its visual appearance (Box 1). Gopal Gas Works1 clearly defines the object and the purpose of the Design Act. institutional. efficient. design “does not include any mode or principle of construction or anything which is in substance a mere mechanical device. Though the case was not directly coming under the Designs Act. According to the Court the definition made it amply clear that the primary object of the Act was to protect shape and not function. industrial design is an element on Intellectual property and is protected under the Indian law (Box 2). The rationale for protection of designs under IPR regime is clarified by the Supreme Court of India. the Court held: “ The aforesaid parts of the crane are made in a particular shape so as to interrelate with others mechanically. it does not have high social costs as it does not offer someone the status of an absolute monopolist in the relevant market. 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. ID innovation subjective to a specific article. the object of the design registration is to see that the originator of a profitable design is not deprived of this reward by others applying it on their goods. and Medium Enterprises (MSMEs) in India. “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. the Court held that the design in question was incapable of registration. and copyright. The Honourable Court. unlike patents. have the exclusive right to make. The key objectives was to capture the trends of ID registration in India and legal. One interesting feature of ID is that. sell. They also play a key role in the development of economy with their effective. The object of the act is to protect the IPR of original design with the aim to reward the innovator for research and labour applied to evolve a new and original design. Most of the key components or parts. 1911).” Rejecting the contention of the plaintiff who claimed protection of certain specific parts of the crane. 1999 PTC 36(Del). It was observed that an article may sell better than another which can be attributed to the design aspect of that article (Narayanan. 2000 the design has to satisfy the definitional requirements of Section 2 (d). had only to pass the test of being able to perform their function. the Delhi High Court had occasion to interpret this part of the definition (as contained in the Designs Act. 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. As per the definition. After examining the definition of design under the Act. the Court examined whether the said design was capable of registration under the Designs Act. Just like patents. involves investments in terms of time and money in research and development. There are various examples where popular designs have become a brand and have consolidated their market share making innovation in ID a competitive strategy. They would be judged by performance and not by appearance.Protection of Industrial Design in India: Issues and Challenges overall research and development of the aesthetic features of technical or functional product. policy. Small. trademarks. and use articles embodying such design. or functional shape. including its two dimensional or three-dimensional features of shape and surface.” In Escorts Construction Equipment Ltd Vs Action Construction Equipment Pvt Ltd. under existing legislations.” ID may be described as consisting of those ornamental aspects or elements of a useful article. it is profitable to invest in terms of time and money in the process of designing. Therefore. which make up the appearance of the article. The Indian MSMEs sector is extremely important given the employment potential at low capital cost. These parts of the crane are not made to appeal to the eye but solely to make the crane work or function. The proprietor of such industrial design will usually. . In this light. 2002).

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. pattern. ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms. The most important of them are: The London Act of 1934. two sectors i. However. cards. the Hague Act of 1960. whether manual.   In the context of the act. These treaties are aimed at creating a framework for international integration of intellectual property rights with a common understanding. the importance of ID registration is equally relevant to this category as it could lead to transition from MSME to something bigger. the protection is even more important. deal with general standards of protection to be provided by the contracting countries. P The Berne Convention (1886) for the Protection of Literary and Artistic Works. With respect to products segment that is intractably linked with aesthetic features. but does not include any mode or principle of construction or anything which is in substance a mere mechanical device. designs can seek protection under intellectual property regimes including copyright laws. any mode or principle of construction or operation. and the Geneva Act of 1999 (The 1934 Act is frozen as of January 1. At the international level. India is a contracting party to the convention. artificial or partly natural. So. and includes any part of an article capable of being made and sold separately. gets the exclusive right to apply the design to any article in the class in which the design is registered. In this light. As per Indian law protecting industrial design. the scope for such protection was not defined. Gems and Jewellery and Leather Shoes were chosen for the study. The Hague Agreement or the Hague System provides a mechanism for registering a ID and thereby getting protection in several member countries by filing one application with the 3 . which in the finished article appeal to and are judged solely by the eye.Protection of Industrial Design in India: Issues and Challenges BOX 2  Protection of Industrial Designs in India The entities having unique and distinct pattern.) The Design Wing of Patent Office (Kolkata) is entrusted to administer the provisions under the Design Act. the design as applied to an article should be integral with the article itself. mechanical or chemical.. by another 5 years. dedicated designs laws. stamps. labels. Article 5 quinquies of the Paris Convention provided that industrial designs shall be protected in all contracting countries however. tokens. India is a party to the convention and recognizes the copyright of works of authors from other members of the Berne Union in the same way as it recognizes the copyright of its own nationals. unpublished previously or in existence in any other country and the article must have its existence independent of the designs applied to it. is an international agreement governing copyright. Protection of ID: International Agreements and India Conventionally.   From an intellectual property law perspective an industrial design is concerned only to the ornamental or aesthetic aspects of a product. appearance and design can register under Indian Design Act. can be extended. commonly referred to as the Berne Convention.e. Moreover. by any industrial process or means. For the purpose of registration under the Act the design must be new or original. P The Hague Agreement changed the basis for the protection of industrial designs from the so-called “copyright approach” to the “patent approach”. (Initially 10 years. flexible. Protection under ID conventionally is seen as more applicable to large firms producing for mass production. international treaties dealing with protection under copyright or exclusively ID. 2000. an article implies any object of manufacture and any substance. and unfair competition. and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act. separate or combined. configuration. Apart from providing protection of design element of industrial protection.   The total term of a registered design is 15 years. are excluded from the registration under the act as these cannot be considered as an ‘article’. 2010). These agreements/treaties and subsequent Indian take on the same are briefly highlighted below: P The Paris convention (1883) for the Protection of Industrial Property was the first international convention which discusses the concept of industrial property and its protection including general standards of protection for industrial designs to be provided by the member states. The registered owner. the law aims to promote innovative activity in the field of industries. Trademark and property mark. under the act. which is in substance a mere mechanical device and it is required that the design should be visible on the finished article. “design” constitutes only the features of shape. and innovative entrepreneurial spirit. etc. The Hague Agreement consists of several separate treaties. given that MSME often is nursery of entrepreneurship.

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 Designs (Amendments) Rules. Came into force on 25th May 2001 11th May: The Designs Act came into force. Owing to its obligation under the TRIPS agreement. and there was also a need to meet the international obligations under the TRIPS Agreement. Action plan for implementation of the policy was also adopted 2009 2nd March: The Central Government constituted the India Design Council. 2001 presently govern the design law in India. The Act along with the Designs Rules. 16 of 2000) was adopted in this backdrop. Patent administration came under the Controller 1912 The Patents and Designs Act. India has not signed the agreement. At the time of independence. Based on the UK Patents and Designs Act of 1907. In 2007. 2010). P The Trade Related Aspects of Intellectual Property Rights Agreement (TRIPS) came into force on the 1st of January 1995. TRIPS provide for minimum norms and standards with respect to different categories of intellectual property rights including Industrial Designs. and institutional framework. Provisions relating to Patents deleted from the 1911 Act. 1911 1972 20th April: The Patents Act notified by the Central Government and became operational 2000 The Designs Act passed by the Parliament. Ministry of Commerce and Industry 2007 8th February: National Design Policy adopted. The TRIPS Agreement obliges member nations to provide for the protection of independently created new or original industrial designs. 1911 came into force on 1st January 1930 Amendments to the 1911 Act. 2000 (No. The Act of 1911 repealed. In 1970. The first Indian legislation to protect industrial designs 1888 The Inventions and Designs Act replaced the 1872 Act 1911 The Patents and Designs Act amended and consolidated the law relating to inventions and industrial designs. promotional. the 1911 Act was substantially amended and renamed as the Designs Act. The Designs Act. 1970 was adopted. India has not signed the Geneva Act of the Hague Agreement and the international protection for industrial designs in several countries by means of a single application is not available. The Legal and Policy Framework in India India has a long history of providing statutory protection for industrial designs (Table 1). Eligibility criteria for design registration changed from new and original design to new or original design 1970 The Patents Act passed by the Parliament. with the establishment of the World Trade Organization (WTO). Designs Rules 2001 notified by Department of Industrial Policy. Under the TRIPS Agreement member countries of the WTO are mandated to enact or amend their laws to give minimum level of protection to industrial designs. The Act and subsequent rules were amended which came to effect from June 2008. India has amended its national legislation to provide for these minimal standards (Table 2). The Patents and Designs Act. The short title of the Act changed to The Designs Act. The Patents Act. National Design Policy was adopted. 2008 notified 2011 Manual of Designs Practice and Procedure published by the Office of the Controller General of Patents. India follows the international classification for industrial designs based on the Locarno Agreement. In view of globalization there was a need to adapt with the changed technical and commercial development. With the adoption of a separate legislation for patents. Designs. P The Locarno Agreement (1979) establishes the international classification for industrial designs and solely an administrative tool and does not bind the member states with regard to the nature of protection afforded by a design so classified (Nadar. Among other things it aims at promotion of Indian design Table 1 Evolution of Design Law in India Year 4 Developments 1872 The Patents and Designs Act was passed. However. Among other things aims at promotion of Indian design through a well-defined and managed regulatory.Protection of Industrial Design in India: Issues and Challenges administrating body known as International Bureau of WIPO. and Trade Marks . 1911. 1911 passed under the British rule was the relevant statute in the field.

The India Design Council has constituted three major task forces (working committees) focusing on: a) possible ways of promoting design in different sectors and fields. In March 2011. Special Provisions in the interest of security of India S. propagation of Indian designs and innovations on the international arena and for global positioning and branding of Indian designs. 31 (3). through a well-defined and managed regulatory. Quantum of Compensation S. Under the 1911 Act. register System of classification Schedule III Design Rules Designs Rules 2001 as amended in 2008 follows the international classification system based on Locarno Classification System. 2 (g) The definition of original is introduced. Definition of design S. 5 (1) Enlarges the scope of prior publication from India to the entire world. 22 Quantum of compensation has been substantially increased. 19 Under the 1911 Act. 35 (2).Protection of Industrial Design in India: Issues and Challenges Table 2  Key Amendments in the Designs Act Section Changes brought by the 2000 Act Definition of article S. Appeal lies to the High Court from the decision of the Controller. the Council unveiled good design marking base on quality assurance with respect to 5 . In all other cases petition to be filed in the High Court. 10 Provides for e. 42 Provisions prohibiting restrictive conditions imposed by the design holder which is unrelated to the article in respect of which the design registration has been granted being introduced. Period of secrecy S.e. Cancellation of a registered design S. promotional and institutional framework. 2(a) 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. Grounds for challenging the registration expanded. Time period for protection S. 11 Initial period of registration extended from 5 years to 10 years. 44 Provision giving priority for registration of designs registered in convention countries. Action plan for implementation of the policy was also adopted for building a platform for innovation in creative design. Subsequently. The major changes brought out by the Act are explained with the help of the above table. 5 (4). 19 (2). 7 The two year period of secrecy in the 1911 Act has been done away. Appeal from the decision of the Controller Ss. Under the 2000 Act. and 36 The appeal from the decision now lies to the High Court. Register of designs S. countries which are parties to the Paris Convention and WTO members is introduced. adoption of design by industries and providers if design services. i. b) capacity-building via benchmarking design educational and training institutions as well as developing model curriculum. the appeal had to be filed to the Central Government. Definition of original S. 46 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. Priority accorded to convention countries S. Measures to check anti-competitive practices S. Instead provides for mandatory publication of the registration of a design and provision for open public inspection. Note: As explained earlier. revocation authority vested with the controller only if a petition was filed within one year and on limited grounds. 2 (d) Composition of lines or colours added to the definition. the 2000 Act was passed in the context of the rapid process of globalization and changes taking place in the technological field. Restoration of lapsed designs S. the 2000 Act was a substantial modification on the 1911 Act. petition to be filed before the Controller in all cases and no time period prescribed. in 2009 the Central Government constituted the India Design Council under the Department of Industrial Policy and Promotion (DIPP). Prior Publication S. The council is intended to act as the national strategic body for multidisciplinary design and to get involved in promotion of design with the ultimate vision to make Indian Industry a design enabled industry. and c) policy mechanisms and the provision of incentives for promoting research and development. 12 (1) Restoration of a lapsed design registration due to nonpayment of fee now permissible.. Maximum period of registration remains 15 years.

and 669000 (2010) applications filed in China (WIPO. This is nearly 50 per cent increase given the figure of 6025 of previous year. short-term lifespan of designs. The examination of designs applications started electronically from April 2009. It is a fact that the registration of industrial designs is not abundant in the world (de Carvalho. innovation. Designs and Trademarks and The National Institute of Designs. Key Issues and Recommendations Total number of applications filed for registration of designs during 2010–11 was 7589. Delhi. safety and eco-friendliness. and the perception by small and medium industries that IPRs are not a potential tool for protecting their innovations are some reasons advanced for the less enthusiastic response for design protection (Correa. Various activities for comprehensive computerization of the Designs Wing of the Patent Office have been initiated with the assistance of National Informatics Centre (NIC). namely. The total number of designs registered were 9206 including applications received in the previous years. Despite these advantages ID rights are largely underrated in the portfolio of most of the IP right holders. which leads the world in industrial design innovations.Protection of Industrial Design in India: Issues and Challenges originality. the highest quality marking for industrial design in Japan. 2009 and has resulted in an increase in the registration. and interaction with stakeholders indicate that in order to strengthen the existing system of design protection in India. Digitization of designs applications and preparation of e-Register have already been completed. IDs are the cheapest form of IP protection with minimum procedural hassles involved. Bangalore.generated application number as soon as a design application is filed at any of the offices at Kolkata. . 2011). It is worthwhile to note here that the registration process for designs is comparatively easier than patent and trademarks registration in India. Delhi. I-Mark is the Indian equivalent of the Japanese G-Mark. aesthetic appeal. 2011). user-centricity. The I-Mark benchmarking initiative is also intended to be the preparation of a mechanism for recognizing and encouraging industry achievers in creating a brand image abroad for Indian designs. 6092. which included 5084 application filed from India and remaining 2484 applications originating from abroad. the number of designs filed for registration increased from 4949 to 7589. Awareness programmes were conducted in industrial designs in various cities such as Ahmedabad Pune. The data analysed from 2001–02 to 2010–11 show that design applications constitute only less than 4 per cent of the total number of applications. and Delhi by the Controller General of Patents. There are counter arguments suggesting that enforcement of design is comparatively less complex and costly as the infringement is determined by mere visual impression (de Carvalho. and 7589 (IPO. ergonomic features. 2012) the Indian figures of 6557. Chennai. Low number of ID registrations An analysis of the data from the Indian Patent office reveal that the number of applications for design registration is very small compared to trademark and patent applications. 2012) cuts a sorry figure. Stakeholder Perceptions: Procedural aspects To assess the enforcement of Design Act and to capture the innovation with respect to designs in India. 2007). Protection of designs are narrower than patents and trademarks and thus could be circumvented more easily. The application status for the same is made available electronically on the official website. Between 2005 and 2011. But compared to 557000 (2008). survey was conducted in five cities in India. The progress can be easily qualified as below par given the potential of designs originating from India. enforcement of patent is easier than designs. and Mumbai. Front office software has already been installed to provide the auto. An analysis of the legal framework both at the national and international level.11 Total Filed Total Registered Figure 1  Trend of applications filed and registered in India 6 facility for filing application of design electronically commenced from 1 April. the following issues need to be addressed. Kolkata. The 10000 9000 8000 7000 6000 5000 4000 3000 2000 1000 0 2004-05 2005-06 2006-07 2007-08 2008-09 2009-10 2010 . The number of registered designs in force at the end of 2010–11 was 42348. 587000 (2009). Process for starting e-filing of designs applications is in progress. analysis of data relating to industrial designs in India.

Especially training with respect to IP protection available in the export target countries can go a long way in promoting ID registration. where piracy leads to more innovation. suggested that the registration process must be sped up given the high pace of changing demand in global market.5 years to register their name in their publication • Sometimes there is no up gradation of database • There is a need to speed up this process Enforcement of the Act General • Enforceability is weak with most of the infringements go unnoticed • Nearly 98 per cent of the product designs are protected under Industrial Design Act but then also it gets copied by the small firms • No threat of legal implications • 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 7 . however. given that the local and export market that they predominantly cater to leave limited scope for detection of infringement. Almost all the applications were made to Indian office in spite of majority of the respondents had operations in other countries. Respondents from jewellery and leather footwear industry stated that they give limited emphasis to ID registration as the market and tastes for their products are evolving at a rapid pace and innovation are required within short duration. Number of respondents that had applied for Design registration was higher in leather shoes (47per cent) compared to jewellery (32 per cent). they believed that the reason lies in avoiding legal hassles. Even though the fee for registration for a design under the Designs Rules. 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 Publication & Information dissemination • Authorities normally take 2. Stakeholders feel that due to various challenges the number of designs filed for registration is not at all encouraging (Table 3). Kolkata. many of the respondents thought that it was very high. The survey results also point out that the registration procedure in India is not very complicated. 2001 is Rs 1000/ only. however. Moreover. The lack of support by industrial associations came out very prominently in the survey. A vast majority of the respondents agreed that they did not face any difficulty in filing design protection in India. The fact that in common perception the fee includes the filing fee charged by the law firms explains this anomaly. Jaipur. and Mumbai. Most of the respondents emphasized on the need for raising awareness of stakeholders and benefits an industry can derive from registering designs. Success rate reported for the total application was 64 per cent. These findings and the comparative data clearly point to the need for more awareness programmes and a greater role by industrial associations in helping the small firms in filing for registration and other legal assistance. A majority of the respondents also agreed that the registration process in India is the same or better than other countries. Small and Medium enterprise represented around 85 per cent of the sample respondents. Similar apprehensions were shown by respondents from shoe manufacturing. This is similar to ‘Piracy Paradox’ applicable to fashion industries. Most of the respondents reported that they didn’t find the process burdensome.Protection of Industrial Design in India: Issues and Challenges Per cent 100 90 80 70 60 50 40 30 20 10 Examination Registration Gems and Jewellry Publication Enforcement Leather Shoes Figure 2  Key areas of concern: TERI’s Perception Survey (2013) Ahmedabad. Majority of the respondents reported that the cost implication for design registration was minimal with 83 per cent in gems and jewellery and 86 per cent for leather shoes. Approximately half of the total respondents who had registered designs earlier hired a legal expert for registration.

There should be proper deterrent remedies including stringent fines. Stakeholders in selected industry segments have reported that copying is rampant and that they are aware of the perpetrators.000. This has led to a complete non-application of mind thereby resulting in common designs. This points the need for greater scrutiny at the IP Office in granting registration under the Designs Act. there is a need to devise mechanisms for out of court settlement. but were more interested in obtaining a stay against the infringer. Another complaint commonly reported is the lack of understanding of the laws concerned even by the officials at the patent office. injunction to stop the use and seizure of infringing products. There is neither a procedure for publication before the grant of registration nor an occasion for pre-grant opposition under the Designs Act. same designs and functional designs getting registered. However. This may be partly due to the lax procedure for registration of designs as opposed to patents and geographical indications under the relevant laws. 1999 allows the concurrent use of the same trademark in certain cases. The cancellation procedure under the Designs Act.Protection of Industrial Design in India: Issues and Challenges One of the major challenges considered by the stakeholders is the awareness. penalties are not much. Also. given limited trust on overburdened judiciary added to high cost of litigation has posed as a severe barrier for seeking legal recourse in case of infringement. Infringement of design is quite frequent in India and occurs when there is a likelihood of confusion with regard to similar shape. However. configuration and surface pattern or appearance of any articles having similar nature and purpose. As per the 2000 Act. It is a common complaint that many common designs used in many industries have been granted registration. but were not initiating any action. In many cases it is reported that the same design is registered more than once. some of the practicing lawyers reported that their clients were not very keen on the final outcome of the case. However. given the large number of infringement cases pending. The Trademarks Act. Sometimes. Stakeholders perceive that design protection does not pay off due to weak enforcement and high legal costs involved in preventing infringements. Many of the respondents answered that they knew about the infringement of their designs. It is also perceived that the same result can be achieved with different shape and configuration amounting to new design protection. While there is an understanding of the rationale for a liberal procedure for registration in the case of designs as opposed to patents and geographical indications. small firms have reported that associations should play a more important role in monitoring and must support legal action and expenditures. there seems to be not many takers for initiating infringement actions. Better enforcement of design protection law Poor enforcement of design protection law is yet another common complaint in industry circles. capacity-building at the patent office and technology orientation at the examination of design applications is essential to streamline registration procedures. One would hope that with the modernization drive going on in the Indian Patent Office including the examination of design applications electronically and the appointment of more examiners many of these challenges could be addressed. In case of infringement of a design. But in the Designs Act. Infringement actions and the cancellation procedure The registration of a design under the Designs Act could make sense only if the infringement of the same is proceeded against. Here. 2000 was also mentioned as a bottleneck. even functional designs get registration under the Designs Act in spite of law being very clear about it. The survey conducted showed that only 5 per cent of the respondents were party to an infringement action. The complex nature of the legal procedure and the time involved in the entire process are the deterrents against filing infringement actions. one cannot find similar provisions. 2002. in order to challenge a registered design. Better scrutiny of applications at the IP Office A constant complaint heard among the practicing lawyers and their industry clients is that there is nonapplication of mind at the Controller’s Office in granting design registration. 8 In this regard. application has to be submitted to the IPO in Kolkata and an appeal from the .000 to Rs 50. There is a need to strategize IP protection of innovative designs to create a better future and compete and in order to achieve the same it is important to have the broadest possible protection. the proprietor may bring a suit against the infringer for recovery of damages. Monitoring is a major challenge and in the presence of any infringement. Penalties can range from Rs 20. there is a general feeling that greater scrutiny of applications is needed at the IP Office.

Protection of Industrial Design in India: Issues and Challenges decision of the Registrar lies to the High Court at Calcutta. utility model and unfair competition law. 2008) .. the Delhi High Court has clarified the interplay between the Designs Act. the Design would lose its copyright protection under the Copyright Act. Minimizing confusion and mainstreaming procedures Unlike Patent Act. In Microfibers Inc. 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. But once that limit is crossed. conventionally designs have been considered both under the domain of artistic work and industrial production. Hence. Complete monopoly for large scale production (most countries also confer exclusive rights) Only protects against copying Needs to be registered Copyright is accorded automatically. vsGirdhar& Co. thus there are no formalities of registration process Requires originality and novelty The criterion for protection is originality. 2000 and the Copyright Act. trademark law. If it is a design registrable under the Designs Act but has not so been registered. 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. Nature of protection of designs under the Copyright Act vis-à-vis the Designs Act Designs Copyright Exclusive rights. there will be works that are both protectable under copyright law as well as under designs law. It is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. 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. the intention of producing the artistic work is not relevant. This has led to ambiguity and overlap with other IPR laws like copyright law. &Anr.e. All these issues point to the need for greater action by governmental agencies and industrial organizations in initiating infringement actions and cancellation procedures. i. Even though grounds of cancellation could be taken as a defense in infringement proceedings before the High Court. 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. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent. However. Copyright Act of 1957 which deals with the rights to which a holder of an original artistic work is entitled. Industrial Design Act includes ‘originality’ but does not exclude ‘traditional knowledge’ per se. This in a way makes it difficult for people from other parts of the country to challenge the registration of common designs and functional designs. Indian law has tried to resolve this by the provision of Section 15(2). it would lose its copyright protection under the Copyright Act. 1957 in the light of section 2(d) which excludes artistic works under the Copyright Act from the definition of design. If the design is registered under the Designs Act. There are also ambiguities with regard to the terms ‘… independently created…’ or ‘…significantly differ…’ and BOX 3  Protection under the Design Act. it would be better to allow for a more streamlined cancellation procedure. 2000 and the Copyright Act. which is easier to fulfil compared to novelty Duration of protection is 10 plus and can be extended further by 5 years The duration of protection is much longer (60 years +) Only confined to the product that it is registered upon Not product specific 9 . 1957 As discussed above.

then the chances of such imitation can be reduced. Intellectual Property Statistics. those were tapped in the questionnaire survey only less than 40 per cent had applied for registration. outlines that Copyright in any design. E Peter Lang. discussions with officials have indicated that there are limitations faced by the examiners in the form of unavailability of relevant information/data for cross verification due to poor documentation and lack of understanding of the law and its interpretation. Retrieved April 16. Public Policy and International Trade. C. Industrial design mark In sectors like jewellery. implementation institutions. Law of Copyright and Industrial Designs. P. Universal Law Publishing. from http://www. Similar picture is true for officials at the patent office. Therefore. (2007). 1957. that is capable of being registered under the Designs Act. (2011). Global Intellectual Property Law. Similarly. References Carvalho. Nuno Pires de. but. The benefits go to middlemen who are more aware of ID registration in other countries. WIPO (2012 ). Hanns Ullrich. 1957. Moreover.com/ doc/53318556/Evolution-of-Designs-Act-inIndia-Protection-of-Industrial-Designs-underInternational-IPR-Regime Narayanan. Oxford University Press. with his license. does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act.wipo. (2008). P (2002). Understanding designs act.int/ipstats/en/statistics/ country_profile/countries/in. in terms of innovation. It is imperative to raise awareness and build capacity at the level of policymaking. 10 The percentage is expected to be much lower for overall MSME sector. Inge Govaere. Intellectual Property. with one set of fees.scribd. which has not been so registered. Edward Elger Publication. Evolution of Designs Act in India &Protection of Industrial Design underInternational IPR Regime. often producers are scared of advertising their products with innovative and attractive new designs as that might lead to imitation of their designs. (2007). Producers can use such Mark in their advertisement which will also raise awareness on the issue. last accessed on 10 January. UK.com: http://www. There is a need to explore the possibility of signing the Hague Agreement to be able to facilitate international registrations of design in the member countries especially for major export segments such as gems and jewellery. legal fraternity. also known as the Hague system. This might be facilitated by introducing ID Mark in line with Trade Mark or Copyright. Oxford. Graham Dutfield and Uma Suthersanen. 1911. B P (2010). The primary reason for this is the complete lack of awareness with respect to potential benefits arising for innovation in designs for industrial uses. provides a mechanism for registering an industrial design in several countries by means of a single application. Trade Related Aspects of Intellectual Property Rights (Volume VI of Commentaries on the GATT/WTO Agreements).Protection of Industrial Design in India: Issues and Challenges have not properly been defined in the ‘Designs Act’ 2000. Available at <http://www. Netherlands Correa. ‘design’…. The system is administered by WIPO. As for example. If producers are able to advertise their products that the designs concerned are registered and any imitations of the designs may attract legal actions. 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. There is some confusion in the jurisprudence regarding novelty and originality. 2012.I. by any other person (Box 3). filed in one language. 2013 . Kluwer Law International.The TRIPS regime of trademarks and designs. shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or. The Hague Agreement Concerning the International Deposit of Industrial Designs. S. Signing the Hague Agreement The key concern raised by the stakeholders was that at present Indian MSMEs are exporting the craftsmanship to others countries without any tangible benefits to the craftsman who is the inventor in many cases of a new design. Even for the most prominent players. Venkatraman.scribd. leather footwear and textiles. and industrial organizations. Nadar.html>. professional institutes. (2010). there is a need to mainstream the definitions and procedures for building confidence and trust in ID protection. Section 15(2) of the Copyright Act. Raising awareness and capacity-building Most importantly there is lack of awareness about industrial designs. Some of the provisions in the law are also very difficult.

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Lodhi Road. and Global Security Centre for Global Agreements.org E-mail: nitya@teri.For more information contact: Mr Nitya Nanda Fellow Resources. Regulation.in .110003 Tel: 24682100 or 41504900 Fax: 24682144 or 24682145 Web: www. IHC Complex. & Trade The Energy and Resources Institute (TERI) Darbari Seth Block.res. New Delhi.teriin. Leg.