Professional Documents
Culture Documents
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CONTENTS PAGE NUMBER
1.Introduction 3
2. Salient new features of the 4
designs Act, 2000.
3. Essential characteristics of a design. 6
4. Subject-matter of designs. 8
5. Procedure of registration of a design. 10
6. Infringement of a registered design and 12
remedies under the act.
7. Overlapping Legislations: Copyright 14
Under The Designs Act & Copyright Act.
INTRODUCTION
2
Liberalization has brought with it unlimited options for the Indian
consumer who now has numerous alternatives for any single
product. This change has revolutionized the Indian consumers
outlook as also the sellers approach. No longer do the sellers
have to establish only their reliability and integrity in the market,
but they have to also appease the aesthetic senses of the
consumer. More than ever before, sellers are required to package
and market their products in a manner which appeases the
consumer and which a consumer could recognize and relate to.
Considering the huge amount of capital and effort expended by
manufacturers and marketers 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.
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new Act was to ensure effective protection to registered designs.
One of the objects was also to ensure that law does not
unnecessarily extend protection beyond what is necessary to
create the required incentive for design activity and one of the
main objects was to remove impediment to the free use of
available design.1
3. The definition of Design under the new Act has been widened.
Under the previous law, the Design registration was granted only
for the visual appearance of an article which included shape,
configuration pattern, and ornamentation whether in 2 or 3
dimensions. 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.
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records and obtain a certified copy of the entry. In the previous
Act, there was a 2-year confidential period post registration,
which prohibited taking inspection/certified copy of any entry in
the records.
8.1 The subject matter of Design not registerable under the Act.
8.2 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.
9. Under the new Act, a District Court has been given power to
transfer a case to the High Court having jurisdiction in the event
the defendant challenges the validity of Design registration.
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ESSENTIAL CHARACTERISTICS OF A DESIGN.
3
Samsonite Corporation v. Vijay Sales 1998 (18) PTC 372 [Del].
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purchaser in any manner for the purchase thereof, then such
feature will not fall within the scope of a design.4
If a design is not visible to the eye then it will not qualify for
registration under the Designs Act for the very reason that it
would fail to influence consumers into purchasing the article on
which it is embossed.6 The eye should be the eye of an average
consumer and not that of an expert or an experienced / seasoned
dealer.
5
Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors 2002 (24) PTC 449 [Del]
6
Re. Stenor Ltd. v. Whitesides (Clitheroe) Ltd., 63 RPC 81.
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article by a consumer. If a consumer develops a positive
perception of an article purely on the basis of its outwardly
features, irrespective of its utility, then such features would
definitely qualify for registration under the Designs Act. Similarly,
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.8 If the
features of a design are dictated, caused or prompted solely by
or attributable only to the function which the article is required to
perform, then such features cannot be registered as a design,
even though such features may also appeal to the eye. A design
will not protect any technical features of an article.
8
Samsonite Corporation v. Vijay Sales, supra Note 3.
9
Western Engineering Company v. America Lock Company, ILR (1973) 11 Del.
10
Wimco Ltd. v. Meena Match Industries, AIR 1983 Del 537.
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SUBJECT-MATTER OF DESIGNS.
The Delhi High Court has held that Publication means the
opposite of being kept secret. It is considered published if a
design is no longer a secret. There is publication if the design has
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been disclosed to the public or the public is put in possession of
the design. The disclosure even to one person is sufficient to
constitute publication.11
11
Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors 2002 (24) PTC 449 [Del]
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PROCEDURE OF REGISTRATION OF A DESIGN.
Submission of application
The Designs Act, 2000, which he claims for his design lays down
31 classes plus miscellaneous class 99 of goods to which
ornamental designs, etc., and which are capable of being
registered under this Act generally apply.
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Acceptance/Objection
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or diskettes shall be maintained under superintendence and
control of Controller and in case of any dispute or doubt with
regard to information of designs, the information as contained in
the back-up file or master file shall be final.
(3) To import for the purpose of sale any 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.
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In fact any unauthorized application of the registered design or a
fraudulent or obvious imitation thereof to any article covered by
the registration for trade purpose or the import of such articles
for sale is a piracy or infringement of the copyright in the design.
Fraudulent/Obvious Imitation:
Judicial Remedy
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would be the loss sustained by him which he could claim as
damages. A suit for injunction restraining infringement of
registered design and for rendition of accounts is, therefore,
maintainable only when filed in the appropriate court.
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If a design is registered under the Designs Act, it is not eligible
for protection under the Copyright Act.12 In the case of a design
which is capable of being registered under the Designs Act, but
not so registered, copyright will subsist under the Copyright Act,
but it will cease to exists 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
with his license by any other person.13 It would, therefore, follow
that those industrial designs which are not registerable under the
Designs Act get protection under the Copyright Act provided it
comes within the scope of section 13 of the Act as original Artistic
works.
12
S. 15(1) of the Copyright Act 1957.
13
S.15 (2) of the Copyright Act 1957.
14
Interlego v. Tyco [1988] RPC 343.
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