Dr.

Ram Manohar Lohiya National Law University Lucknow

2019

Final Draft On

“CRITICAL ANALYSIS OF THE DESIGNS ACT”

Submitted to: Submitted by:

Dr.Vikas bhati Shwetanshu Dubey

Professor Section- B

RMLNLU Enroll no.:137

Semester VIIIth

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 Acknowledgement.
We take this opportunity to express our profound gratitude and deep regards to our
guide Dr.Vikas Bhati sir for his exemplary guidance, monitoring and constant
encouragement throughout the course of this project. The blessing, help and guidance
given by her time to time shall carry a long way in the journey of life on which we
are about to embark.

CONTENTS PAGE NUMBER

1.Introduction 3
2. Salient new features of the 4
designs Act, 2000.
6
3. Essential characteristics of a design.
8
4. Subject-matter of designs.
10
5. Procedure of registration of a design.
12
6. Infringement of a registered design and
remedies under the act.
14
7. Overlapping Legislations: Copyright
Under The Designs Act & Copyright Act.

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INTRODUCTION

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.

Like other intellectual property rights, the right in a design is also an intellectual
property right. The object of the Designs Act is to protect the aesthetic appearance
of an article if it is original or novel. The law presumes that an aesthetic
appearance is the result of intellectual efforts. The protection given by the law
relating to designs to those who produce new and original designs is primarily to
advance industries and keep them at a high level of competitive progress. There
has been a considerable increase in the registration of designs. To provide more
effective protection to registered designs and to promote designs activity, in order
to promote design element in an article of production, it has become necessary to
make the legal system of providing protection to industrial designs more efficient.
It is also intended to ensure that the law does not unnecessarily extend protection
beyond what is necessary, to create the required incentive for design activity, while
removing impediments to the free use of available designs.

The Designs Act, 2000 is a consolidating and amending Act relating to the
protection of design. From the statements of the objects 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 technology, the changing scenario in the

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international trade and globalization of Indian economy, which had taken place
since the enactment of the old Act in 1911, also made it essential for this law to be
at par with the international trends in design administration. As such, one of the
objects of the 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

SALIENT NEW FEATURES OF THE DESIGNS ACT, 2000.

1. International classification based upon Locarno classification2 has been

adopted wherein the classification is based on articles, the subject matter of
design. Under the previous law a Design was classified on the basis of the material
of which the article was made.

2. A provision claiming priority from a Design application filed in any

Convention country has been introduced. India is a member of WTO, Paris
convention and has also signed Patent Co-operation Treaty. As a result members to
these conventions can claim priority rights.

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.

4. A concept of absolute novelty has been introduced whereby a novelty would

now be judged based on prior publication of an article not only in India but also in
other countries. Under the previous law, the position was ambiguous.

5. A Design registration has been brought within the domain of the public
records right from the date it is physically placed on the Register. Any member of
public can take inspection of the 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.

1
IAG Company Ltd. v. Triveni Glass Ltd. 2005 (30) PTC 143
2
See Locarno Classification, available at http://www.ipo.gov.uk/types/design/d-applying/d-after/d-
class.htm.

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6. A Design registration would be valid for 10 years (from the date of registration
which is also the date of application) renewable for a further period of 5 years.
Under the previous law the validation period was 5 years which was extendable
for 2 terms of 5 years each.

7. A Design registration can be restored within a year from its last date of expiry.
Under the previous law, no provision relating to restoration upon expiration of the
Design registration was provided.

8. Cancellation of a Design registration under the new law is possible only before
the Controller and there are a couple of additional grounds which have been
recognized:

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.

The above mentioned new features have been introduced with the intent of
bringing the Indian design legislation in conformity with other design legislations
of the advanced economies of the world and at the same time give necessary
impetus to trade and industry in this country.

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ESSENTIAL CHARACTERISTICS OF A DESIGN.

Those who wish to purchase an article for use are often influenced in their choice
not only by its practical efficiency but also by its appearance. 3 The physical
appearance of goods really means design. The appearance of an article is dictated
by the design it wears. The primary 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 necessity of having to reveal the identity of the manufacturer or
the producer. Design must necessarily mean something which determines the
appearance of an article, or some part of an article. Designs are applied to an
article with the objective of ornamenting the article. If a particular feature is so
embossed on an article that it does not appeal to the eye at all and is not capable of
attracting a purchaser in any manner for the purchase thereof, then such feature
will not fall within the scope of a design.4

Design, is defined in Section 2 (d) of the Designs Act 2000 as follows:

S. 2(d) – Design means only the 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; but 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, 1958 or the 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.

Design primarily represents features of shapes, configuration, pattern, ornament or

composition of lines. Design does not imply the article but the features which are a
conception, suggestion or an idea of a shape. 5 Such features should be applied to
an article, which in the finished article appeals to and are judged solely by the
consumers eye.
3
Samsonite Corporation v. Vijay Sales 1998 (18) PTC 372 [Del].

4
Corning, Incorporated, U.S.A v. Raj Kumar Garg, 2004 54 SCL 378.

5
Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors 2002 (24) PTC 449 [Del]

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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.

For the purposes of registration under the Designs Act it is not of significance
whether the design has any utility and/or usefulness. 7 Thus an important aspect of
a design is that it should have the ability of being the deciding factor for purchase
of an 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.

For a design to qualify for registration under the Designs Act it is important that
the design should also he new and original. The test for novelty and originality is
dependent on determining the type of mental activity involved in conceiving the
design in question. If the design is a mere trade variation of a previous design then
the designer could be said to have kept an existing design in view and made some
changes. There should be some original mental application involved when
conceiving a new design.9

The introduction of ordinary trade variants into an old design will not make the
new design novel or original. Mere workshop improvements will not qualify for
registration under the Designs Act. The word original implies that the person had
originated something; that by the exercise of intellectual activity he had started an
idea which had not occurred to anyone before. Original would mean something
that no person had created earlier for any purpose whatsoever. New would imply
something which is not necessarily original but which has been applied to an

6
Re. Stenor Ltd. v. Whitesides (Clitheroe) Ltd., 63 RPC 81.

7
Glaxo Smithkline Consumer Healthcare and Co. KG v. Amigo Brushes Private Limited and Anr, 2004
(28) PTC 1 (Del).

8
Samsonite Corporation v. Vijay Sales, supra Note 3.
9
Western Engineering Company v. America Lock Company, ILR (1973) 11 Del.

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article for the first time. What is novel need not also be new. There may be a new
arrangement of features that may appeal to the eye.10

SUBJECT-MATTER OF DESIGNS.

An article is distinguished not only by its utility but also by its visual appeal which
too usually play an important role in shaping the buyers preference for the article.
Therefore, the design of an article and even design of its packaging is important
from the commercial viewpoint.

Designs which are not new or original or have been disclosed to the public
anywhere in India or in any other country by publication or not significantly
distinguishable from known designs or combinations of known designs or
comprise or contain scandalous or obscene matter are not registerable under the
Designs Act. A design can be registerable only when it is new or original and not
previously published in India. Though the word publication has not been defined
by the Designs 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
keep it secret.

Publication can occur in two types

(i) Publication in prior document.

(ii) Publication by prior user.

Publication in prior document would result when the design has already been
published in a document which is easily available. The private or the secret use or
an experimental use of a design will not constitute publication by prior use. The
exhibition of a design or an article to which the design has been applied in an
industrial or other exhibition notified by the Central Government would not
constitute infringement of the design if prior notice of such exhibition is given to
the Controller of Patents and Designs and an application for registration is made
within six months of the date of first exhibiting or publication of the design.

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 been disclosed to the public or the public is put in

10
Wimco Ltd. v. Meena Match Industries, AIR 1983 Del 537.

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possession of the design. The disclosure even to one person is sufficient to
constitute publication.11

A design would be registerable if the pattern though already known is applied to a

new article. What is essential is that the design must be new with respect to the
class of article to which it has been applied. The novelty or originality is to be
judged on the evidence of experts in the trade. An expert who is aware of what is
common trade knowledge and usage in the class of goods to which the design is
applied would be the one entitled to pass the verdict on the novelty and originality.
Colour may form a part of design but the colour by itself cannot constitute a
subject-matter of design.

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.

The procedure for registration of a design is comparatively simple when compared

to procedure for registration of a patent or a trademark.

Briefly, the procedure consists of the following steps:

(1) Submission of application

(2) Acceptance / objections / refusal

(3) Removal of objections/appeal to Central Government

(4) Decision of Central Government

(5) Registration of the design.

Submission of application

The proprietor of the design has to file application for registration of the design.
According to section 5(1), the controller may on application made by any person
claiming to be the proprietor of any new or original design not previously
published in any country and which is not contrary to public order and morality,
register the design under the Act. The application is to be accompanied by the
prescribed fee and in prescribed Form and in prescribed manner.

The application under section 5 shall be accompanied by four copies of the

representation of the design and the applicant shall state the class in which the
design is to be registered. The applicant is also to file a brief statement of novelty
with the: 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.

Acceptance/Objection

On consideration of the application if the Controller finds that the applicant fulfils
all the prescribed requirements, he shall register the designs. If on consideration of
the application any objections appear to the Controller, a statement of these
objections shall be sent to the applicant or his agent.

Removal of Objection/Appeal to the Central Government

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The applicant has to remove the objection within one month of communication of
the objections to him failing which the application shall be deemed to have been
withdrawn. He may also apply to the Controller for being heard on the matter.
When the Controller refuses the application after the submission, he may directly
appeal to the Central Government whose decision is final.

Decision of the Central Government

The decision of the Central Government on the registrability of the design is final.

Registration of the Design

On acceptance of design filed in respect of an application, the Controller 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 Official
Gazette. When published in the Gazette, the controller may select one or more
views of the representation of the design, which in his opinion would depict the
design best.

(1) When the design is accepted, there shall be entered in the Register of Design,
in addition to the particulars required by the Act, the number of the design, the
class in which it is registered, the date of filing the application for registration in
this country, the reciprocity date, if any, claim for the registration, and such other
matters as would effect the validity or proprietorship of design.

(2) When such Register of Design is maintained wholly or partly on computer

under floppies or diskettes, such computer floppies 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) Where the accepted design is one in respect of which a reciprocity date has
been allowed, registration, the extension or the expiration of the copyright in the
said design shall be reckoned from such reciprocity date.

On the completion of the above procedure, the Controller shall grant a certificate
of registration to the proprietor of the design.

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INFRINGEMENT OF A REGISTERED DESIGN AND REMEDIES
UNDER THE ACT.

Infringement of a copyright in design is termed as "Piracy of a registered Design".

It is not lawful for any person during the existence of copyright to do the
following acts without the consent or licence of the registered proprietor of the
design. Section 22 of the Designs Act, 2000, lays down that the following acts
amount to piracy:

(1) To publish or to have it published or expose for sale any article of the class in
question on which either the design or any fraudulent or obvious imitation has
been applied.

(2) To either apply or cause to apply the design that is registered to any class of
goods covered by the registration, the design or any imitation of it.

(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.

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:

A distinction is made between fraudulent and obvious imitation. The only common
factor between the two is that both should be imitations. Thus 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 knowledge that what is being done is a violation of the
other persons right. Where, therefore, fraudulent imitation is established even if
the imitation is rather clumsy and not obvious, the Court will declare it as an
infringement of copyright in the design. There must be exact duplication, an
imitation of the registered design. Nothing less than imitation is sufficient to
establish piracy.

Fraudulent imitation must mean If a man knowing 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 (an exact copy
of the registered design).

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Judicial Remedy

The judicial remedy for infringement of a registered design recommended in the

Act is damages alongwith an injunction. Section 22(2) stipulates remedy in the
form of payment of a certain sum of money by the person who pirates a registered
design. A suit in the appropriate manner for seeking the relief in the form of an
injunction is also recommended.

Jurisdiction of the Court

A suit under section 22 is to be instituted in a District Court or a High Court

depending upon the quantum of damages claimed. The provisions of this section
do not exclude action for passing off and for rendition of accounts. A person
complaining infringement of his design can certainly ask for accounts from the
defendant to show the profits earned by the defendant which 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.

OVERLAPPING LEGISLATIONS: COPYRIGHT UNDER THE

DESIGNS ACT & COPYRIGHT ACT

The exclusive right conferred on a design is termed as copyright in design. This

should not be confused with exclusive right granted for literary and artistic work

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also termed a copyright in the literary and artistic work. There may be certain
designs which can qualify for registration under both the Designs Act and the
Copyright Act. Copyright in an industrial design is governed by the Indian
Designs Act 2000.

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.

A design capable of being registered means a design possessing when they were
made those essential characteristics which qualify them as designs. If such designs
are, at that time, used or intended to be used for the purposes of industrial
reproduction, they are not to qualify for Copyright under the Copyright Act. 14
There is an overlapping area of the applicability of the Designs Act and the
Copyright Act but they cannot be applied at the same time for protection of the
same subject-matter.

CONCLUSION

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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A design is defined in the Act as the ‘overall appearance of the product
resulting from one or more visual features.’ The visual features encompass
the shape, configuration, pattern and ornamentation of the product but do not
extend to the product’s feel or the materials used. The Act only protects the
design’s aesthetic value and not its functionality, however the functionality
of the product may be protected by patent.

In other words, a furniture manufacturer may not be granted a registered

design for a standard chair, but may successfully register the chair’s unique
shape and pattern. If the visual features enhance the functional value of a
product, such as an ergonomic cushion of a chair, a design application may
still be made. A range of designs can be registered across a variety of
industries including fashion and textiles, manufacturing and digital media.

BIBLIOGRAPHY

 https://lawpath.com.au/blog/what-is-the-designs-act
 https://en.wikipedia.org/wiki/Registered_Designs_Act_1949

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 https://lawpath.com.au/blog/what-is-the-designs-act

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