PROTECTION OF INDUSTRIAL

DESIGNS UNDER THE IPR

REGIME IN INDIA

SUBMITTED TO: Dr. SACHIV KUMAR

SUBMITTED BY: SUKANYA ACHARYA

LLM, 3RD SEM

ROLL NO. 4012

INTRODUC TION

In order to seize the attention of buyers, an article must be visually attractive. Visual attraction enhances the marketability of the articles.

In order to be protected, the design of an article must appeal to the eye. This means that a design of an article is primarily of an aesthetic nature.

Although the design of a product may also have technical or functional features, the industrial design, as a category of intellectual property law, refers only to aesthetic nature of a finished product and is distinct from any technical or functional aspects.

Thus from the perspective of intellectual property law, an industrial design refers only to the ornamental or aesthetic aspects of the product.

Rationale For Protection Of Industrial Designs

An industrial design is the ornamental or aesthetic aspect of an article. Industrial designs are what make an article attractive and appealing and hence they add to the commercial value of a product and increase its marketability.

Protection of industrial design brings an assurance of an exclusive right against unauthorised copying or imitation of the design by third parties to the owner – the person or entity that has registered the design. This helps to ensure a fair return on investment.

An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity and promoting more aesthetically attractive products.

Protecting industrial designs helps economic development, by encouraging creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts. They contribute to the expansion of commercial activities and the export of national products.

Historical Background Of Design Law

The first designs legislation enacted in India was the Patterns and Designs Protection Act 1872. The Act provided the inventors of new patterns and designs in India, the exclusive privilege of making, selling and using the invention in India or authorising others to do so for a shorter duration of time.

The Act of 1872 was followed by the Inventions and Designs Act 1888, which consolidated and amended the law relating to the protection of inventions and designs and contained provisions relating to designs in a separate part.

The Act of 1888 was repealed by the British Patents and Designs Act 1907 which became the basis of the Indian Patents and Designs Act of 1911.

The Patents Act 1970 repealed the patents provisions of 1911 Act. The Designs Act 1911 existed till 2000 when the present Designs Act 2000 repealed it.

The Designs Office is located at Kolkata in the Patent Office.

Meaning of Industrial Design

The meaning of ‘design’ has been provided in section 2(5) of the

Designs Act 1911 as meaning only the features of the shape,

configuration, pattern or ornament applied to any article 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 mode or principle of

construction or anything which is in substance a mere technical device,

and does not include any trade mark as defined in section 2(1)(v) of the

Trade and Merchandise Marks Act 1958 or property mark as defined

under the Indian Penal Code.

Section 2(d) of the Designs Act 2000 defines ‘design’ to mean 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 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.

CONTD.. The definition makes it clear that designs means the

feature of shape, configuration, pattern, ornament or composition of lines or colours applied to an article and not the article itself. The definition is applicable to an article in two dimensional or three dimensional form or in both the forms. Thus as a general rule, a design consists of:

Three dimensional features such as the shape of the product,

Two dimensional features such as ornamentation, patterns, lines or colour of a product or

Combination of one or more such features.

The design must be such that in the finished article the features of it ‘appeal to and are judged solely by the eye’. A good subject of design must be visually appealing, though it need not be an artistic work or possess artistic merit

Judicial Interpretation of Design

ENGLISH CASE LAWS

In Dover Ltd v. Nurnburger Celluloidwaren Fabrik Gebruder Wolff, LJ Buckley stated that “design means a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means. It is a conception, suggestion or idea and not an article, which is the thing capable of being registered. It is a suggestion of form or ornament to be applied to a physical body.”

In Pugh v Reley Cycle Co Ltd, it was held that a design to be registrable under the Act must be some conception or suggestion as to shape, configuration, pattern or ornament. It must be capable of being applied to an article in such a way that the article to which it has been applied will show to the eye the particular shape, configuration, pattern or ornament, the conception or suggestion of which constitutes the design.

CONTD..INDIAN CASE LAW

In Wimco Ltd v Meena Match Industries, the court held that what actually constitutes the design is the peculiar combination and arrangement of lines which give such features. A design may consist of a mere arrangement of straight lines or stripes or a pattern on the article which must be new or original.

In Bharat Glass Tube Limited v Gopal Glass Works Ltd, the Supreme Court held that the definition of design as defined in the Designs Act 2000 read with application for registration and Rule 11 with Form 1 makes it clear that the design which is registered is to be applied to any finished article which may be solely judged by eye appeal. Therefore a particular shape or configuration is to be registered which is sought to be produced on any article which will have visual appeal.

The concept of design is that a particular figure is conceived by its designer in his mind and it is reproduced in some identifiable manner and it is sought to be applied to an article.

Objective of the Designs Act 2000

The objectives of Designs Act 2000 are as follows:

To ensure effective protection to the registered designs,

To promote design activity in order to promote the design element in an article of production,

To ensure that law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity and

To remove impediments to the free use of available designs.

The object and purpose of the Designs Act has been best explained by the Apex Court in the case of Bharat Glass Tube Ltd v Gopal Glass Works Ltd, where the court held the sole purpose of the Act is protection of the intellectual property of the original design for a period of 10 years or whatever further period extendable. The object behind this enactment is to benefit the person for his research and labour put in by him to evolve the new and original idea. This is the sole aim of enacting this Act.

Registration of Designs: Interpretation of New and Original

A design may be registered only on an application, provided it fulfils the criteria as prescribed in the Act.

Section 4 of the Act relates to the prohibition of registration of certain designs which lack novelty or originality. It also prohibits registration of designs which had been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date; or which is not significantly distinguishable from known designs; or combination of known designs or comprises or contains scandalous or obscene matter.

In Hecla Foundry v Walker Hunter, the court held that whether the design is useful or devoid of utility is quite immaterial for the purpose of registration. All that the statute requires, in order to its registration and protection, is that it shall be new or original and shall not have been previously published and the person registering acquires no exclusive right except the shape and configuration of the design.

Contd…

“New” in relation to a design means a design which is completely new in the sense that it is invented or created for the first time and was hitherto unknown and “Original” in relation to a design may mean a new application of an existing or known design to a subject-matter. Thus, a design may not be new in the sense that it is completely new. It may be an existing or known design but has been applied to a particular article for the first time. Such a design, therefore, may be original in the sense that its application to the article is new.

The concept of new and original was discussed in Gammeter v The Controller of Patents and Designs, a design in order to be new or original within the meaning of the Act, need not be new or original in the sense of never having been seen before as applied to any article whatever, there might be a novelty in applying an old thing to a new use, provided it is not merely analogous.

The Supreme Court in Bharat Glass Tube Limited v Gopal Glass Works Limited, held that the expression “new or original” appearing in section 4 means that the design which has been registered has not been published anywhere or it has been invented for the first time or it has not been reproduced by anyone.

Procedure for Registration

STEP 1 : APPLICATION FOR REGISTRATION

STEP : 2 DISCLOSURE OR PUBLICATION OF DESIGNS

STEP 3 : CERTIFICATE OF REGISTRATION

STEP 4 : REGISTER OF DESIGNS

STEP 5 : RIGHTS ON REGISTRATION

STEP 6 : PIRACY OF COPYRIGHT IN DESIGNS

STEP 7 : CANCELLATION OF REGISTRATION

STEP 8: ASSIGNMENT AND TRANSMISSION OF REGISTERED DESIGNS

STEP 9 : RECTIFICATION OF REGISTER

STEP 10:AVOIDANCE OF CERTAIN RESTRICTIVE CONDITIONS IN AGREEMENTS RELATING TO DESIGNS

Piracy of Registered Designs

Section 22(1) : the commission of any of the following three acts by a person other than the registered proprietor of that design amounts to piracy of registered design. These acts are:

1. For the purpose of sale, to apply or cause to be applied to any article in any class of articles in which the designs is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with the view to enable the design to be so applied; or

2. To import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered and having applied to it the design or any fraudulent or obvious imitation thereof; or

3. Knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale of that article.

Remedies for Infringement

The Act provides for two alternative remedies to the proprietor of registered designs u/s 22(2). The proprietor has to elect one of them.

Accordingly, the section states that if any person acts in contravention of s. 22, he shall be liable to pay the registered proprietor of the design a sum not exceeding Rs 25,000/- for every contravention recoverable as a contract debt. But the total sum recoverable in respect of any one design shall not exceed Rs 50,000/-. The proprietor may bring a suit for the recovery of damages for any such contravention and for an injunction against the repetition thereof. If he succeeds, he will be entitled to recover such damages as may be awarded by the court and restrain the defendant in terms of the injunction granted by the court.

1. Interlocutory injunction: A plaintiff may seek interlocutory injunction under rr 1 and 2 of O 39 of the CPC 1908 during the pendency of the infringement suit. The plaintiff must make out a prima facie case and show that the balance of convenience is in his favour and that he shall suffer irreparable loss and injury. An interlocutory will not normally be granted where the damages will provide an adequate remedy, should the plaintiff’s claim succeed.

Contd…

2. Final injunction: If the plaintiff succeeds at the trial in establishing infringement of his registered design, he will normally be entitled to a permanent injunction to restrain future infringement because there is always a possibility of the recurrence of such infringement. The object of granting injunction is to prevent such recurrence and restore the status quo.

3. Damages: The plaintiff is entitled to recover damages where he establishes infringement. The measure of damages is the loss caused to the plaintiff by the defendant’s wrongful conduct.

4. Account of Profits: The court can direct the defendants to maintain an account of profits during the pendency of the infringement suit. As a corollary of injunction, equity might require a defendant to account to a plaintiff for profits made from wrong doing occurring from the infringement.

5. Delivery up or Destruction: In the UK it has been the practice of the court to order for the delivery up or destruction of all infringing articles found in possession of the defendant. However, in India, the Designs Act 2000 did not incorporate any provisions for delivery up or destruction of all infringing articles.

Defences in Infringement Suit

In a suit for infringement, the following defences are available to the defendant as per the facts and circumstances of the case:

1. The defendant can deny that there was any infringement of the registered design as alleged or

2. That the design applied by him was materially different from the registered design or

3. That the defendant applied the design with the consent of the registered proprietor of the design or

4. That the plaintiff is not the proprietor of the design or

5. That the registration of the design is invalid as in fact there was no design as claimed within the definition u/s 2(d) or

6. The design was not new or original or had been previously published or registered in India or

7. That there was in force a contract relating to the registered design which contains an unlawful condition as declared by s 42.

International Commitments HAGUE AGREEMENT OF INTERNATIONAL DEPOSIT OF

INDUSTRIAL DESIGNS 1960

The Hague Agreement is an international registration system which offers the possibility of obtaining protection for industrial designs for a number of States and intergovernmental organisations referred to as Contracting Parties by means of a single international application filed with the International Bureau of WIPO.

There are three treaties independent of each other which are compendiously called the Hague Agreement enabling the making of one single application for registration of industrial designs in the member countries who are parties to these separate treaties. The three treaties are:

The London Act of June 2, 1934,

The Hague Act of November 28, 1960 and

The Geneva Act of July 2, 1999.

CONTD…

An international application may be made, in all cases through the WIPO but only under any one of the applicable treaties qualifying the applicant through

(a) being a national of a contracting party or

(b) having a domicile in the territory of a contracting party or

(c) having a real and effective industrial or commercial establishment in the territory of a contracting party.

The Geneva Act 1999, permits an additional qualification viz. habitual residence in contracting party’s territory for making the international application. The protection will be extended only by the countries which are parties to applicable treaty of the Hague Agreement under which the application is made.

WIPO AND INDUSTRIAL DESIGNS

The World Intellectual Property Organisation (WIPO) is an international organisation dedicated to ensuring that the rights of creators and owners of intellectual property are protected worldwide and that the inventors and authors are thus recognised and rewarded for their ingenuity.

As a specialised agency of the United Nations, WIPO exists as a forum for its Member States to create and harmonise rules and practices to protect intellectual property rights.

With the rapid globalisation of trade during the last decade, WIPO has played a significant role in helping the new systems of protection to evolve through treaty negotiations, legal and technical assistance, and training in various forms, including in the area of enforcement of intellectual property rights.

It also provides for International Registration System for the intellectual property rights. These greatly simplify the process for simultaneously seeking protection for the intellectual property rights in a large number of countries.

TRIPS AGREEMENT AND INDUSTRIAL DESIGNS

The TRIPS Agreement which entered into force on 1 January 1995 along with other WTO Agreements is largely an affirmation of the position of industrialised world in the trade and intellectual property debate.

The TRIPS Agreement provides relatively high minimum standards for each of the main categories of intellectual property rights, establishes standards of protection and enforcement and provides for the application of the WTO dispute settlement mechanism to resolve disputes between WTO Members.

The TRIPS Agreement addresses seven categories of intellectual property rights namely, copyright and related rights, patents, trademarks and service marks, geographical indications, undisclosed information or trade secrets, industrial designs and layout designs of integrated circuits.

CONTD..

The industrial design laws as in conformity with the TRIPS Agreement protects the works of applied art that have industrial application such as the design of a chair or a pair of running shoes. (Article 25 and 26 of the TRIPS Agreement).

Many countries have separate registration systems for industrial designs. The Hague Agreement Concerning the International Deposit of Industrial Designs authorises nationals of member countries to make a single design application with the International Bureau of WIPO in Geneva in lieu of individual state application.

The Locarno Agreement Establishing an International Classification for Industrial Design aids novelty and infringement searches by establishing an agreed system of classification for designs. The minimum term of protection under the TRIPS Agreement is ten years.

Community Concept of Designs

The concept of community design is recognised under the laws of the European Community.

The domestic law that has been enacted by the Members of the European Community is contained in the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.

The purpose of the directive is to bring about an approximation of the laws of the Member States on the legal protection of designs which would enable the establishment of an internal market characterised by the abolition of obstacles to the free movement of goods.

But it is to be noted that the national law of any Member of European Community shall have to conform to the legislation of European Community. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs is a separate regulation relating to European Community Designs.

One of the purposes of Council Regulation (EC) No 6/2002 is to eliminate the prevention and distortion of community wide competition that could be caused by the substantial differences between Member States’ design laws.

Conclusion In this age of severe competition in the international markets,

the significance of industrial design is felt more strongly than ever before. When there are several firms trying to draw the attention of customers, constant enhancements in the products can play an important role in the company’s success.

Companies now make use of every possible strategy to make their products attractive to the buyers, which provides buyers a lot of choices and it has become harder to satisfy them. Hence, a company will lag behind the competition if he does not give buyers the latest and the best in terms of products. This has rendered industrial design even more crucial for the success of a firm in today’ markets.

It is also crucial as any innovative idea, which draws a large number of customers will also offer the company with lasting popularity.

Design is a very important and effective intellectual property right especially in a world where the shape and configuration of products and product packs is ever changing to attract and appeal to the masses. Compared to patents and other forms of intellectual property, design is a very effective way of protecting an intellectual activity and can be done in a relatively short period of time and with minimal cost.

BIBLIOGRAPHY

BOOKS

Ahuja, V. K., Intellectual Property Rights in India, Vol I, 2009, LexisNexis Butterworths Wadha, Nagpur

Narayanan, P., Intellectual Property Rights, 3rd edition, 2005, Easter Law House, Kolkata.

Ramappa, T., Intellectual Property Rights, 1st edition 2010, Asia Law House, Hyderabad

Venkataraman, Srikanth, Understanding Designs Act, 2010 edition, Universal Law Publishing Co., New Delhi

WEBSITES

http://www.wipo.org

http://www.ssrn.com

http://www.ipindia.nic.in

http://www.manupatra.com