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AN OVERVIEW OF

THE DESIGNS ACT AND RULES

IN INDIA

Prepared by INTTL ADVOCARE Team ©

Mamta Rani Jha, Partner

Supported by:

Manish Kumar Mishra, Associate

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© INTTL ADVOCARE 2012

All rights reserved. This study material has been prepared as part of the

online IPR course conducted by Federation of Indian Chambers of

Commerce and Industry (FICCI) for academic purpose. The contents of

the said study material or parts thereof are not to be reproduced or

transmitted in any form or by any means whatsoever, including

photocopying and recording, without the written permission of the

copyright holder. Such written permission must also be obtained before

any part of this study material is stored in a retrieval system of any

nature.

The author has taken all care and effort to ensure that the legislative

provisions reproduced here are accurate and up to date. However, she

takes no responsibility for any inaccuracy or omission contained herein

or for advice, action or inaction based hereupon. Reference must be

made to the Official Gazette issued by the Government of India for the

authoritative text of any Act, Rule, Regulation, Notification or Order.

The views expressed in this study material are of the author. For further

queries and clarifications, the author may be contacted at

ipcare@inttladvocare.com or mamta@inttladvocare.com.

 

 

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CONTENTS

 

I. OBJECT OF DESIGN REGISTRATION AND LEGISLATION IN INDIA.....4-6

II. WHAT IS A REGISTRABLE DESIGN ..............7-14

III WHAT IS NOT A DESIGN ............15-17

IV NOVELTY AND ORIGINALITY ...........18-24

V PRIOR PUBLICATION ..........25-29

VI REGISTRATION OF DESIGNS ...........30-41

VII CANCELLATION OF DESIGN REGISTRATION ...........42-44 [

VIII REGISTER OF DESIGNS & RECTIFICATION OF REGISTER ..........45-47

IX TRANSFER OF RIGHTS & LICENSE ..........48-49

X RIGHTS CONFERRED BY REGISTRATION ...........50-53

XI INFRINGEMENT OF COPYRIGHT IN A DESIGN & CIVIL REMEDIES..54-60

XII POWERS AND DUTIES OF THE CONTROLLER ...........61-62

   

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CHAPTER I

OBJECT OF DESIGN REGISTRATION AND LEGISLATION IN INDIA

1.0 Object of registration of designs:

1.1 Object of The Designs Act is to protect new or original designs so created to

applied on a particular article which is capable of manufacture by industrial

process or means. The appearance of an article plays an important role for

creating a market for itself. The important purpose of design registration is to

ensure that the artisan, creator, originator of a design who has given the

article an aesthetic look is not deprived of his bonafide labour/skill and the

reward when others try to apply the same design on their article.

The protection given by the law relating to designs to those who produce new

and original design is primarily to advance industries, and keep them at a

high level of competitive progress.

1.2 Legislation in India:

The first legislation in India for protection of Industrial Designs was The

Patents and Designs Protection Act, 1872. The Inventions and Designs Act of

1988 re-enacted the law relating to protection of Inventions and Designs and

contained provision relating to Designs in a separate part. In 1911 The

Designs Act was passed by then British Government in India. Since then,

extensive amendments have been made in The Designs Act. To provide more

effective protection to registered designs and to promote design activity in

order to promote design element in an article of production it became

necessary to make the legal system of providing protection to Industrial

Designs more efficient. To achieve such objective, The Designs Act, 1911 was

repealed and The Designs Act 2000 was enacted to make the Designs Law in

India TRIPS compliant.

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Latest Amendments:

The law relating to Designs at present is governed by The Designs Act, 2000

which came into force alongwith the Designs Rules, 2001 on 11.05.2001. The

Designs Rules, 2001 has been further amended on 17.06.2008 to keep it at pace

with the rapid changes in technology and international developments and is

also to include more detailed classification of design to conform to the

international system. The Designs Act, 2000 is hereinafter referred to as ‘the

Act’

It is relevant to note the introduction, statement of objects and reasons of the

Act for better understanding of the scope of protection under The Designs

Act, 2000.

The Hon’ble Division Bench of Bombay High Court discussed the objects and

reasons of The Designs Act, 2000 .1

“In 1911 the Designs Act was passed by the then British Government in India, since then extensive amendments have been made in the Designs Act. In the meanwhile India has made tremendous progress in the field of science and technology. There has been considerable increase in the registration of designs. To provide more effective protection to registered designs and to promote design 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.

STATEMENT OF OBJECTS AND REASONS:

The proposed Design Bill is essentially aimed to balance these interests. 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. To achieve these purposes, the Bill incorporates inter alia, the following, namely:

a) it enlarges the scope of definition of "article" and "design" and introduces definition of "original"

                                                            1   AIR 2008 BOM 111 

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14. The notes on clauses as published on 13th December, 1999 in reference to a Bill to consolidate and amend the law relating to protection of designs, as relevant, is reproduced below:

Clause 2.- This clause contains definitions of various expressions used in the Bill. While most of the definitions in the existing Act have been retained, the definition of "original" has been incorporated vide Clause (o). According to this definition, "original", in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application. The definition of "original" has been incorporated in order to specify the registrable designs. The definitions of "article" and "design" have been amplified to align them with similar definitions internationally accepted for providing wider protection to the intellectual property. The definition of "article" has been amplified for inclusion of parts of articles sold separately within its scope. The definition of "design" has been amplified to incorporate therein the composition of lines and colours so as to avoid overlapping with The Copyright Act, 1957 regarding definition of "design" in respect of artistic work.”

The Hon’ble Court duly recorded that the phrase as inserted in the Act, now

even covers “any part of an article capable of being made and sold

separately” and hence the Act has widened the scope of protection and hence

restrictive interpretation will be against the scheme and object of the Act.”

****

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CHAPTER II

WHAT IS A REGISTRABLE DESIGN

2.0 In order to be protectable, it is necessary for a Design to fulfil the following

requirements:

(i) It is covered under the definition of Design;

(ii) It is not a prohibited design as per Section-4 of the Act.

2.1 Definition of Design:

Section 2 (d) of The Designs Act, 2000 defines designs as under:

d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines of 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 mode or principle of construction or anything which is in substance a mere mechanical device, 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, 1958 (43 of 1958) or property mark as defined in Section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause) of Section 2 of the Copyright Act, 1957 (14 of 1957);

From the above definition a design must have the following essential

ingredients:

(a) Feature - of shape, configuration, pattern, ornament or composition of

lines or colours;

(b) Applied to any article;

(c) The article may be in two dimensional or three dimensional form;

(d) Feature applied to an article by any industrial process or means, whether

manual, mechanical or chemical separate or combined;

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(e) Finished article which has appeal to the eye;

(f) It does not relate to feature which are dictated by function i.e. mere mode

or principle of construction or anything which is in substance a mere

mechanical device;

(g) Does not include a ‘trade mark’ or a ‘property mark’ or any ‘artistic work’

as defined under The Trade and Merchandise Marks Act, 1958, Indian

Penal Code 1860 and The Copyright Act 1957 respectively.

The essence of design protection is the protection of the appearance of an

article. The protection of appearance depends on feature applied to an article

such as shape, surface pattern, ornamentation, configuration, texture etc. The

feature applied to an article imparts an aesthetic eye appeal enhancing the

value and marketability of the product/article making it a registrable design.

If the feature is merely functional in nature the same would be incapable of

any design protection.2

2.2 A design may be three dimensional or two dimensional.

Three dimensional - shape and configuration e.g. shape of a bottle, Kettle,

chair etc.

Two dimensional - a pattern or ornament e.g. pattern on fabric, wallpaper etc.

A piece of paper on which a pattern is drawn cannot be a subject matter for

registration of design. Label put on a carton to be used as container for the

goods can never amount to design within the meaning of Section 2(3) of The

Designs Act, 1911.3

The paper used for printing or canvas used for painting have no function

other than to carry the printing or painting. Therefore, they are unregistrable.

                                                            2   1999 PTC 775 (para 16, 17) 3    AIR 1992 BOM 195  

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In Re Littlewoods Pools Ltd’s Application (1949) 66 RPC 309 - application

was made to register a form of football coupon consisting of a rectangular

sheet of paper on which a pattern was formed by straight lines, the spaces

between were filled with literary matter. Wynn-Parry J in holding that the

paper was not an article stated that as the function of the paper was “solely to

carry the imprint of the design” and did not have any other function it was

not an “article”, within the meaning of the Act.

It would appear to follow that paper or canvass could be considered an

article. However, to be registrable an article must have some function other

than that of merely carrying the design. A drawing or painting on ordinary

paper or canvas are not the same as wallpaper or wrapping paper or textiles.

The wallpaper, wrapping paper or textiles all perform a function other than

just being a vehicle for the design. For example the wallpaper is used for

sticking on the wall to either enhance the decor of a room or for the more

practical purpose of covering cracks or faults in the wall surface. Textile

material is used for making up a variety of articles e.g. curtains, clothing, bed

linen etc. This factor makes these registrable articles.

2.4 Definition of an article:

Section 2(a) OF The Designs Act, 2000 defines article as under:

(a) “article” means any article of manufacture and any substance, artificial or

partly artificial and partly natural; and includes any part of an article

capable of being made and sold separately.

Rule 2(e) of The Designs, Rule 2001 defines a set of articles.

“(e) “Set” means a number of articles of the same general character ordinarily sold together or intended to be used together, all bearing the same design, with or without modification not sufficient to alter the character or substantially to affect the identity thereof.”

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The phrase “capable of being made and sold separately” was not in The

Designs Act, 1911. This phrase was added in The Designs Act, 2000 to enlarge

the definition of article and design.

In Marico Ltd. v/s Raj Oil Mills4 The Hon’ble Court observed as under:

17. The definition of "article" under the Act as reproduced above read with the definition of "design" are different from the provision of the English statute as reproduced above and importantly, the following words "includes any part of an article capable of being made and sold separately", whereas, in the English statute the words are "if that part is to be made and sold separately". Therefore, the words "capable of being made and sold separately" has to be read and considered in the context of the Act. The English Law is silent with regard to the above words of the Act. The repealed Act 1911 defines "article" means any article of manufacture and any substance artificial or natural or partly artificial or partly natural. The above words "capable of being made and sold separately" were not there earlier. Therefore, as noted in the objects and reasons and as intended to enlarge the definition of "article" and "design" above words have been inserted. These words are clear and unambiguous.

29. The phrase as inserted in the Act, now even covers "any part of an article capable of being made and sold separately". Apart from any article of manufacture, therefore, we have no doubt that the words inserted in the Act have a wide meaning and are not to be restricted to exclude an article and or even the part of an article which is "capable of being made and sold separately", as contended and as held by the learned Judge. There is no question of giving the restricted meaning to exclude finished design article like cap in question which admittedly and factually were and are made separately. These caps are capable of being sold separately.”

Further, while deciding the meaning of Article what is to be seen is the actual

intention at the time of the design registration. The article in question, a face

of an electric meter, was found not to be registrable, and Graham J observed

“....I find the matter difficult to decide, but on the whole I think the intention must be to grant registration only for such articles as are intended by the proprietor of the design to be put on the market and sold separately, such as for example a hammer.....” 5

Therefore, as per the definition in the Act an article must have two ingredients

to be eligible for design registration:

                                                            4   AIR 2008 BOM 111 5  1973 RPC 899 

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- it must be “an article of manufacture” and

- it must be “capable of being made and sold separately”.

Thus, an article must have a purpose other than merely carrying the design

meaning thereby the article must be capable of being sold even if it does not

carry the design applied to it. An article of manufacture or a substance had to

have some purpose other than that of merely carrying the ornament.6

2.5 Applied to an article:

Design is always applied to an “article”. Design is therefore article specific.

An application for a design registration shall be made in a prescribed Form-1

which clearly says that provide the name of the article on which the design is

sought to be applied.

The Hon’ble Supreme Court in Bharat Glass case7 held that the design of the

Roller though being prior registered and prior published will not invalidate

the design registration in India which was applied on the glass sheet. The

court held as under:

“Therefore, the concept of design is that a particular figure 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. Therefore, whenever registration is required then those configurations have to be chosen for registration to be reproduced in any article. The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together, i.e. the design and the design which is to be applied to an article. In the present case, the design has been reproduced in the article like glass which is registered. This could have been registered with rexin or leather. Therefore, for registration of a particular configuration or particular shape of thing which is sought to be reproduced on a particular article has to be applied. As in the present case the design sought to be reproduced on a glass-sheet has been registered and there is no evidence to show that this design was registered earlier to be reproduced on glass in India or any other part of the country or in Germany or even for that matter in United Kingdom, therefore, it is for the

                                                            6  (1949) 66 RPC 309 7  2008 (37) PTC 1 

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first time registered in India which is new and original design which is to be reproduced on glass sheet.

Thus, a known design if applied to a new article can impart originality and

would be considered as registrable design.

Where the design of a metal band called the "Novelty band," intended to

attach a watch to the wrist, was similar in shape and configuration to a

bracelet previously manufactured for ornamental purpose, it was held that

though the shape of the "Novelty" band by itself could not be said to be new

and original, the application of it to a watch to be worn on the wrist was

considered as original design.8

2.6 Eye Appeal to an article:

The definition of the design has a categorical reference that the feature in

terms of shape, configuration or pattern on the finished article must appeal to

and are judged solely by the eye. Thus, the feature applied to an article

should be appealing to the eye.

Hence all the features are not registrable designs only those features which

are appealing to the eyes are registrable designs. “Eye appeal” is a technical

phrase which must be distinguished from the more general “visual appeal”.

“Features which in the finished articles appear to and are judged solely by

eye”.

“LORD PEARSON said:”The phrase is naturally to be read as importing some limitation on the expression ‘features of shape, configuration, pattern or ornament’. Not all such features constitute a design. It is not reasonable to suppose that the only limitation is that the features are visible in the finished article. If that had been the intention, it could have been expressed much more simply. The emphasis is on external appearance, but not every external appearance of any article, constitutes a design. There must be in some way a

                                                            8  AIR 1919 CAL 887 

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special, peculiar, distinctive, significant or striking appearance – something which catches the eye and in this sense appeals to the eye.”9

2.7 Eye Appeal of a prospective purchaser:

In determining whether the features in question had eye appeal, the Court

adopted the mantle of the prospective purchaser of the article to which the

design had been applied. The design was not viewed through the eyes of an

expert in the field.10

The question of eye appeal came up for consideration in Interlego A.G. v. Tyco

Industries Inc. [1988] 16 R.P.C. 343. In that their Lordships have laid down

important test in the matter of visual appeal of the eye. It was observed as

follows:

“In relation, however, to an assessment of whether a particular shape or configuration satisfies the former and positive part of the definition, the fact that an important part of the very purpose of the finished article is to appeal to the eye cannot be ignored. That factor was one which was conspicuously absent from the articles upon which the courts were required to adjudicate in the cases of Tecalemit Ltd. v. Ewarts Ltd. (1927) 44 R.P.C. 503, Stenor and Amp and in the more recent Irish case of Allibert S.A. v. O'Connor [1981] F.S.R. 613, in all of which the claim to registration failed. It was one which was present in the case of Kestos where the claim to the validity of the design succeeded. It is present in the instant case. One starts with the expectation of eye-appeal, for part of the very purpose of the article is to have eye-appeal. That was aptly expressed by Whitford J. in relation to the same subject-matter as in this appeal in the case of Interlego A.G. v. Alex Folley (Vic) Pty.Ltd. [1987]F.S.R. 283 at page 298:

“I would have expected a designer designing toys to have the question of the appeal of the toy to the eye, even in the case of a functional toy, in mind. Mr. Rylands who have evidence for the defendants said that when designing a functional toy it is necessary to have regard not only to suitability for purpose but to overall appearance. You have to design so that the article in question will make an immediate visual appeal to a child or to the parent or other person buying for a child.”

                                                            9   Amp. V Utilux (1972) RPC 103  10   1995 RPC 205 

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2.8 Design with no eye appeal is not a registrable design:

A drawing indicating a method of construction and can only be understood

and visualised by an eye trained in the mechanical matters cannot be a

registrable design. The drawings which are not perceivable by the eye of an

ordinary person and which can only be perceived by an Engineer or a

mechanician are not registrable designs.11

****

                                                            11   1912 RPC (29) 196 

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CHAPTER III

WHAT IS NOT A DESIGN

3.0 FUNCTIONAL FEATURE:

“Good design involves two fundamental elements: the product must perform its function and it should be pleasant to look at. In the case of some products, such as pictures and ornaments, their very function is to please the eye. In the case of other products, such as the internal working parts of a machine, the visual appearance is irrelevant. That is why the Community design legislation denies protection to component parts that are not visible in normal use. In the case of most products the designer will be concerned with both the functional and the aesthetic elements. That applies also to large items of industrial equipment, such as shredders for use in recycling plants. The shredder must, in the first place, perform its function effectively and safely and without creating excessive noise, but it is also desirable that the shredder should be pleasing to the eye and thus enhance the working environment of the people who operate it and see it in use. For that reason there is no objection in principle to granting design protection to industrial products whose overall appearance is determined largely, but not exclusively, by functional considerations.”12

Many articles have a number of designs with functional and non-functional

features. Where a design includes features dictated by function to be

performed by the relevant article, there are three possibilities as per Lord

Oliver in Interlego AG v Tyco Industries Inc.13 He suggested that where a design

includes features dictated by the function to be performed by the relevant

article, there are three possibilities:

• The registrable elements are limited to those parts having eye appeal;

• The design is excluded from registration altogether because of the

presence of functional features or;

• The design excluded only if every feature is dictated by function.

                                                            12   18 [2010] FSR 39 13   (1989) AC 217 

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Therefore, a design which is purely functional and has no appeal to the eye

cannot be protected as a design under the Act. However, the difficulty arises

in the cases where the design is partly functional and partly appealing to the

eye. House of Lords while dealing with the issue that a single electrical

terminal for using washing machine having a different shape is registrable

design or not observed and held as under:14

“In Cow (P.B.) & Co. v Cannon Rubber Manufacturers Ltd. (1959) RPC 347 the question arose whether the provision of diagonal ribbing for the faces of a hot water bottle was dictated solely by the function which the hot water bottle had to perform. Lloyd-Jacob J. held on the evidence that heat radiation without discomfort or risk owed nothing to the direction in which the ribbing was disposed: so there was a difference between the provision of ribbing of some kind and the choice of a diagonal direction. His decision was upheld in the Court of Appeal where Lord Evershed M.R. referred to the diagonal ribbing as a “distinctive feature” which seemed to him “to appeal strikingly to the eye”. He said that it had not been established that the feature was “dictated solely by-that is to say, one adopted upon the sole requirement of functional ends.” Though with some hesitation he said (at page 352)- I am not satisfied that this was a “purely functional idea.”

In the features of shape of the terminals in the present case there was neither the purpose nor the result of making an appeal to the eye: the features of shape were adopted only because of functional requirements: they were dictated solely by the function which terminals to be made in that shape would have to perform.”

A design consisting of S shaped zigzag folds angular neck and a curved

handle of a toothbrush was held to be a functional feature and non-registrable

as design. The Court was of the view that the zigzag S folds was utilitarian

and functional which enhances flexibility in the toothbrush. The rubber

cushioning and introduction of certain patches on the toothbrush will not

make the toothbrush eligible for design registration when all the features are

primarily functional in nature.15

                                                            14   1972 RPC 103 at 115 15  1999 PTC 775  

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Therefore, principally design protection can be granted to industrial products

whose overall appearance is determined largely but not exclusively, by

functional considerations.

3.1 Trade Marks & Property Marks:

As per the definition of the design, trade marks or property marks as defined

in The Trade Marks Act or Indian Penal Code are explicitly excluded to be

considered as designs under this Act.

3.2 Artistic work:

The artistic work as defined under The Copyright Act in Section 2(c) is also

explicitly excluded to be considered as designs under this Act.

3.3 Prohibition of registration of certain designs:

Section 4 of The Designs Act, 2000 envisages what designs are not registrable

or what are prohibited for design registration. Section 4 is reproduced

hereinbelow:

Section 4: Prohibition of registration of certain designs.- A design which-

(a) is not new or original; or

(b) has 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 where applicable, the priority date of the application for registration; or

(c) is not significantly distinguishable from known designs or combination of known designs; or

(d) comprises or contains scandalous or obscene matter, shall not be registered.

Thus, design protection cannot be granted if the design is:

• not new or original;

• prior published either in India or internationally prior to the date of

filing of design application;

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• mere trade variant and not significantly distinguishable from known

designs or combination of known design;

• of scandalous or obscene matter.

****

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CHAPTER IV

NOVELTY AND ORIGINALITY

4.0 A design which is not new or original is not registrable:

Section 2(g) defines original as under:

“original”, in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application;

Therefore, original in relation to design means two things:

• Originating from the author;

• Old design but the application of the same is new;

Therefore, the design to be original, it must originate from the author and

must be new i.e. never existed before or though existed before the

application of the design is new. Thus, the originality and novelty are the

two requirements for a design to be registrable.

The Hon’ble Supreme Court interpreted as to 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 made known to

the public. The expression, “new or original” means that it had been

invented for the first time or it has not been reproduced by anyone.16

4.1 Distinction between “new” and “original”:

In Clarke v. Julius Sax and Co.17 Lord Justice Lindley while examining the issue

of a design for the shape of a lamp for electric lighting observed the

distinction between novelty and originality and held that gas and oil lamps

are old designs and electric lighting being new, every lamp or lamp shade

adapted to it for the first time cannot be said to be new or original just                                                             16   2008 (37) PTC 1 17   1986 RPC (13) 351 at 358 

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because the application is new. There must be some novelty or originality in

the shape as applied to the lamp.

It is not easy to determine what distinction, if any, is intended to be drawn

between novelty and originality; but if there is any difference, the design

need not be both new and original. The Act applies to designs which are

new or original, provided they have not been previously published in the

United Kingdom.

Reliance was placed on various judgments:

In considering the novelty or originality of a design, it must always be borne

in mind that the applicability of the design to manufactured articles is the

matter which has to be determined. This was pointed out in Saunders v. Wiel,

1893, 1 Queen’s Bench 171, 10 RPC, 29 (the “Abbey spoon handle” case).

If a design had never been applied to articles comprised in one of the classes

of goods into which manufactured articles are divided for the purposes of the

Act, such design might be protected for that class, even if it had been

previously applied to goods of a different class. But it has been decided that

if a design is really old in its application to some manufactured article, its

application to a new substance will not necessarily entitle it to protection,

although such substance may not fall within the class to which the first article

belongs.

In Re Bach’s Design, 42 Ch. D. 661, 6 RPC 376, a lamp shade in the shape of a

rose, but made in linen, was registered for goods in Class 12; it was held that a

lamp shade of the same shape, but made in china, which had been registered

for goods in Class 14, was not entitled to protection, and it was removed from

the Register accordingly. Although the substances were dissimilar, the shape

was the same, and the articles having that shape were both lamp shades – that

is, they were both of the same kind and used for the same purpose.

Again, in Read and Gresswell’s Design, 42 Ch. D 260, 6 RPC 471, a lamp shade

made of paper, shaped like a chrysanthemum, was registered in Class 5; and a

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similar design for a lamp shade of the same shape was expunged from the

Register, although it was registered for goods in Class 12, and was made of

linen and paper.

In this last case, Mr. Justice Chitty said that “to be capable of being registered,

a design must be new or original in fact, and not, as suggested, new or

original as to some particular class of goods. It cannot be said to be new or

original if it is already being applied to articles of an analogous “character”.

The learned Judge was obviously referring to the classes of goods mentioned

in the schedule to the Designs Rules; and the words referring to articles of an

analogous nature show that the learned Judge did not intend by the words

“new or original in fact” to decide that a design must be new or original in the

sense of never having been seen before as applied to any article whatever.

In Walker, Hunter, and Co. v. Falkirk Iron Company, 4 Patent Cases 390, and the

Hecla Foundry Company v. Falkrik Iron Company, L.R. 14 Appeal Cases 550,

6 RPC 554, a design for the shape of an iron furnace door was protected

although wooden doors of the same shape for sideboards and other articles of

furniture were old. The things shaped were for such different purposes, and

their uses were so dissimilar, that the design for one of such things was held

to be new or original, although it was old for the other.

4.2 Different use of article immaterial for design:

In Stenor v Whitesides (1948) 65 RPC 1 at p.7 (HL) similar issue arose for

consideration and it was held that the claim of a design to novelty or

originality may fail in either of two ways: (i) because there is another article in

the same class to which the shape had been already applied, or (ii) because

the shape has already been applied to another article of an analogous

character even though it is included in a different class. In both cases, the

earlier application must have been published in the United Kingdom. When

the two articles to be compared as embodying the same design are in the

same class, a difference of purpose or use appears to be immaterial. If

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monopoly exists, it is monopoly in respect of features of shape and the like of

which appeal to and are judged solely by the eye, and this excludes the idea

that monopoly is established by considering, within the same class, how far

the use of one article differs from the use of another article with the same

features of shape.

The design registered for fuses intended for use with Vulcanising machines

was held anticipated by the prior use of the same design for bicycle crank

axles and mill rollers which were in the same class as fuses.

In the matter of M/s Brighto AutoIndustries Vs Shri Raj Chawla (ILR 1978 (I)

Delhi) the Hon’ble Court interpreted “New” as under:

‘new’ is taken generally to mean as different to what has gone before and original as something originating from the author. In the matter of novelty the eye has to be the ultimate arbiter and the determination has to rest on the general ocular impression. To secure recognition for its newness or originality it is imperative that a design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infinitesimal variation from a pre-existing design will not qualify it for registration taking into account the nature involved the change introduced should be substantial. It is not necessary to justify registration that the whole of the design should be new, the newness may be confined to only a part of it but that part must be a significant one and it should be potent enough to impart to the whole design a distinct identity, unless the registration sought for the said part alone”.18

4.3 Trade variants not protectable design:

A trade variant is, some embellishment (useful or otherwise) which is known,

and sometimes, though not always, used in connection with a particular class

of article or class of work.

Mere novelty of form or shape is insufficient. Novelty involves the presence

of some element or new position of an old element in combination, different

from anything found in any prior structure. Addition of a curve here or there                                                             18   ILR 1978 (I) Delhi 

23  

in a shape which is well recognised shape of an article of common use in the

market cannot make it an article new or original in design.19

In the matter of Phillips V Harbro Rubber Co. (1919) 36 RPC 79 at P 85(CA)

clearly indicates that it is not open to a manufacturer to bring one or more

important leading features of different articles already present in a market

and by registering a design incorporating merely a combination without any

mental activity by application of mind for its production and acquire

registration of design. The manufacturers who are already manufacturing

those products shall be under pressure of carrying out the business for

unduly registration made and be a subject of monopoly. It would be an

oppressive if any mere change in the outline or pattern of such an article

would justify the registration of design. It will not only hamper the business

activity at large but also preclude others for making such article.20

In Western Engineering Co. ~Vs.~ M/s America Lock Co.21 it was held in this case

that generally the test for novelty and originality was dependent on

determining the type of mental activity involved in conceiving the design in

question. If the design was original, then the designer must have conceived

something new; if the design was a mere trade variation of a previous design,

then the designer could be said to have merely kept an existing design in view

and made some changes in that. It was further held that in order to determine

whether a design was new or original there must be substantial differences

from the designs which were known or had been published prior to the date

of registration, and that what such a substantial difference was, was a

question upon which no general principle could be laid down at all and it

must depend upon the particular fact in each case and further that in one case

a quite small variation in the details of a design might be enough to make the

design something quite different from an existing design. On the other hand,

it was observed, there were cases even where quite large alterations in detail

                                                            19   2004 (28) PTC 1 20   (1919) 36 RPC 79 at P 85(CA) 21   ILR 1973 II Del 177 

24  

leave two designs for all practical purposes of the same and that the Court has

to consider and look at the designs in question with an instructed eye and say

whether there was or was not such a difference between that which has been

published previously and the registered design as to entitle the proprietor of

the registered design to say that at the date of registration there was a new or

original design and therefore properly registered. The Court held that the

design of cycle lock of Western Engineering Company was not new and

original.

In Wingate’s Registered Design Case (1935 (52) RPC 126) the court while

analysing trade variation observed as under:

“......what a substantial difference” is, is a question upon which no general principle can be laid down at all. It must depend on the particular fact in each case. In one case a quite small variation in the details of a design may be enough to make the design something quite different from an existing design. On the other hand, there are cases even where quite large alterations in detail leave two designs for all practical purpose the same. The Court has to consider and look at the designs in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to entitle the proprietor of the registered design to say that at the date of registration that was a new or original design and therefore properly registered.”

In Allen West & Co. Ld. V. British Westing house Electric and Manufacturing

Company Ld. (1916(33) RPC 157) it was observed that there must be, not a

mere novelty of outline, but a substantial novelty in the design having regard

to the nature of the article.

Tiles with sharp edges and corners with mottling design on the top and side

walls were already in vogue and a tile with round corners may look a little

different but will not constitute a new or a different design and will be a

variation of existing design.22

****                                                             22   1986 PTC 50 

25  

CHAPTER V

PUBLICATION

5.0 Publication is not defined in the Act. A design to be registrable under the Act

must not be 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 priority date of the application for design registration.

Therefore, the Act prohibits registration of a design which is prior published

in India or in any other country. Therefore publication must be:

(i) in tangible form i.e. which can be perceived by eyes;

(ii) by way of prior document;

(ii) by way of prior use.

Therefore, to constitute prior disclosure by publication and to destroy the

novelty of the registered design, the publication has to be in tangible form of

the design applied to the same article. If the prior publication of design

applied on different articles the same may not constitute prior publication.

The Hon’ble Supreme Court held that the visual effect and/or appeal of a

pattern embossed into glass-sheets by use of embossing rollers could be

different from the visual effect of the same pattern etched into glass-sheets

manually.23

Prior publication of a trade catalogue, brochure, book, journal, magazine or

newspaper containing photographs or explicit picture illustrations that clearly

depict the application of the design on the same article with the same visual

effect would be sufficient.

Publication has been interpreted by various international judicial

pronouncements as well as by Indian Courts. In the matter of Rotela Auto

                                                            23   2006 (33) PTC 434 

26  

Components (P) Ltd. v. Jaspal Singh.24 It was held that the word ‘published’

used in Section 19 or under Section 4 of the Designs Act has not been defined

under the Designs Act, 2000. It is published if a design is no longer a secret.

There is publication if the design has been disclosed to the public or public

has been put in possession of the design. Russel-Clarke in Copyright in

Industrial Design, 4th Edition, pages 41-42 says that:

“...It is sufficient, and there will be publication if the knowledge was either-

(1) Available to members of the public; or (2) Actually in fact shown and disclosed to some individual member of the public

who was under no obligation to keep it secret.”

It is not necessary design should have been actually used. It will constitute

publication, if it is shown that it was known to the public without ever having

been actually put into use.

Hon’ble Supreme Court of India in Bharat Glass Tube Ltd. V. Gopal Glass

Works Ltd.25 held that the expression “new or original” in Section 4 means

that the design which has been registered has not been published anywhere

or it has been made known to the public. While examining the issue of prior

publication it held that what was published was the design on the roller

which could have been used for bringing a particular design on the glass,

rexin or leather. Thus, the court was of the view that unless design applied to

specific article which has been prior published the same may not constitute

prior publication. The court further observed that no evidence whatsoever

was produced before the Court that the design which was applied for by the

applicant which has been reproduced on the glass-sheet was manufactured

anywhere in the market in India or in United Kingdom. The only evidence

produced was a letter from the German company showing that the roller was

designed in 1992 and was marketed in 1993. There was no evidence to show                                                             24   2002 (24) PTC 449 (Del) 25   2008 (37) PTC 1 

27  

that the design was reproduced on glass-sheet anywhere in Germany. The

design which was registered in the name of Gopal Glass Works was not

published in India or in Germany. Therefore, it was a new and original

design. The website download from the United Kingdom Patent Office also

did not disclose that the published design was applied to glass-sheet. It is

only a design downloaded from the website of Patent Office in UK and it is

not known whether it was reproduced on glass-sheet in UK or not.

Thus, prior publication of a design by prior use can be said to take place when

the design has been applied to articles, and those articles have been used in

such a way that the design becomes disclosed to the public before the date of

application for registration of the design.26

In M/s Domestic Appliances 27 it was held that respondents were

manufacturing the Gas Tandoors prior to the date of design registration and

hence it was held that the design has been prior published.

In Wimco Ltd. V. M/s Meena Match Industries28 after review of evidence on

record it was held that the design given to M/s Wimco was likely to be

cancelled on the ground that it has been published in India prior to date of

registration and the design was not a new or original one.

5.1 Confidential communication does not amount to publication:

The disclosure of the design in confidence does not amount to publication.

The Act duly protects disclosure in confidence. Section 16 of the Act is

reproduced hereinbelow:

“Section 16. Effect of disclosure on copyright. - The disclosure of a design by the proprietor to any other person, in such circumstances as would make it contrary to good faith for that other person to use or publish the design, and the disclosure of a design in breach of faith by any person, other than the

                                                            26  Russell‐Clarke and Howe on Industrial Designs 8th Edition 3‐100 27   1981 PTC 239 28   1983 PTC 373 

28  

proprietor of the design, and the acceptance of a first and confidential order for articles bearing a new or original textile design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance.”

Thus, where the design has been disclosed to a person in confidence the same

would not constitute prior publication of the design and such publication will

not be sufficient to invalidate the copyright in the registered design in

following cases:

i. where the proprietor of the design has disclosed the design to any

other person, in good faith;

ii. where the disclosure of the design has been made in breach of good

faith by any person other than the proprietor of the design; and

iii. the acceptance of a first and confidential order for goods bearing a new

or original textile design intended for registration.

Thus, the confidential communication does not amount to publication. If the

design is disclosed to a person who has interest in the design or to an expert

in the field to ascertain his views on the design, such disclosure is

confidential.

In Kemp & Co. V. Prima Plastics Ltd.29 it was held that the expression

disclosure used in Section 49 (under 1911 Act) when seen in the light of the

facts it would be noticed that the plaintiff has sold the chairs of design i.e.

baby chair with human face prior to its registration as a commercial

proposition. Such commercial sale will not be covered under Section 49 of the

Act. Hence, it would amount to prior publication of design in question.

                                                            29   2000 PTC 96 

29  

Publication of a design, if disclosed to any individual member of the public

who is not under an obligation to keep it secret, would constitute publication

of the design.30

5.2 Exhibition of design does not amount to publication in certain cases: [Section-21]

The exhibition of a design or an article in certain circumstances prior to the

date of application for registration of the design will not invalidate a design if:

(a) exhibition of a design or any article to which the design has been applied,

at an industrial or other exhibition which has been duly notified in official

Gazette by Central Government;

(b) publication of a description of the design during or after the period of the

holding of the exhibition;

(c) the exhibition of the design or the article or the publication of a description

of the design by any person elsewhere during or after the period of the

holding of the exhibition without the privity or consent of the proprietor.

Provided:

(a) the exhibitor exhibiting the design or article or publishing a description of

the design gives to the Controller previous notice in the prescribed Form 9

of Rules 2001 and

(b) the application for registration is made within six months from the date of

first exhibiting the design or article or publishing a description of the

design.

****

                                                            30   AIR 1994 (Del) 309 

30  

CHAPTER VI

REGISTRATION OF DESIGNS

6.0 Who can be the applicant [Section-5(1)]: As per Section 5(1) any person claiming to be the proprietor of any new or

original design may apply for registration.

A proprietor may be from India or from a convention country [Section 44].

6.1 Proprietor of a new or original design [Section-2(i)] Proprietor of a new or original design is defined under Section 2(j)

A proprietor may be:

i. an author of design;

ii. a person for whom the design is executed after receiving the consideration;

iii. a person who has acquired the design; iv. a person on whom the design has devolved from the original

proprietor.

In A. Pressler & Co. v. Gartside & Co.31 registration was obtained in respect of

printed or woven designs on textile piece goods and an action of infringement

was filed. The plaintiff claimed to be the registered proprietor of the design

and hence entitled for an action of infringement against imitation of similar

design by defendant. The defence put forward was that the registration of the

design is invalid on the ground that at the date of its registration it was not

new or original having been previously published, and the author of the

design was not a person in the employment of the plaintiffs, and the plaintiffs

did not acquire the design so as to be entitled to apply for registration as

proprietors within the meaning of Section 93 of The Patents and Designs Acts,

                                                            31  RPC (L) No.7 240 

31  

1907 -1919. Mr. Bailey, who was the managing director of the plaintiff

company, made an ink sketch of a design that he wished to have worked out

and applied to woven goods. He stated that the instructions he gave to the

weaver who was to produce the cloth in accordance with the design were (a)

that the cloth should be of a certain quality and (b) as per previous order,

No.1780 which his firm had already given to the weaver. Having got the

design with no further instructions, the weaver produced some cloth and

submitted it to Mr. Bailey and he was satisfied with it.

The question, therefore, was that whether Mr. Bailey was in those

circumstances the author of the design? The weaver was not given any

particular instructions with regard to any particular way in which the sketch

was to be worked out. In these circumstances, it was held that Mr. Bailey was

the author of the design. The design as registered was something which was

evolved by the weaver of the cloth and not by Mr. Bailey at all. The question

whether Mr. Bailey approved of it or not when it was made, did not make

him the author of the design. If it was not Mr. Bailey’s, then neither Mr.

Bailey nor the Company of which he is managing director was the author

entitled to be registered as the proprietor of the design.

Justice Farwell while deciding the validity of Vredenburg’s registered design

held that if there are two persons each of whom has produced a similar

design and each has communicated the fact of such authorship to the other,

neither of them alone is the proprietor of a new or original design, and neither

of them can validly register it.32

6.2 Where to apply:

A design application for registration can be filed in the Patent Office and shall

be addressed to the Controller of Designs. There is a prescribed form for

filing design application namely Form-1 alongwith the prescribed fee.

[Section 5(2) Form-1] The following details required to be fill-in:

                                                            32  (1935) 52 RPC 7 

32  

• Full Name and Address of the Applicant

• Name of the Article;

• The Class to which the Article belongs as per the III Schedule under

The Designs Rules, 2001;

• Address for service in India;

• Application shall be signed either by the applicant or by his authorised

agent/legal representative, which means a legal practitioner or a

patent agent in India;

• Four copies of representation of the design shall be filed alongwith the

application;

6.3 Representation sheet33 [Section-5, Rule-11, 12 & 14]:

• Representation means the exact representation of the article for which

registration is sought;

• The representation shall be exact drawings, photographs, tracing,

including computer graphics or specimen of designs. Controller may

require a specimen of the article to be submitted at the time of

examination in a particular case;

• Photographs of an article from different view should be pasted on the

representation sheet. Representation shall be prepared on white A4

size paper (210 mm x 296.9 mm) (and not on cardboard) of durable

quality. The figure shall be placed in an upright position on the sheet.

The photograph should show the perspective view, front view, side

view, top view, bottom view etc.;

                                                            33  Manual of Designs Practice & Procedure published by Controller General of Patents, Designs & Trademarks 

33  

• If design is to be applied to a set, the representation shall depict

various arrangements in which the design is to be applied to articles in

the set;

• Where an application is for a design as applied to a set, whether the

given articles constitute a set or not, shall be determined by the

Controller;

• In case, name or representation of living persons appear on a design,

consent of such persons may be submitted along with the application.

In case of a deceased person, the consent of legal representative may be

submitted. It may be noted that non-submission of such consent may

result in office objections and resultant delay in registration. In case,

the representation contains the image or name of an imaginary person,

such fact may be mentioned in the declaration on the representation

sheet;

• A statement of novelty and disclaimer (if any) in respect of mechanical

action, trademark, word, letter, numerals should be endorsed on each

representation sheet. For specimen statements please see Annexure II;

• Representation, which consists of a repeating surface pattern, shall

show the complete pattern, and a sufficient portion of the repeating

pattern in length and width, and shall not be less than 15 cm by 10 cm

in size;

• The name of applicant shall be mentioned in left hand top corner of the

representation sheet;

• Total number of sheets and sheet number shall be mentioned in the

right hand top corner of the representation sheet in Arabic numerals;

34  

• The representation sheet shall be signed and dated by the

applicant/agent;

• No descriptive matter or matter denoting the components by reference

letters/numerals shall be included;

• No sectional views shall be incorporated in the representation sheet;

• Dimensions or engineering symbols etc. shall not be used in the

representation sheet. The representation is not to be regarded as

engineering drawing of the article. The relevant parameter is the shape

and not the size of the article;

• Where Trade Marks, words, letters or numerals are not the essence of

the design, they shall be removed from the representations or

specimens. Where they are essence of the design, a disclaimer shall be

given in the representation sheet disclaiming any right to their

exclusive use;

• No extraneous matter or background shall appear in the representation

sheet. A background is considered neutral as long as the design is

clearly visible in it;

• Dotted lines may be used in representation to indicate those elements

of the article for which no protection is sought. Dotted lines identify

elements which are not part of the claimed design. In such a case,

features of design for which protection is sought must be shown in

solid lines in the drawing. For instance, an ornamentation or surface

pattern on an article can be registered. In such a case, the

representation shall contain a solid line drawing for the claimed

ornamentation or surface pattern, and dotted line for rest of the article;

35  

• When colour combination is the essence of a design as applied to an

article, the same shall be clearly depicted in the representation;

• Colouring may be used, on a black and white drawing, to highlight

only those features of the design for which protection is sought. In such

cases, it shall be clearly indicated in the novelty statement that the

claim is restricted only to the portions depicted by colouring and the

colours so given are not part of the design;

• Representations shall ordinarily be prepared in one format e.g.

drawings, graphics or photographs etc. However, for better clarity, if

the applicant so desires, a representation may be given in different

formats;

• The applicant shall keep in mind the requirements of an Examiner to

visualize the design and distinguish the same from any probable prior

art. The number of views required in a representation sheet may be

decided in light of this requirement.

6.4 Separate Application is required to be filed for registering a design in more

than one class. [Section 5(3)]

6.5 Classification:

For the purpose of application for registration of designs, articles are

classified into 32 Classes which includes a miscellaneous class 99. The Classes

are described in Third Schedule to The Designs Rules, 2001. In case of any

doubt as to the Class in which the article would fall, the Controller will decide

the question. Where a design application is for an article with multiple

utilities, the application may be made with depiction of an article in any one

or more of the utility. For instance, in case of a design of pen-cum-torch, the

applicant is at liberty to apply in the class relating to pen, torch, pen-torch and

file two applications in different classes for better protection.

36  

6.6 Statement of novelty: [Rule 12]

The applicant may endorse on the application and each of the representation,

a brief statement of the novelty he claims for his design.

The Controller may also in some cases ask the applicant to provide a

statement of novelty claimed on the representation sheet. Some of the

examples of novelty endorsed are as under:

• The novelty resides in the ornamental surface pattern of the bottle as

depicted;

• The novelty resides in the butterfly knob of the Casserole;

• The novelty resides in the shape of the ash-tray etc.

If in a design registration no claim or statement of novelty is specifically

stated the registration will cover the whole of the design and no exclusive

right could be claimed in any individual part, shape or pattern.

6.7 Types of applications:

• Ordinary Application - An application which does not claim priority.

Thus, the application is filed for in India first. [Section 5]

• Reciprocity Application – An application which claims priority from an

application already filed in a Convention Country and being filed in

India within six months from the date of filing in Convention Country.

The period of six months is non-extendable. [Section 44, Rule 2(d)]

The requirement for filing of application for registration of reciprocity

application is the same as an ordinary application under the Act except for the

following requirement [Rule 15]:

37  

• Priority document: A reciprocity application shall be accompanied by

a certified copy of the design application filed in the Convention

Country.

• If the priority document was not filed with the application, the same

may be filed within an extendable period of three months. Extension

may be sought by filing Form 18 alongwith prescribed fee.

Advantage & disadvantage of reciprocity application:

The benefit of reciprocity application is that the registration of the said design

under this Act will be in priority to other applications and will have the same

date as the date of application in any other Convention Countries.

The disadvantage is that the proprietor of the design will not be entitled to

recover damages for piracy of design happening prior to the actual date on

which the design is registered in India.

6.8 Examination, objection, acceptance, registration & publication:

6.8.1 Examination:

• Once the application for registration of a design is filed, the same will

be examined by an Examiner for satisfaction of formal requirement, as

per the provisions of the Act and the Rules [Section 5(1)];

• The Examiner conducts a novelty search, classwise or articlewise in the

data base available with it to ascertain that there is no prior publication

and the design applied is novel, subject matter of application

[Section 4 & 5];

• Upon examination, if it is found that the design applied for is already

registered by some other person in respect of some other article, the

design under consideration may be registered only if:

the applicant becomes registered proprietor of the already

registered design but the term of the design under consideration

38  

shall not extend beyond the period of already registered design

[Section 6(3)]

• Where any person makes an application for registration of a design in

respect of any article and either:

(i) That design has been previously registered by other person in

respect of some other article, or

(ii) The design to which the application relates consists of a design

previously registered by other person in respect of the same or

some other article with modifications or variations not sufficient

to alter the character or substantially to affect the identity

thereof.

In that case, if during the pendency of the application, the applicant becomes

the proprietor of the previously registered design, the application shall not be

refused on the ground:

That the design is not new or original being prior registered or being prior

published. [Section 6(4)]

While examining the application, the Examiner also considers other criteria of

registrability as per the Act and Rules including scandalous matter, public

order and morality, security of India etc.

6.8.2 Objection:

Communication:

The Controller considers the report of Examiner on registrability of design

and upon consideration if there are objections, the communication is made to

39  

the applicant. In case of objection pertaining to ground of novelty the specific

prior art is cited with the objection.

If the applicant fails to apply for a hearing within three months from the date

of communication of statement of objections, the application shall be deemed

to be withdrawn.

Removal of objection:

The period for removal of objection shall not exceed the time period of six

months from the date of filing of application which is extendable for a further

period of three months provided a request is made on Form 18 prior to expiry

of six months.

Hearing fixed if response not to the satisfaction of Controller:

On consideration of the response of the applicant, if the Controller is of the

opinion that the requirements of Acts and the Rules have not been met, the

same shall be communicated to the applicant and the hearing should be fixed.

Refusal if hearing not attended:

If, on the date of hearing the applicant does not appear and there is no request

for adjournment the application shall be refused with a speaking order.

Acceptance if compliance made:

If the applicant complies with all the requirements laid down under the Act

and Rules the application shall be registered forthwith.

6.8.3 Acceptance:

If the application is found to be in order and satisfied the requirements of the

Act and the Rules, the Controller will accept the application and register it

forthwith.

6.8.4 Registration:

40  

Once an application is registered, the Controller will issue a certificate of

registration of the design.

Date of registration:

i. For an ordinary application: The date of registration will be the date of

filing of application. [Section 5(6)]

ii. For reciprocity application: The date of registration is the date of filing

of application in the Convention Country.

Certificate of registration:

Upon registration the certificate of registration will be issued by the

Controller and will be sent to the applicant by registered post to the address

for service provided in the application [Section 9]

6.8.5 Publication:

Once an application is registered, it is published in the Patent Office Journal

ordinarily within one month. The registration number is the same as

application number [Section 7]

6.9 Term of registration and extension:[Section 11, Rule 23]

The maximum period of protection for a registered design is 15 years.

Registration of design will be valid for ten years at the first place from the

date of registration which is the date of filing the application.

This period of protection can be extended by five years.

If the applicant desires to extend the period of registration for another five

years, is required to file an application on the prescribed form accompanied

with prescribed fee. [Rule 23]

6.10 Restoration of lapsed design:[Section 12, 13, Rule 24 & 25]

41  

If the design is expired after initial period of protection of ten years, the

proprietor or legal representative of the design may, within one year from the

date on which the design seized to have effect, make an application for

restoration of design in prescribed manner on payment of prescribed fee.

The application should be accompanied with the statement of case setting out

the circumstances leading to failure of renewal and payment of prescribed fee.

The Controller if satisfied that the failure to pay the fee was unintentional and

there has been no undue delay in making the application for restoration, the

Controller will upon payment of any unpaid fee for extension of period

together with prescribed additional fee may restore the registration of a

lapsed design.

The Controller may also put conditions if the need be.

The Controller shall advertise in the official Gazette his decision on the

application for restoration.

6.11 Rights of proprietor of lapsed design:[Section 14]

No suit or other proceedings should be commenced in respect of a case of

design infringement in the design during the period of lapsed registration.

The right of the registered proprietor shall be subject to such provisions as

may be prescribed and to such other provisions as the Controller thinks fit to

impose for the protection and compensation of the persons who may have

started to apply the design during the lapsed period.

6.12 Effect of expiry of registration:

The design registered goes into public domain and becomes a public property

after the expiry of registration. Anybody or everybody is entitled to use and

apply the same on an article even for which it was registered.

****

42  

CHAPTER VII

CANCELLATION OF REGISTRATION

7.0 The Act prescribes the procedure and grounds for cancellation of design

registration. Section 19 of the Act deals with cancellation. Section 19 is

reproduced hereinbelow:

19. Cancellation of registration: (1) Any person interested may present a petition for the cancellation of the registration of a design at anytime after the registration of the design, to the Controller on any of the following grounds, namely:-

(a) that the design has been previously registered in India; or

(b) that it has been published in India or in any other country prior to the date of registration; or

(c) that the design is not a new or original design; or

(d) that the design is not registrable under this Act; or

(e) that it is not a design as defined under clause (d) of section 2.

(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.

Therefore, any ‘person interested’ in cancellation of design may file a

cancellation petition anytime on the following grounds that the design is :

• Previously registered in India;

• Previously published in India or foreign country;

• Lacks novelty or originality;

• Not a registrable design; and

• Not a design as per the Act.

43  

7.1 Procedure prescribed for cancellation [Rule 29]:

• The petition for cancellation shall be accompanied by a statement of

facts including the statement as to how the petitioner is person

interested and evidence setting out the facts based upon which the

petition is filed;

• On receipt of a petition for cancellation, the Controller shall send a

copy of the petition along with statement and evidence to the

registered proprietor at the earliest;

• The registered proprietor may file counter statement and evidence

with an advance copy to the Petitioner, if any, setting out fully the

grounds up on which he intends to oppose the petition, within one

month which is extendable by a maximum of three months, by filing a

petition for extension with the required fee;

• The petitioner may file his reply statement and evidence, by way of

affidavits by serving an advance copy to the registered proprietor,

within one month which is extendable by a maximum of three months,

by filing a petition for extension with the required fee;

• No further evidence shall be delivered by either party, except with the

leave or direction of Controller;

• After completion of the filing of statement and evidence by the

Petitioner and Registered Proprietor, the Controller shall give at least

ten days‘ notice for hearing;

• On receipt of the notice of hearing, if either party desires to be heard, a

notice of intention to attend the hearing shall be filed in Form 20;

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• The Controller may refuse to hear any party which has not given such

notice and fee;

• After hearing the parties, the Controller shall decide the petition and

issue a speaking order. The decision of Controller shall be notified to

the parties and shall be published in the Official Journal;

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45  

CHAPTER VIII

REGISTER OF DESIGNS & RECTIFICATION OF REGISTER

8.0 REGISTER OF DESIGN: [Section 10]

The register of design shall be prima facie evidence of any matter by this Act

directed or authorised to be entered therein.

Register of designs is maintained at the Patent Office wherein the entries

regarding each registered designs such as name and address of the proprietor,

notifications of assignments and transmission of registered design, any such

other matter as may be prescribed are maintained. Such register may be

maintained wholly or partly on computer floppies or disks or subject to such

safeguards as may be prescribed.

8.1 Rectification of register [Section 31, Form 17, Rule 39, Form 19, Rule 40]:

Any person aggrieved may file an application before the Controller for

rectification of register and for orders making, expunging or varying such

entry as he thinks fit and rectify the register on the following grounds:

i. non-insertion or omission of an entry;

ii. entry made without sufficient cause;

iii. entry wrongly remaining on the register;

iv. error or defect in any entry.

However, the rectification does not include cancellation of a design which is

provided for in Section 19 of the Act.

8.2 Procedure for rectification On receipt of an application for rectification:

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• the Controller shall notify all persons, whose names are entered in the

register;

• rectification application shall be published in the Patent Office Journal;

• notice of opposition may be filed by any person having interest in the

registered design to the application for rectification within three

months from the date of such publication;

• a written statement and evidence shall be filed by the opponent within

fourteen days of giving notice of opposition;

• the Controller shall forward a copy of the notice of opposition along

with the written statement and evidence to the applicant for

rectification within fifteen days of the receipt of statement and

evidence;

• a counter statement and evidence shall be filed by the applicant within

one month from the date of intimation by the Controller with an

advance copy to the opponent. The period of one month is extendable

by the Controller up to a maximum of three months;

• a reply statement and evidence may be filed by the opponent within

one month from the date of delivery of the registered proprietor‘s

counter statement and evidence with an advance copy to the applicant.

The period of one month is extendable by the Controller up to a

maximum of three months;

• no further evidence shall be delivered by either party, except with the

leave or direction of Controller;

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• after completion of the filing of statement and evidence by the

opponent and applicant, the Controller shall give at least ten days‘

advance notice of hearing to the parties;

• on receipt of the notice of hearing, if either party desires to be heard, a

notice of intention to attend the hearing shall be filed in Form 20 along

with the prescribed fee;

• the Controller may refuse to hear any party which has not given such

notice and fee;

• after hearing, the Controller shall decide the application for

rectification and issue a speaking order. The decision of Controller

shall be notified to the parties and shall be published in the Official

Journal.

8.3 Appeal:

An appeal shall lie to the High Court from any order of the Controller and

Controller may refer application for rectification to the High Court for

decision and the High Court shall dispose off such referred application.

The appeal shall be made within three months of the date of order passed by

the Controller. In calculating the said order of three months, the time if any,

occupied in granting a copy of the order appealed against shall be excluded.

[Section 36]

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CHAPTER IX

TRANSFER OF RIGHTS & LICENCES

9.0 Assignment, Transmission, Licenses etc. [Section 30]

9.1 A person may become entitled to the copyright in a registered design by

assignments, transmission or other operation of law by making an application

in the prescribed form to the Controller to register his title. The Controller

shall, on receipt of such application and on proof of title to his satisfaction

register him as the proprietor of such design and shall cause necessary entry

in the register. [Section 30(1)]

Therefore, the registered proprietor of the copyright in a registered design has

power to assign, transmit its right to any other person and that person may

become entitled to copyright in a registered design on account of assignment,

transmission or operation of law.

As per Section 30(2) of the Act, a person may also become entitled to any

interest in a registered design on account of mortgage, license or otherwise

and he can make an application in a prescribed form to the Controller and

necessary entry will be made on verification of the document and on proof of

title to the satisfaction of Controller.

9.2 Assignment must be in writing:

As per Section 30(3) of the Act the assignment of a design or of a share in a

design, a mortgage, license or creation of any other interest in a design shall

not be valid unless the same were reduced in writing in the form of an

instrument embodying the terms and conditions covering their right and

obligations. An application for registration of title under such instrument

should be filed in the prescribed manner with the Controller within six

months from the execution of the instrument. The Controller may extend this

period to a maximum of another six months on application made for the same

in the prescribed manner.

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9.3 Effective date of assignment:

Upon entry of the particulars in the register of design, the instrument shall be

effective from the date of its execution.

9.4 Registered proprietor has an absolute right to assign as any other movable

property:

As per Section 30(4) the person registered as the proprietor of a design has

absolute power to assign or grant license or otherwise deal with the design

and to give effectual receipts for any consideration for any such assignment,

license or dealing. This right is subject to the provisions of the Act and to any

rights appearing from the register to be vested in any other person. Any

equity in respect of the design may be enforced in like manner as in respect of

any other movable property.

9.5 Unregistered assignment – not enforceable:

As per Section 30(5) an instrument which has not been registered, shall not

ordinarily be admissible in any court as evidence (except for the purpose of

rectification proceedings) unless the court otherwise directs.

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50  

CHAPTER X

RIGHTS CONFERRED BY REGISTRATION

10.0 Right of registered proprietor - Copyright in registered design:

As per Section 11 of the Act the registered proprietor of a design has the

copyright in the design. The copyright is defined in Section 2(c) which is

reproduced hereinbelow:

“copyright” means the exclusive right to apply a design to any article in any class in which the design is registered.

Therefore, the proprietor of a design gets exclusive right to apply the design

to an article in which the design is registered. The term of this copyright is 10

years in the first instance which can be extended by another 5 years on

payment of prescribed fee.

10.1 Right to institute a suit for injunction [Section 22]:

A registered proprietor can institute a suit for injunction as well as recovery of

damages against any person engaged in piracy of the registered design. Such

legal proceedings can be instituted from the date of registration till the

subsistence of copyright in the design.

However, in case of reciprocity application, the registered proprietor can

claim damages only from the actual date on which the design is registered in

India. [Section 44]

10.2 Government bound to honour the copyright in the design:

A registered design shall have to all intents the like effect as against the

Government as it has against any other person. However, as in case of

patents, the Central Government has the power to use a registered design for

purposes of Government and to acquire a registered design for public

purpose. [Section 20 & Chapter XVII of The Patents Act].

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10.3 Provisions of Copyright Act as applied to a design [Section 15 of The Copyright Act]:

    Section 15 of the Copyright Act is reproduced hereinbelow: 

  15.  Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911 – (1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911

(2)Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person.

As evident, copyright shall not subsist under The Copyright Act in any design

which is registered under The Designs Act. A design registrable under The

Designs Act but has not so registered, would continue to enjoy copyright

protection under the Act so long as the threshold limit of its application on

any article by an industrial process for more than 50 times is reached. Once

the limit is crossed, it would lose its copyright protection under the Copyright

Act.

A Division Bench of Delhi High Court in Microfiber case34 discussed in detail

the objective and scope of Section 15 of The Copyright Act.

“The definition of ‘artistic work’ has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. It may be two dimensional or three dimensional. The artistic work may or may not have visual appeal.

(a) The rights to which a holder of an original artistic work is entitled are enumerated in Section 14(c) of the Copyright Act.

(b) It is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. For example, a drawing of an imaginary futuristic automobile, which is an original artistic work,

                                                            34   2009 (40) PTC 519 Del 

52  

may be reproduced in the three-dimensional material form sing an element, such as a metal sheet.

(c) The design protection in case of registered works under the Designs Act

cannot be extended to include the copyright protection to the works which were industrially produced.

(d) A perusal of the Copyright Act and the Designs Act and indeed the

Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc. and lesser protection to design activity which is commercial in nature. The legislative intent is, thus, clear that the protection accorded to a work which is commercial in nature is lesser than and not to be equated with the protection granted to a work of pure art.

(e) The original paintings/artistic works which may be used to industrially

produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright protection as evident from the definition of the design under Section 2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant.

(f) This is precisely why the legislature not only limited the protection by

mandating that the copyright shall cease under the Copyright Act in a registered design but in addition, also deprived copyright protection to designs capable of being registered under the Designs Act, but not registered, as soon as the concerned design had been applied more than 50 times by industrial process by the owner of the copyright or his license.

(g) In the original work of art, copyright would exist and the author/holder

would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work per se.

(h) If the design is registered under the Designs Act, the Design would lose its

copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation

53  

would harmonize the Copyright and the Designs Act in accordance with the legislative intent.”

****

54  

CHAPTER XI

INFRINGEMENT OF COPYRIGHT IN A DESIGN:

11.0 What constitutes infringement:

During the subsistence of a copyright in a registered design it is not lawful for

any person to do the following acts [Section 22(1)]:

a) To apply or caused to be applied to any article in any class of articles in

which the design is registered or fraudulent or obvious imitation thereof

or to do anything with a view to enable the design so applied for the

purpose of sale without the written consent or license from the registered

proprietor; or

b) To import for the purpose of sale without the consent of 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

c) To publish or expose or caused to be published or exposed for sale any

article covered by the registration to which the design or any fraudulent

obvious imitation thereof has been applied knowing that such application

has been made without the consent of the registered proprietor.

Therefore, for initiating an infringement action the following facts should be

established:

• The copyright in the design subsists;

• The pirated article is a fraudulent and obvious imitation of registered

design and is covered under the description of articles in the

registration;

• The design applied on the pirated article is without the written consent

or license from the registered proprietor;

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• The piracy has been done for the purposes of sale, import or publishing

the article for commercial gains.

11.1 Fraudulent or obvious imitation – meaning and scope:

11.1.1 Fraudulent:

When the imitation of the registered design is with knowledge and sole intent

to cause confusion and deception amongst the consumers for unlawful gain,

the imitation is called fraudulent. If the fraudulent conduct is established the

court will take a stricter view and approach because the imitation is

deliberate.

“...fraudulent imitation seems to me to be an imitation which is based upon, the deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement”.[Dunlop Rubber Co. Ltd. V. Gold Ball Developments]

However, for establishing piracy the imitation of the registered design must

be established. The imitation ought to be substantial and the imitated article

should appear substantially similar to genuine article. The test of

determining whether the design is an imitation is judged by the eye of

consumers.

11.1.2 Obvious:

Obvious means something which as soon as you look at it, strike one at once

as being so like the original design, the registered design, as to be almost

unmistakable. I think an obvious imitation is something which is very close

to the original design, the resemblance to the original design being

immediately apparent to the eye looking the two. Dunlop Rubber Co. v. Golf

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Ball Development (1931) 48 RPC at p. 279 followed in Castrol India v. Tide Water

Oil Co. (1996) PTC 202 at p. 209.

The Division Bench of Delhi High Court in Dabur India Ltd. V. Amit Jain35 held

that the defendants have copied the bottle and cap design of the plaintiff and

the imitation is fraudulent and obvious. While dealing with the case the court

also relied upon the various judgments to hold that the similarity need not be

necessary to be exact but the test is of substantial similarity. The relevant

paragraphs dealing with such judgements are reproduced herewin below:

“17. The law in regard to similarity which constitutes infringement and which in turn attracts an order of injunction has been explained by this Court in Alert India Ltd. (supra). Reference in the said case has been made to an earlier decision in J.N. Electricals (India) v. President Electricals, ILR 1980 (1) Delhi 215 where it was explained that “the sameness” of features does not necessarily mean that the two designs must be identical on all points and should differ on none. They have to be substantially the same. In Alert India Ltd. it was held as under:

36. Thus for determining whether two designs are identical or not, it is not necessary that the two designs should be exactly the same. The main consideration to be applied is whether the broad features of shape, configuration, pattern etc. are same or nearly the same and if they are substantially the same then it will be a case of imitation of the design of one by the others.

18. Likewise in Castrol India Ltd. the Calcutta High Court explained that “the word ‘imitation’ does not mean ‘duplication’ in the sense that the copy complained of need not be an exact replica. “Reference was made to the earlier decision of the said High Court in Best Products Ltd. v. F.S. Woolworth & Company Ltd., 1964 RPC where it was held that “it is the article as a totality that must be compared and contrasted with the features of a shape and configuration shown in the totality observable from the representation of the design as registered. It was said that the Court must address its mind as to whether the design adopted by the defendants was substantially different from the design which was registered. “The decision in Dunlop rubber Co. Ltd. v. Golf Ball Developments Ltd., (1931) XLVIII RPC 268 is also a pointer to the approach to be adopted by the Court when a complaint is made by a Plaintiff of fraudulent imitation of its design by a

                                                            35   2009 (39) PTC 104 

57  

Defendant. It was observed “a fraudulent imitation seems to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement.”

As explained in Hindustan Sanitaryware if the Court is able to find that, “there is substantial and sufficient resemblance between the allegedly infringed designs and the Appellant’s registered designs, an injunction should follow.

Therefore, obvious imitation means that there is a substantial similarity

between the original and pirated design.

11.2 To constitute infringement, the court is to judge the similarity or difference through the eye alone:

To establish the question of substantial similarity or substantial difference of

genuine and pirated design article, the court is entitled to look at the

specimen of the article. It is the eye alone of the court which with the

perspective of the consumers and traders will decide such question. In

Dunlop Rubber Co. v. Golf Ball Developments Ltd. Farewell J observed as under:

“Now in a case where the registered design is made up of a pattern which has no striking feature in it, but it appeals to the eye as a whole, it may very well be that another design may be that is so; but I think conversely it is true to say that, if a design has in it a striking feature which catches and holds the eye, and which is the one thing that strikes the eye when one looks at the design, a design which otherwise may be like a registered design but which eliminates the striking feature or alters it so that it is not recognisable, in such a case it seems to me it is impossible to say that one is an imitation of the other.”

11.3 Side by side comparison is not the test:

To constitute infringement the only test is of substantial similarity. The side by

side comparison to find out the differences is not the test. Further, imitation of

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a single novel feature in a design may make the pirated design substantially

similar and in that case side by side comparison to find out the differences

between the two designs is not permissible.

11.4 Confusion or deception is not necessary:

To constitute infringement of design, it is not necessary to prove confusion or

deception. Such test is appropriate where the petitioner pleads passing off. In

case of infringement of design, the question is not whether the similarity has or

is likely to cause confusion or deception of a purchaser but whether the

similarity is an imitation of the registered design sufficient to destroy the

exclusive right of user of the proprietor despite the fact that no confusion is or

may be caused as to the source of the goods. Otherwise, every registered

design could be imitated with impunity merely by changing the colour of the

two products thus obviating any confusion.36

11.5 Infringement of design in cases where three dimensional representation is

done of a two dimensional design:

If a design is registered in two dimension, a representation of the same in three

dimension would constitute infringement and the defence that the registration

is for two dimension and not for three dimension will not exonerate the person

from the liability of committing an infringement.

In Puneet Industrial Controls V. Aditya Enterprises37 the defendant was hold

to be committing infringement since he manufacture the product using the

plaintiff’s drawing without obtaining plaintiff’s consent. The defendant failed

to establish that the product could have been made without using the plaintiff’s

drawings.

                                                            36  1996 PTC 16 37  1999 PTC 311 

59  

11.6 Remedies against infringement [Section 22(2)]:

Damages or compensation where a person is guilty of piracy as per Section 22

of the Act he shall be liable for every contravention of the section to pay the

registered proprietor of the design a sum not exceeding Rs.25,000/- recoverable

as a contract debt.

If the registered proprietor of the design files a suit for infringement and

recovery of damages for any contravention, the court may restrain the

infringer/pirator and award such damages as it deems appropriate. The

assessment of the damages by the court depends upon various factors such as

the conduct of the defendant, the royalty which the plaintiff is receiving from

others, the quantum of infringing goods seized from the premises of the

defendant etc.

11.7 Defences available to the defendant [Section 22(3)]:

In a suit or any other proceeding the defendant can raise every ground on

which the registration of a design may be cancelled under Section 19 of the Act.

Meaning thereby the defendant in a suit proceeding can raise the issue of

novelty, prior publication, prior registration, mere trade variant, lacking

originality, not a registrable design etc. and the court will deal with the issues

raised by the defendant on the basis of evidence produced by the parties. The

court is also empowered to pass a judgment invalidating or upholding the

validity of the design of the plaintiff.

11.8 Entry of decree passed by the court in design register [Section 22(5)]:

Every decree which is passed by the court in a suit for injunction and damages,

will be sent to the Controller for making the entry thereof in the register as per

Section 22(5) of the Act.

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11.9 Action for groundless threat [Section 23]:

Section 23 of the Act provides that so far as the groundless threat of the legal

proceeding is concerned for the registered designs, the provisions of Section

106 of The Patent Act, 1970 will apply in like manner as they apply to in the

case of patents.

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61  

CHAPTER XII POWERS AND DUTIES OF THE CONTROLLER

12.0 Power of a Civil Court [Section 32]:

In any proceedings before the Controller under this Act, the Controller has

the powers of a civil court for the purpose of:

• receiving evidence;

• administering oaths;

• enforcing the attendance of witnesses;

• proceedings compelling the discovery and production of documents;

• issuing commissions for the examining of witnesses; and

• awarding costs, such award being executable as a decree of a Civil

Court.

12.1 Exercise of discretionary power [Section 33, Rule 44]

• Principle of natural justice to be followed while exercising any

discretionary power by the Controller. Before acting adverse to any

party, the Controller shall give an opportunity of being heard to the

party with at least ten days notice.

• Every order should be a reasoned and speaking order.

12.2 Power to seek direction of Central Government [Section 34]: In case of any doubt or difficulty arising in the administration or provisions of

this Act, the Controller may seek directions of Central Government in the

matter

12.3 Power to correct clerical errors [Section 29]:

On a request made in Form 14 alongwith requisite fee, the Controller may

correct any clerical error in the representation of a design or in the name or

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address of the proprietor of any design or in any other matter which is entered

upon the register.

12.4 General Power of amendment [Rule 46]:

The Controller has power to amend any document or correct any irregularity in

procedure without detriment to the interest of any person upon such terms as

he deems fit and may direct.

12.5 General Powers to grant extension of time [Rule 47]:

The Controller may extend the time prescribed by the Rules for doing any act

or taking any proceeding subject to maximum period prescribed under the

Rules. Where time limit is prescribed in the Act, the Controller has no power to

extend the time.

-.-.-.-.-.-.-.-.-.-.-