Law
Intellectual Property
Fundamentals of the Law Pertaining to Industrial Designs
Development Team
Role Name Affiliation
Principal Investigator Professor (Dr.) Ranbir Singh Vice Chancellor, National Law University, Delhi
Paper Coordinator Mr. Yogesh Pai Assistant Professor of
Law, National Law University, Delhi
Content Writer (CW) Ms. Sunita Tripathy Assistant Professor, Jindal Global Law School Content Reviewer (CR) Mr. Yogesh Pai Assistant Professor of
Law, National Law University, Delhi
2 Module Detail
Subject name Law
Paper name Intellectual Property
Module name/ Title Fundamentals of the Law Pertaining to Industrial Designs
Module Id Law/IP/#20
Pre- requisites General principles of Intellectual Property Law; types of IPRs; economics of IPRs; justifications for IPRs
Objectives 1. Offers an introduction to the study of law of designs as specie of Intellectual Property Law (IP).
2. To familiarize students with the fundamental concepts of the law of design and relevant legal provisions and case law.
Key words Design, visual appeal, shape, configuration, pattern, ornament; industrial designs; functional designs
3 Introduction
This module aims to familiarize students with the Design Act 2000, and traverse the interesting concepts pertaining to protection of design as an intellectual property.
The content comprises of the following: Justification for protecting designs, the subject matter of design law, definition of design under the Design Act 2000, excluded subject matter (what is not protected as design), infringement, prohibition of registration of certain design, defences, remedies and important case law
The following sections describe the fundamental tenets pertaining to the law of designs in India.
1. Justification for protecting designs -
The marketability of any article or good is also dependent on the visual appeal in addition to its utility. Therefore design of an article and even design of the overall packaging of the article is very important from a commercial point of view.The law of design in India incentivises creative packaging by according protection for copyright in such designs, for a term of 10 years from the date of registration which can be renewed for a period of 5 years.1 Therefore, the maximum period for protection of design right is 15 years.When a
1S. 11 of the Designs Act 2000 lays down the term of protection as -- Copyright on registration. — (1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.(2) If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the
Learning Outcome:
1. To familiarise with the fundamental concepts pertaining to the law of design.
2. To understand the contradictions and tensions between protection and creation of design as an intellectual property.
3. To conduct case law analysis, i.e. identify and understand the legal principles and policies supporting the relevant decisions pertaining to the law of design.
4 design is registered, the registered proprietor of the design shall enjoy a right to exclusive use of the design and a corresponding right to protect the design from piracy.
(i) ‘Design’ needs to be protected. All the shapes, configurations, patterns, ornamentation etcetra are the output of human intellectual effort. Much thought, time and expense may have been incurred in finding a design which could increase sales and marketability of a product. Therefore, this specie of intellectual property confers an exclusive right for a maximum period of 15 years on the proprietor of the design.
(ii) Subject matter of design law - the subject matter which is protected by design system is the application of the design to article. Two characteristics of design law are:
a. Visual aspect – This has an important impact on the types of subject matter protected as registered designs.
b. Articles – The protection given only to design which is applied to articles. This means that garden design, urban planning and architectural design etcetra have been excluded from the scope of design protection.
The Supreme Court of India in the matter of Bharat Glass Tube Ltd. v. Gopal Gas Works.,2 defines the object and purpose of the Designs Act, 2000 as to protect the IPR of original design with the aim to reward the innovator for research and labour applied to evolve a new and original design. The Court emphasises that the protection given with respect to designs “is primarily to advance industries and to keep them in high level of competitive progress.”Unlike patents, industrial designs do not have high social costs as it does not offer the proprietor a monopoly rights in the relevant market; but can be utilised to enhance the visual appeal of goods in different classes as well. Hereinafter the statutory provisions and the relevant procedural and substantive aspects alongwith the important principles culled out by the Judiciary in the case law is discussed.
2. Definition of design - Section 2 (d) of the Designs Act, 2000
The term ‘design’ has been defined to mean only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or 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 S.2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958)3 or property mark as defined in
period of copyright for a second period of five years from the expiration of the original period of ten years.
2AIR 2008 SC 2520.
3See, the Trade Marks Act, 1999 (47 of 1999).
5 S.479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of S.2 of the Copyright Act,1957 (14 of 1957).
To simplify, the design features must be capable of having separate existence from the article.
There are three main components of this definition. The first is that of visual character and appeal to the eye and non-functionality. The second is that of application by any industrial process or means. The third is that of the exclusion of trademarks and artistic works.
The words, “shape, configuration, pattern or ornament” are not defined in the Act. It is generally accepted that ‘shape’ and ‘configuration’ refer primarily to the three dimensional aspect of an article, such as the shape in which a chair is made. Also ‘pattern’ and ‘ornamentation’
refer primarily to two dimensional aspects, namely things that are added to or placed on the surface of an article, such as the pattern applied to wall paper or carpet. Colour and texture may also be brought within the concept of pattern or ornamentation.A combination of one or more such features is also protected as subject-matter of the law of design. The word ‘shape’ indicates the external form of the article. The word ‘configuration’ refers to the arrangement by which the shape of a composite article is arrived at.
Design is not registered in the abstract. They are registered as features which are applied to an article. It is a conception, suggestion, or idea, and not an article.4In general any application for registration must be accompanied by a representation of the design; that is something in the nature of a drawing or tracing, by means of which the conception or suggestion constituting the design may be imparted to others.5The essence of design law is that a design consists of visual features which are applicable to an article. The new or original combination and arrangement of lines, stripes or a pattern on the border of the shawl has been held to constitute design.6To be applicable to an article means that the design must be distinct from the article to which it is applied, so that, even without the design, the article would retain its essential character.
‘Article’ means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article being made and sold separately. The article must have its existence independent of the design applied to it. The design must be applicable to an ‘article of manufacture.’7 Thus it means that designs for buildings and structures will not be registrable.If the design is applied to the part of an article, the part must be for an article which is ‘made and sold separately.’8 The phrase ‘made and sold
4See, Rotela Auto Components (P) Ltd v. Jaspal Singh (2002) 24 PTC 449 (Del) at p. 461; Niki Tasha P Ltd v. Faridabad Gas Gadgets P Ltd., AIR 1985Del 136;Dover Ltd v.
NurnbergerCelluloidwarenFabrikGebruder Wolff., 1910 (Supp) RPC 498.
5Pugh v. Reley Cycle Co Ltd., (1912) 29 RPC 196.
6The Wimco Ltd v. Meena Match Industries, AIR 1983 Delhi 537.
7Bharat Glass Tube Ltd v. Gopal Glass Works Ltd (2008) 37 PTC 1 (SC), p. 15.
8S. 2(a) of the Designs Act, 2000 states that an “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.
6 separately’ was considered by the House of Lords in R v. RDAT,9when it was held that in deciding whether an article was ‘made and sold separately’ it was irrelevant that the part were, in fact manufactured, stocked and retailed separately.
‘Appeal to and judged solely by the eye’ – the appeal must be such that it attracts the attention of the consumer towards the article. The design must be judged not by objective measurement or scientific evidence but by a visual comparison of previously existing shape, configuration, pattern or ornament. Lord Morris in the matter of Amp Inc v.
Utilux10observed that the definition of design in the UK Designs Act 1946, could be more expansive by including “[c]ertain features either of a shape or of configuration or pattern or ornament. These features must be applied to an article. They must be applied to it by some industrial process of means. There will then be a finished article. The features must be such that in the finished article they must appeal to and judged solely by the eye. It follows that in the finished article they must atleast be noticeable.11
Notably, the earlier definition of design under the Designs Act 1911 was narrower; whereas the definition of design under the Designs Act 2000 includes ‘composition of lines’ and the applicability of design to an article in two dimensional or three dimensional or in both the forms.
3. What are not protected as Design –
In the Wingate’s Registered Designcase,12 Farwell, J has clarified the intention of the Legislature in defining what is excluded from the scope of design protection in the following manner:
The intention of the legislature was to ensure so far as possible that only that which was in fact a design itself that is in the appeal to the eye should come within the Act. But, by that, I do not mean that because a design, being in fact a design, and being new and original qua design, is something which makes an appeal to the eye, and is new or original, it is properly a subject-matter of registration, notwithstanding that it also involves a method of construction which may be entitled to protection as a patent.13 [emphasis added]
The excluded subject matter from the scope of design protection include the following heads:-
9R v. Registered Designs Appeal Tribunal, Exparte Ford Motor Company Ltd., [1995] 1 WLR 18.
10(1972) RPC 103 (HL) at p. 112.
11Ibid.
12(1935) 52 RPC 126, p. 131.
13Ibid.
7 The ‘any mode or principle of construction’ as an exclusion ensures that protection is granted only to the appearances of articles rather than to the methods or principles of construction by which the article is manufactured. The exclusion draws the line between patent law, which protects invention and design law, which protects appearances.
A particular shape is said to be dictated solely by function if its relevant features are brought about by, or attribute only to, the function which the article in that shape is to perform, even if the same function could be performed by an article of different shape. Principally, an ‘every feature’ rule is followed, when the overall design has to be looked in order to ascertain that every feature of that design have no necessary relation to function. A design is unregistrable only if every feature of the design is dictated by function. Thus if a design is partly functional it may still be registrable. Where a design is made up of a number of different features and some of those features are dictated by function, so long as some of the remaining design features are not determined by function, the design will not fall within the scope of the exclusion. Furthermore, amere mechanical device by itself constitutes an article which does not have any cosmetic appeal that could be protected within the law of design. Any trademark falls squarely within the ambit of Trademark law.14Similarly, a property mark connotes to a mark used for denoting that a particular moveable property belongs to a particular person,15 while an ‘artistic work’ constitutes copyrightable subject-matter.16 Any immoral design or designs contrary to public order are excluded from protection in the Act.
14S.2(1)(i)(viii)(zb) in Trade Marks Act, 1999 defines -- “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;
and— in relation to Chapter XII (other than section 107), a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark, and— in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.
15S. 479 of the Indian Penal Code, 1860.
16 According to S. 2(c) of the Copyright Act, 1957 "artistic work" means- (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) work of architecture; and (iii) any other work of artistic craftsmanship.
S.No Particulars
i. Any mode or principles of construction.
ii. A mere mechanical device, whose features are dictated solely by function.
iii. Any trademark.
iv. Any property mark as defined in S. 479 of the Indian Penal Code, 1860.
v. Any artistic work as defined in S. 2(c) of the Copyright Act, 1957.
vi. Immoral design or designs contrary to public order.
8 Therefore, the whole purpose of a design is that it shall not stand on its own as an artistic work but shall be copied by embodiment in a commercially produced artefact.17The limited monopoly right in design law was granted upon the visual image or eye appeal of the finished article and not the functionality or use of the manufactured article.
4. Prohibition of registration of certain designs – Section 4 of the Designs Act, 2000 a. There is no express provision in the Designs Act for the advertisement of design or for
inviting any opposition to design registration. A design may be registered only on an application, provided it fulfils the criteria as prescribed in the Act.
Certain kinds of designs are statutorily prohibited of registration, these are functional designs, where the features of the designs were dictated solely by function and that the design had no feature of shape or configuration which appealed to the eye.
In Escorts Construction Equipment Ltd v. Action Construction Equipment Pvt Ltd,18the case was concerning the alleged illegal copying of a design by the respondent of Pick-N-Carry Hydraulic Self Mobile Cranes manufactured by the plaintiff. Though the case was not directly coming under the Designs Act, the Court examined whether the said design was capable of registration under the Designs Act. After examining the definition of design under the Act, the Court held that the design in question was incapable of registration.Rejecting the contention of the plaintiff who claimed protection of certain specific parts of the crane, the Court held:
“The aforesaid parts of the crane are made in a particular shape so as to interrelate with others mechanically. These parts of the crane are not made to appeal to the eye but solely to make the crane work or function. Most of the key components or parts, unseen in the crane for which they were required, had only to pass the test of being able to perform their function.
They would be judged by performance and not by appearance. Consequently, the aforesaid key components or parts are incapable of being registered as designs.”
According to the Court the definition made it amply clear that the primary object of the Act was to protect aesthetic shape and not function, or functional shape. Therefore, neither can a plaintiff’s advertisement emphasizing upon the functional nature of the features be a cause of action for a suit against infringement of the Plaintiff’s design;19 nor would purely functional features of the toothbrush be the subject matter of design registration.20
b. The following are grounds for non-registrability of designs:
17Interlego v. Tyco, (1988) RPC 343, [1988] 1 AC 217.
181999 PTC 36(Del)
19Fisher Stoves, Inc v.All Nighter Stove Works, Inc., 206 USPQ 961.
20Glaxo Smithkline Consumer Healthcare Gmbh& Co KG v. Amigo brushes Private Ltd &Anr, 2004 (28) PTC 1 (Del).
9 i. Not new or original – a design can be registrable only when it is new or original and not previously published in India. The primary requirement is that the design must be new with respect to the class of article to which it has been applied. The novelty or originality is judged on the basis of expert evidence, which means that only an expert who is well versed with the common trade practices and usages in the class of goods to which the design is applied would be the one entitled to pass the verdict on the novelty and originality. A design as such may be original in the sense that its application to the article is new.
In Gammeter v. Controller of Patents & Designs,21the court upheld the claim of novelty or originality for the registered design of a metal wrist-band for watches – although gold bracelet of the same kind was used as jewellery from several years. The court opined that, although the shape of the band was not new or original, but its application to the watch was for a purpose and this design could be said to be original.
The test of novelty has been described by the Delhi High Court in the matter of the Wimco Ltd v.
Meena Match Industries22as, “[…] in the matter of novelty the eye has to be the ultimate arbiter and the determination has to rest on the general ocular impression. The court has to consider and look at the two designs in question with an instructed eye and say whether there is or there is not such a substantial difference between them that which has been published previously and the registered design to say that at the date of registration that was not published in India previously.Furthermore in Hello Mineral Water Pvt Ltd v.
Thermoking California Pure23 it was held that, 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.
Further in Glaxo Smithkline Consumer Healthcare Gmbh& Co KG v. Anchor Health
&BeautycarePvt Ltd,24 the Delhi High Court explained that for a design to be new or original, the variation from the design previously applied must be significant, not merely small or superficial. In the instant case, the plaintiff’s infringement suit was pertaining to the design of the handle of a toothbrush, which is used for grip by hand and fingers, and not in respect of the design of whole of the toothbrush; wherein the Court made the following observation:
“[N]ovelty should be capable of making a design different and distinctive at first sight of the consumer, should be new and should not require a lot of effort to find out the novelty. If this yardstick is not applied then by introducing minor and insignificant changes here and
21AIR 1919 Cal 887.
22AIR 1983 Del 537.
23(2000) PTC 177, p.181.
24(2004) 29 PTC 72 (Del).
10 there, one may try to monopolize an old and already known design which cannot be protected even by Designs Act.”25
Therefore, the novelty or originality of the particular part may be sufficiently striking to impart the character of novelty and originality to the whole article.
ii. No prior disclosure - a design can be registrable only when it is not previously published in India. The Designs Act 2000 does not define the term ‘publication’but if a design is available to the public or it has been shown or disclosed to anyone who is not bound to keep it secret then such design will not be considered registrable. Such publication can be made in any prior document or even by prior use. Therefore, in essence publication would mean the opposite of being kept secret as held by the Delhi High Court in the matter of Wimco Ltd., Bombay v. Meena Match Industries.26 The disclosure even to one person is sufficient to constitute publication.
Section 16 of the Designs Act provides that certain disclosures made prior to the registration of design shall not be deemed to be a publication sufficient to invalidate the copyright. They are :
(i) Any disclosure made in breach of faith by someone to whom the proprietor of the design had disclosed the design in such circumstances as it would make it contrary to good faith for that person to use or publish the design;
(ii) The acceptance of a first and confidential order for articles bearing a new or original textile design intended for registration.
The other person to whom the design was disclosed, if acts in contrary to good faith in which the design was disclosed to him/her and uses such design or publishes such design, such user and publication of design by the other person other than the proprietor of the design by legal fiction under S.16 is not deemed to be a publication of the design sufficient to invalidate copyright. Section 16 thus preserves and protects the proprietor’s registration in the circumstances, when the disclosure of design is made by the proprietor to any other person in good faith.
Further S.21 of the Act provides that the exhibition of a design, or of any article to which a design is applied, at an industrial or other exhibition, or the publication of a description of the design during or after the period of the holding of the exhibition, or 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 exhibition, without the privity or consent of the proprietor shall not prevent the design from being registered or invalidate the registration thereof. The conditions that are required to be fulfilled for relief are:
25Ibid, p. 82.
26Ibid.
11 (1) The provisions of S.21 should have been extended to the concerned exhibition by the
Central Government by notification in the Official Gazette;
(2) The exhibitor exhibiting the design or article, or publishing a description of the design, gives to the Controller previous notice in the prescribed form; and
(3) The application for registration of design must be made within six months from the date of first exhibiting the design or article or publishing a description of the design.
iii. Not distinguishable from known design –In case of a combination of previously known designs, it will qualify as registrable only if such combination results in a new visual appeal. Therefore it has tobe distinguishable from known designs or combinations of known designs or comprise. Thus, for a design to be distinguishable there should be significant variations in it and not merely small or superficial variations.
iv. Scandalous – Any scandalous or obscene matter are not registrable under the Designs Act 2000. Whether a design comprises or contains scandalous or obscene matter, should be decided from the perspective of Indian society.
v. According to S.35 of the Designs Act 2000, the Controller may refuse registration if the use of the design would be contrary to public order or morality. An appeal shall lie to the High Court from an order of the Controller under this section.
5. Application for registration of a design can be made to the Controller of Designs, who may then register it, provided the application is not hit by non-registrability grounds mentioned in (b) above. The design is not to be registered in more than one class. Furthermore, registration of a design under the Designs Act, 2000 is procedurally different from the registration granted under the Patents Act 1970 and the Trade Marks Act 1999, where prior to registration there is a substantive examination, publication before registration and provision for opposition before registration. Registration of a design under the Designs Act does not entail these processes.
In fact, Section 2(d) which defines ‘design’ when r/w Rule 11 with Form I clarifies that the design which is registered is to be applied to any finished article and may be judged solely by eye appeal. The Controller is to register a design on application made under S. 5 by the proprietor of any new or original design not previously published in any country and which is not contrary to public order or morality and ought to be filed in the prescribed form which is Form I. The Design Rules 2001, S.11(1) prescribe that this application must be accompanied by four copies of the representation of the design and the application and each of copy of the representation of the design shall be dated and signed by the applicant.
S.6 of the Act provides that a design may be subsequently registered in respect of more articles comprised in that class of articles, so far as it does not extend the period of copyright in the design beyond that arising from the previous registration. S. 7 further provides that after the registration of a design, the Controller shall cause publication of the prescribed particulars of the design to be published in prescribed manner. The design is to be open to
12 public inspection thereafter. The Controller shall after acceptance of the design direct the registration and publication of the particulars of the application alongwith the representation of the article to which it has been applied in the Official Gazette.S.8 empowers the Controller to make orders regarding substitution of the application, while S.9 allows the Controller to grant a certificate of registration to the proprietor of the design when the design is registered. S.5 provides that the application registration date be recorded as the date of registration of a design. The design so registered is maintained in the register of designs which is kept in the Patent Office in Kolkata. Rule 30 of the Designs Rules 2001 lays down that when a design is accepted particulars with respect to the number of the design, the class in which it is registered, the date of filing the application for registration in this country, the reciprocity date, if any, claim for the registration, and such other matters as would effect the validity or proprietorship of the design should be entered in the said register.
Notably, the Design Rules 2001, in rr 10 and 11 require that the article shall be further classified in the Third Schedule, where if the proprietor were to register the same design in more than one class of article, a separate application shall be made in each class of article and the application shall contain the number or numbers of the registration already effected.
Rule 17, allows that upon receipt of the application for registration, if the Controller finds objections raised by the examiner appearing to be adverse to the applicant or requires any amendment of the application, a statement of such objections shall be sent to the applicant to respond within 3 months from the date of official communication of objection by removing the objection or applying for hearing. The period for removal of the objections is not to exceed the time period of 6 months from the date of filing of the application. Failure to respond will require that the applicant shall be deemed to have withdrawn the application.
6. Authorship of a new or original design is discussed under S. 2(j) of the Designs Act, 2000.
The provision refers to the proprietor of design as the author of the design. Where the author of the design executes the work for some other person for good consideration, the person for whom the design is so executed shall be the proprietor of that design. Where any person acquires the design, or the right to apply the design to any article, whether exclusively or non-exclusively, the proprietor of the design is that person to the extent in and to which the design or right is acquired. Proprietor of a new or original design also includes any person on whom the property in the design or the right to apply the design has devolved from the original proprietor.
7. The Controller-General of Patents, Designs and Trade Marks is the Controller of Designs for the purposes of Designs Act. The Central Government may appoint as many examiners and other officers with such designations as it thinks fit. Such officers shall discharge under the superintendence and directions of the Controller such functions of the Controller under this Act as he may, from time to time, by general or special order in writing, authorise them to discharge. According to S.3 of the Designs Act, 2000, the Controller may, by order in writing and for reasons to be recorded therein, withdraw any matter
13 pending before an officer and deal with such matter himself either de novo or from the stage it was so withdrawn, or transfer the same to another officer who may, subject to special directions in the order of transfer, proceed with the matter either de novo or from the stage it was so transferred.
8. Design and Copyright:There may be certain designs which can qualify for registration both under the Design Act and the Copyright Act. The industrial design and product design are covered by the Design Act 2000. Therefore if an original artistic work has been registered as a design under the Design Act then the same subject matter cannot enjoy a coterminous protection under the Copyright Act. However if a design qualifies for registration under the Design Act but has not been so registered then the exclusive right will subsist under the Copyright Act. If such a design is of an article which is commercially produced, the copyright over the design under the Copyright Act will cease to exist when the 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.
Design law and the law of Copyright u/S 15(2) can be clarified as hereunder:-
Designs Copyright
Exclusive rights, i.e.,
Complete monopoly for large scale production (most countries also confer exclusive rights)
Only protects against copying
Needs to be registered Copyright is accorded automatically, thus there are no formalities of registration process
Requires originality and novelty
The criterion for protection is originality, which is easier to fulfil compared to novelty Duration of protection is 10
plus and can be extended further by 5 years
The duration of protection is much longer (60 years +) Only confined to the product
that it is registered upon
Not product specific
14 9. Infringement and remedies - what amounts to infringement of a design is sale of a registered design for the purpose of applying or cause to be applied, to import the registered design for the purpose of sale knowing that the registered design or its imitation is not with the written consent of the registered proprietor. Such unauthorised act is also termed as ‘piracy’ of a registered design. Section 22 of the Designs Act, 2000 lays down that the following acts amount to piracy:
(1) To publish or to have it published or expose for sale any article of the class in question on which either the design or any fraudulent or obvious imitation has been applied.
(2) To either apply or cause to apply the design that is registered to any class of goods covered by the registration, the design or any imitation of it.
(3) To import for the purpose of sale any article belonging to the class in which the design has been registered and to which the design or a fraudulent or obvious imitation thereof has been applied. Any unauthorised application of the registered design or a fraudulent or obvious imitation thereof to any article covered by the registration for trade purpose or the import of such articles for sale is a piracy or infringement in the design.
The aforesaid acts shall constitute piracy only when it is committed during the existence of copyright in any design. Further, it is necessary that the acts constituting piracy should have been done for the purpose of sale and not merely for private or personal use. It is further required that the forbidden acts have been done in relation to any article in any class of goods in which the design is registered and not in relation to other class of goods.
Section 22 provides that once a design is registered, the registered proprietor having a copyright therein can insist that anyone committing piracy should be restrained from doing so for the purpose of Designs Act.
The tests to be applied for ascertaining the identity or sameness of the registered designs in question in an infringement action, includes, to find out whether there were substantial differences between the design subsequently registered and the design which was earlier registered. These differences must be objectively ascertained. In a Madras High Court decision in the matter of Britannia Industries v. Sara Lee Bakery,27it was observed that the similarity of device or article in its external appearance could be a factor in considering the substantial differences between the two but was not the only determining factor.
Defences to a suit for infringement include functional requirements, as well as the article having no eye appeal.In order for infringement to be found the Court must determine whether the alleged infringing designed article has the same shape or pattern and eliminate the claim of similarity. The following defences can be applied –
(i) The defendant can deny that there was any infringement of the registered design as alleged, or
27AIR 2000 Mad 497.
15 (ii) That the design applied by him was materially different from the registered design, or (iii) That the defendant applied the design with the consent of the registered proprietor of the
design, or
(iv) That the plaintiff is not the proprietor of the design, or
(v) That the registration of the design is invalid as in fact there was no design as claimed within the definition under S.2(d), or
(vi) The design was not new or original or had been previously published or registered in India;
or
(vii) That there was in force a contract relating to the registered design which contains an unlawful condition as declared by S.42.
There is no provision in the Designs Act, 2000 which prevents the defendant in an infringement suit from pleading that the design has been previously published and was neither new nor original. Furthermore, the designs which are ordinary may be differentiated from those that are works of art. The defendant can in the case of ordinary designs raise a defence against infringement by showing even a small change in his design; while in works of art, a defence of substantial difference needs to be established.
10. The remedies that are ordered for infringement of design include:
i. The remedies (civil) – injunction, damages, delivery up of infringing articles.
ii. The remedies (criminal) – imprisonment or fine or both.
Section 22(2) stipulates two alternative remedies in the form of payment of money by the person who infringes a registered design and a suit for injunction restraining infringement of registered design and for rendition of accounts. The defendant ought to elect one of the two alternatives. Section 22 (2)(a) provides, if any person acts in contravention of Section 22, he or she shall be liable to pay the registered proprietor of the design a sum not exceeding Rs.25,000/- for every contravention recoverable as a contract debt. The total sum recoverable in respect of any one design shall not exceed Rs. 50,000/-
Section 22(2)(b), provides that the proprietor may bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof. If s/he succeeds then s/he will be entitled to recover damages and restrain the defendant in terms of the injunction granted by the Court.
The above remedies will be maintainable only when filed in the appropriate Court, which may be a District Court or a High Court depending upon the quantum of damages claimed.
The Delhi High Court has in the matter of M/s Smithkline Beecham Plc v. M/s Hindustan Lever Ltd.,28 held that, passing off action is also available to a case of design and such right could be enforced provided the same is available in accordance with law even in a case of design, for otherwise a latitude would be given to a manufacturer to misrepresent and to
28(2000) PTC 83 at p.90.
16 deceive unwary customers by manufacturing and selling its products as that of products of some other manufacturer or seller.
11. In summary, the essence of the law of designs,provides protection to aesthetic features of goods that enhance the visual appeal and consequent marketability of such good. Designs are not registered in the abstract but are registered as features which are applied to an article in a way that the article will retain its functional character even without the application of the design. Further designs applied to specific parts of an article must be for an article which is ‘made and sold separately.’ Any design which is not new or original or one which has been disclosed priorly, is not distinguishable from known design, is scandalous or obscene are not protected under the Act. The excluded subject-matter more particularly provided in the Statute u/S. 4 include modes or principles of construction such as buildings, features dictated solely by function, mechanical device, trademark, property mark and artistic works.
Finally instances of piracy of a registered design, which is a term referring to infringement of a design when an unauthorized act is the sale of a registered design for the purpose of applying or cause to be applied, to import the registered design for the purpose of sale knowing that the registered design or its imitation is not with the written consent of the registered proprietor can be retrieved by suing for civil or criminal remedies. Section 22 provides that remedy in the form of payment of money by the person who infringes a registered design. Further a suit for injunction restraining infringement of registered design and for rendition of accounts is, therefore, maintainable only when filed in the appropriate Court, which may be a District Court or a High Court depending upon the quantum of damages claimed.
12. Important case notes
Definition of a Design
Polymer Papers Ltd. v. Gurmit Singh & Others; 2002 (25) PTC 327 (Del).
Facts:The plaintiff was a company engaged in the production of filter papers for various automobiles. The defendant was a manager in the company who was responsible for creating designs for the manufacture of the filter papers. The plaintiffs contend that the defendant left the job and sold off the industrial drawings to the other defendants thereby infringing on their Copyright.
Issues:The issue is whether the plaintiff company had the exclusive right to reproduce or depict the industrial drawings, manufacturing processes, names of suppliers of certain parts and the other trade secrets and whether all these constituted a ‘design’ under the Designs Act, 2000.
Rules: S. 2(d) of the Designs Act, 2000 states that a design means “only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article
17 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”. Copyright is defined in Section 2(c) as under “the exclusive right to apply a design to any article in any class in which the design is registered”.
Analysis: In the present case, the industrial drawings, list of suppliers and clients, manufacturing processes, etcetra were for the purpose of the manufacture of filter which came within the ambit of design by virtue of it being of a particular shape and configuration formed by an industrial process.
Conclusion: The Delhi High Court thus held that industrial drawings and designs in which the copyright was claimed clearly fell within the definition of design under S. 2(d) of the Designs Act, 2000. However, since the design was not registered, the plaintiff could not claim copyright over it.
Ampro Food Products v. Ashoka Biscuit Works; AIR 1973 AP 17.
Facts:The appellants and the respondents manufacture biscuits. The appellant’s biscuits have AF embossed on them while the respondents have AB embossed on them.
The appellants alleged that the respondents have copied their design and thus they have committed infringement of the design. The respondents contend that the act cannot be an act of piracy since they have already applied for the registration of the mark as a trademark.
Issues:The issue is whether the embossing on the biscuits was a design or a trademark and if a trademark is included within the ambit of the definition of design under S.
2(5) of the Designs Act, 1911.
Rules: S. 2 (5) of the Designs Act, 1911 states that a trademark does not fall under the definition of a design. S. 51-A of the Designs Act talks about the cancellation of registration of a design. Section 53 prohibits all acts of piracy of a registered design.
Analysis: The Designs act specifically states that a trademark does not fall within the scope of the definition of design. Embossing on a biscuit is an integral part of the biscuit and hence it is a design and not a trademark. This is because a trademark need not necessarily be present on the product but a design has to be an inherent part of it.
Conclusion: The court held that a design is different from a trademark. A design is necessarily a part of the product but a trademark is not. In the present case, the respondents had filed for the registration of their design as a trademark. This was not possible as per the statute. However that did not give them the right to commit
18 the act of piracy and thus the court held that the respondents could not legally use AB on their biscuits.
Bharat Glass Tube Limited v. Gopal Glass Works Limited; 2008 (1) CTMR 500 (SC).
Facts: The respondents Gopal Glass Works had registered their designs for diamond shaped glass sheets under the Designs Act, 2000 and were granted a certificate of registration for the same. The respondents therefore acquired the sole right to manufacture and market the glass sheets in the design that was registered in their names. The appellant however started marketing his glass sheets with the same design. The designs that were formed on the glass sheets were formed by engraved rollers which were developed by a German Company which had licensed all Indian rights to the respondent. On learning that the appellants were manufacturing glass sheets in the same protected design the respondents moved Court for an interim injunction which they were granted following which the appellants moved the Asst.
Controller of Patents for cancellation of the respondents design on the ground that it already been published by the German Company in the year 1992 as was evidenced by a letter produced from the German Company and also that the design had been published on the website of the U.K Patent Office by another company which had sought for design protection.
Rules and Analysis: The respondents design was not new or original since the German company had been manufacturing the engraving rollers with the same design since 1992 and also because the design had already been published in the U.K. Patent Office Website by another German Company and thus the registration of the respondent’s design was cancelled since it did not meet the requirements of originality laid down by S. 4. When the matter went on appeal to the High Court the single judge over-ruled the Asst. Controller of Patents and restored the design to the respondents. The Appellants then appealed against this decision to the Supreme Court.
Conclusion: Supreme Court accepted the respondent’s distinction between the design on the engraved rollers and the glass sheets. Under S. 2(d) design means the application of shape to any article and since in this case the respondent had specifically mentioned in the application form that he was applying the designs only to glass sheets, he would have exclusive rights to do so despite the fact that the design already existed on the engraved rollers. On the question of whether the design was new and original the Supreme Court held that the appellant had failed to establish that the design had already been published. The appeal was dismissed and the registration of the design was restored to the respondent.
19 Escorts Construction Equipment Ltd. &Anr.v. Action Construction Equipment Pvt. Ltd.
&Anr.; 1999 PTC 36 (Del).
Facts: The claim of the plaintiffs was that the defendants’ Pick-N-Carry Hydraulic Self Mobile Cranes is the three dimensional reproduction of the drawings for which the plaintiffs have copyright protection.
Issue: Whether the author of an artistic work has the exclusive right to reproduce the work and convert it from two dimensional to three dimensional and vice versa?
Rule: Under S. 2(5) of the Designs Act, 1911, the word "design" is defined as meaning features of shape and configuration, pattern or ornament which appeal to and are judged solely by the eye.
Analysis: The Court observed that industrial drawings are produced by skilled draughtsman. Some of the drawings incorporate standard parts such as engine or a gear box in common use, but even in those drawings there is ample labour, judgement and skill. The drawings used in the design of the crane were reproduction of the original artistic work. Those copies of drawings were, in turn, used to manufacture parts of the crane. Those parts manufactured are again reproduction of original artistic works. A reproduction of an artistic work includes a version produced by converting the work into three dimensional forms. Such drawings are capable of being infringed by copying of a three dimensional article.
Conclusion: Based on the above reasoning, the Court held that the defendants have violated copyright of the plaintiffs in their industrial drawings and granted an injunction in favour of the plaintiff.
Hindustan Lever Ltd., Bombay v. NirmaPvt. Ltd., Ahmedabad; AIR 19992 Bom 195
Facts: Hindustan Lever Ltd., has filed a suit against Nirma Private Ltd., seeking permanent injunction restraining the defendant from using in relation to soaps or detergent powder the impugned carton, a photograph of which is annexed as Exhibit 'O' to the plaint, or any other deceptively similar carton.
Issues:Whether the mark used by the defendant infringes the plaintiff's mark? Whether an artistic label which can be registered as a trade mark under the Trade Marks Act can also be registered as an artistic work under the Copyright Act, 1957?
20 Rule:Section 2(c) of the Copyright Act, 1957 defines an "artistic work" to mean "a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph."
Analysis:To find out whether the mark used by the defendant infringes the plaintiff's mark or not was decided by applying the test as to what would be the general impression of an unwary customer of imperfect recollection while seeing the impugned carton. The Court said that a mark is infringed by another, even without using the whole of it, he uses one or more of its essential features.
Conclusion:The Court ruled that the defendant can market its product without adopting the carton Exhibit 'O' to the plaint or any other label deceptively similar to the label mark of the plaintiff or the essential features thereof.
Concept of Novelty and Originality
Parle Products Private Limited v. Surya Food & Agro Limited; 2009 (40) PTC 638 (Mad) (DB).
Facts:Appellant/Plaintiff Parle Products Pvt. Ltd. are carrying on business of manufacturing of biscuits and confectionaries and they had developed new and original packet designs having several novel features in its shape, configuration and surface pattern, which were registered for protection. They further contend that in Chennai, Defendant Surya Food and Agro Limited had started marketing several varieties of biscuits "Priyagold" in packets bearing shape, configuration and surface which was a fraudulent and obvious imitation of the Plaintiff’s registered Design.
Issues: Whether a "cause of action" has arisen at Chennai and the plea can be barred under Order II Rule 2 of the Code of Civil Procedure? Whether a design registered under the Designs Act is eligible for protection under the Copyright Act?
Rules: Code of Civil Procedure, S. 134(2) of Trade Marks Act, S. 22 of Designs Act, 2000
Analysis:
1. As per S. 22(1) of the Designs Act, 2000 copyright in a registered design gives a Proprietor an exclusive right to apply the design to any article in any class in which the design is registered. For relief under this section, every ground on which registration of a design may be cancelled under S. 19, will be available as a ground of defence. Whether a "cause of action" has arisen at a particular place, is a
21 'question of fact', which can only be decided after recording of the evidence of the parties. When a plea of bar under Order II Rule 2 of the Code of Civil Procedure is raised, the Court has to ascertain whether the cause of action of the previous and subsequent suit, was identical and in the absence of proof of the identity of cause of action and pleadings, such a plea cannot be permitted to be raised in the considered opinion of this Court. Moreover, the issue of jurisdictional dispute requiring evidence must be decided along with the other issues in the suit, only at the time of trial.
2. "actually and voluntarily resides or carries on business or personally words for gain"
mentioned in S. 134(2) of Trade Marks Act, is not found in S. 22 of Designs Act.
As matter of fact, there is no provision under Designs Act for criminal proceedings against piracy of designs. If a design is registered under that Act, it is not eligible for protection under the Copyright Act. However, in the case of a design which is capable of being registered under the Designs Act, but no so registered, copyright will subsist under the Copyright Act, but it will cease to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or with his license by any other person. The Designs Act, unlike the Copyright Act, gives monopoly protection in the strict sense of the word rather than mere protection against copying as under the Copyright Act and though there is an area of overlap between the Copyright Act and the Designs Act, the two Acts do not give coterminous protection as regards the subject-matter.
Bharat Glass Tube Limited v. Gopal Glass Works Limited; 2008 (1) CTMR 500 (SC).
Facts:The respondents Gopal Glass Works had registered their designs for diamond shaped glass sheets under the Designs Act, 2000 and were granted a certificate of registration for the same. The respondents therefore acquired the sole right to manufacture and market the glass sheets in the design that was registered in their names. The appellant however started marketing his glass sheets with the same design. The designs that were formed on the glass sheets were formed by engraved rollers which were developed by a German Company which had licensed all Indian rights to the respondent. On learning that the appellants were manufacturing glass sheets in the same protected design the respondents moved Court for an interim injunction which they were granted following which the appellants moved the Asst.
Controller of Patents for cancellation of the respondents design on the ground that it already been published by the German Company in the year 1992 as was evidenced by a letter produced from the German Company and also that the design
22 had been published on the website of the U.K Patent Office by another company which had sought for design protection.
Rules and Analysis: The respondents design was not new or original since the German company had been manufacturing the engraving rollers with the same design since 1992 and also because the design had already been published in the U.K. Patent Office Website by another German Company and thus the registration of the respondent’s design was cancelled since it did not meet the requirements of originality laid down by S. 4. When the matter went on appeal to the High Court the single judge over-ruled the Asst. Controller of Patents and restored the design to the respondents. The Appellants then appealed against this decision to the Supreme Court.
Conclusion:Supreme Court accepted the respondent’s distinction between the design on the engraved rollers and the glass sheets. Under S. 2(d) design means the application of shape to any article and since in this case the respondent had specifically mentioned in the application form that he was applying the designs only to glass sheets, he would have exclusive rights to do so despite the fact that the design already existed on the engraved rollers. On the question of whether the design was new and original the Supreme Court held that the appellant had failed to establish that the design had already been published. The appeal was dismissed and the registration of the design was restored to the respondent.
Glaxo Smithkline Consumer Healthcare Gmbh& Co. KG v. Anchor Health
&BeautycarePvt. Ltd.; 2004 (28) PTC 1 (Del).
Facts:In the above case the plaintiff filed a suit for restraining the defendant from manufacturing and selling offending toothbrushes, which infringed the registered design of the plaintiff or which were fraudulent or obvious imitation. The suit is filed in respect of design of toothbrushes, which comprises a distinctive aesthetic toothbrush in respect of which the plaintiff had obtained a design registration. By virtue of said design registration and Section 48(5) of the Designs Act, 2000, the plaintiff has the copyright in the design for an initial period of 5 years from the date of the registration and this period is extendable by two successive periods of 5 years each.
Issue: Whether the defendant by adopting an obvious imitation of its design in its own toothbrush has infringed the plaintiff's property right for the design registered in its name?
