Design Registration

Introduction:

The Designs Act, 2000 and the Design Rules, 2001 govern the registration of designs in India.[1]Design Registration is a form of registration of intellectual property protecting creations of the mind. A registered design is a configuration, pattern, shape, ornament or a combination of colours or lines that is applied to a two-dimensional or three-dimensional article and safeguarded by the Designs Act of 2000. This Act provides that registration of a design protects the features such as configuration, pattern, ornamentation, shape, composition of colours or lines that are used on articles as well as industrial designs or patent designs. However, features such as mechanical devices, mode of construction, trademark covered under Trademarks Act or artistic works enshrined under the Copyright Act are excluded in the scope. This is because only the visual appeal of a design is sought to be protected by the registration of a design. On infringement, the proprietor of a design can claim monetary compensation as well as injunction as the Act provides solely civil remedies.

History

The Designs Act has initially titled the Patterns and Designs Act, 1872 and it gave inventors of new designs and inventions exclusive rights. Later it came to be known as The Inventions and Designs Act, 1888 a replication of the British model of the same Act in the United Kingdom. The Patent and Designs Act of 1911was observed to exclude property marks or trademarks from the definition of “design”. It also laid down guidelines to be followed to register a design in India and defined terms such as period of enquiry, duration of rights the proprietor held and fee extensions. During the British colonial period and after independence, this Act went through several amendments. Finally, the Indian Designs Act of 2000 was enacted for implementing the TRIPS agreement (to which India was a signatory) and for amending the law relating to the protection of industrial designs. The system of “first to file, first to get” was also adopted by India which laid down that an inventor needed to apply for registration of his design at the earliest in order to prevent others from claiming rights to that particular design. A significant change was noticed when the “artistic works”, defined under the Indian Copyright Act, 1957 was excluded from the term “design”. In the case of Microfibers Incorporated v Girdhar Co. & another, the Court put forth a reason for this exclusion stating that the objective was to reward innovators for research and labour used to make an original and unique design.

Definition

The Designs Act, 2000 defines “design” as “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”.

Registration

For registration of a design under the Designs Act of 2000, the following conditions are to be satisfied-

• The design should not have been used in any country or previously published- it should be original and new.
• Design should be related to features of the pattern, configuration, shape or ornamentation applied to an article. Designs of industrial installations, layouts or plans are hence not registrable.
• The design needs to be applicable or applied to an article by an industrial procedure. Hence, designs like sculptures or paintings not produced by industrial processes are generally excluded.
• The design should be visible and must appear on the finished article as features of the designs are judged by and should appeal to the eye.
• Design should not include any property mark, artistic works or trademark.
• Anything which is a mere mechanical device in substance, would not be registrable.
• Design should be discernible from a combination of known designs or a particular known design.

Documents Required

The registration application for a design needs to be addressed to the Controller of Designs, the Patent Office at Kolkata. The documents needed are as follows:

• A filled application in Form-1 with full name, address and nationality of applicant stated prescribed fees and the address for service in India.
• Name of the article for which the design is sought to be registered.
• As per the Design Rules, the third schedule classifies articles based on the Locarno Classification. Hence, the Class and Sub-class of the article having the design should be stated.
• Two copies representing the design needs to be submitted. Such representations can be drawings, tracings, photographs or specimens showing various side views. A disclaimer should be mentioned in this representation if it is likely that the ornamental pattern on the article can get mistaken with a trademark or contains certain numerals, letters, words or suggests any mechanical action.
• Each representation sheet should contain an endorsement of a statement of novelty and disclaimer of any trademark, word, letter mechanical action or numerals.
• An applicant can claim registration of a design in India citing priority date(if he has applied for protection of design in countries that are members of inter-governmental organizations.

Benefits

The registered proprietor is conferred with several rights upon registration of a design. They are entitled to better protection of the intellectual property, can sue for infringement of their right and can also apply a design to the article in the class in which the design was registered. The proprietor also has the exclusive rights over their design for ten years (which can be extended for five years) and has the right to sell or license the design as legal property for royalty or consideration. The Patent Office maintains documents relating to registered designs to give notice to competitors of the registration of a certain design. However, if the fee for extension of the registration period is not paid within the period of initial registration, the right ceases to exist. Registration of a design provides a legal remedy against piracy or infringement under the Designs Act.

Precedents

In the case of Reckitt Benckiser Ltd. v Wyeth Ltd.[2], the issue related to the registration of S-shaped spatulas. The defendant claimed that the appellant had already registered the design in a foreign country and hence it was not original. Furthermore, this fact of prior registration had been concealed. The Court held that registration of a design in India would be cancelled if it could be shown that the design had been disclosed in a foreign country or anywhere in India. This could also be used as a defence against infringement.

In the case of M/s S K Industries v Dipak Ghosh[3], it was claimed by the plaintiff that there already existed a particular cup in which jelly was being marketed and packed and hence this design could not be used by the defendant. The Court opined that the cup being used by the plaintiff had no novelty and was a regular cup with no originality of dimension or shape. It rejected the claim of the plaintiff stating that the cup being used was one manufactured by most manufacturers for storage purposes.

In the case of M/s Whirlpool of India Ltd. v M/s Videocon Industries Ltd.[4], Whirlpool had registered two signs. Consequently, Videocon registered a design that prima facie looked like a replica of Whirlpools’ and had a similar shape, configuration and features. It was contended by Videocon that they could not be held liable for infringement and passing off the design as they had already registered it. The Court held Videocon liable for infringing and passing off the plaintiff’s design noting that there was a similarity between the two designs.

In the case of Rajesh Masrani v Tahiliani Design Pvt. Ltd.[5], Tahiliani Design had made drawings while making clothes and registered them under the Copyright act of 1957 as an artistic work. They claimed that the other party had imitated some of the drawings and infringed their right. The other party contended that they could not claim remedy as the drawings had not been registered under the Design Act. The court held that for maintaining a suit for infringement of copyright, it was not mandatory to register any work.

In the case of Veeplast Houseware Pvt. Ltd. v M/S Bonjour International and another[6], it was held that every resemblance would not be an act of imitation concerning the piracy of the design. The Court opined that a commodity should be examined from the view of a customer with imperfect recollection and average knowledge instead of finding similarities by placing commodities beside one another. It should primarily be considered whether the patterns, shape and configuration of the two products were similar to each other.

In the case of Crocs Inc. USA v. Bata India Ltd. and others[7], Crocs Inc. USA had filed suits against several manufacturers seeking a permanent injunction to stop them from making a design (hold and non-holed design of shoes) of its footwear. Allegedly, it had the right to this registered design till 28.5.2019. When Crocs asked for interim judgement, the defendant claimed that the case was not maintainable. The main issues before the Court were (i) whether the design was in the public domain before registration, (ii) whether the design of footwear was original, new and unique and (iii) whether the design was a trademark and could function as one. The rules applied were Sections 2(d) and 22 of the Designs Act, 2000 and the Trademarks Act of 1999. Though Crocs had registered its designs in many countries, this did not prove to be beneficial in India and it failed to succeed in “prior publication of design”. The concept of “backdoor evergreening”, “principle of election”(proprietor must make a choice between enforcing common law rights under trademark law or safeguard registration rights under design law), common law principles of passing off, related Acts and other case laws were noted by the Court. The Indian Designs Act protects for a specific period of 15 years after which a design is available in the public domain. Crocs claimed that the design registered had been used by the defendants and claimed to pass off rights over the design. The defendants contended that infringement and piracy of the design had not been done. The Court agreed with the defendants holding that there existed no originality in the design as it was available from 2002 to 2003 and that no extra features could be shown to be a trademark except the design. It also held the registration to be invalid and dismissed the suits. It was observed that in law, a design is not considered to be a trademark. Furthermore, in this case, heavy fines were levied on Crocs to restrain huge companies from securing injunctions and making local companies suffer.

The Distinction Between Trademark and Design

Though both trademark and design safeguard the aesthetic features of a logo, design specifically protects the exterior features like aesthetics, configuration or shape while trademark safeguards the mark or symbol of the business. Hence, a trademark would protect the words, name, drawing or symbols used to identify a product of a certain business or differentiate between sources of goods and services. A design registration would defend the physical appearance of a certain product and any innovative and new ornamental design of an article for manufacturing.

Design Registration

It is governed by the Design Act, 2000. The process of registering a design is started only if an examiner concludes that it is appealing and creative. All registrations of designs are examined at the Patent Office. After registration, the design is valid for ten years and is renewable for a term of five more years.

Trademark Registration

It is governed by the Indian Trademarks Act, 1999. The registration is assessed by the examiner depending on the name and class selected by the applicant. The trademark office of the particular state where trademark registrations are filed also execute it. After registration, a trademark is valid for ten years and is renewable for further use.

Conclusion

In the past decade, there has been a distinct growth in the applications filed for design registration with the rise in awareness regarding the protection guaranteed by it. It is also an attractive intellectual property asset due to a speedy examination procedure and the completion of the procedure taking only a couple of years. The majority of applications are filed in the sectors of software, electronic and electrical goods, automobiles, apparel, construction, commercial vehicles etc. Though awareness regarding design registration is on the growth, there is scope for increasing the efficiency and usage of the registration system. With this aim in mind, several initiatives are being undertaken such as the development of public search platforms, digitization of platforms, conduction of awareness programs for the public and publication of information relating to registered designs online. Thus, an upward trend in the number of design applications that are filed and registered is expected in the future.[8]

India has an institutional framework and efficiently managed and well-defined regulations for the protection of industrial designs. Procedural formalities are cost-effective, time restrained and simple. The substantive criteria prescribed align with international standards. For design applications to be efficiently and speedily processed, it should be ensured that the representation sheet, as well as the application form, comply with the guidelines prescribed. As most Indian design applications face rejection on the ground of procedural issues and not substantive grounds, procedural requirements must be complied with.

---

References:

[1]Designs, Department for Promotion of Industry and Internal Trade, https://ipindia.gov.in/designs.htm

[2]ILR (2010) 1 Del 134

[3]2009 SCC OnLine Del 3949

[4]2012 SCC OnLine Bom 1171

[5]2008 SCC OnLine Del 1283

[6]2011 SCC OnLine Del 2558

[7]2019 SCC  OnLine Del 6808

[8]Aastha Aggarwal, Konpal Rae, Design registration in India – An overview, LAKSHMIKUMARAN & SRIDHARAN ATTORNEYS (Jan 22, 2015), https://www.lakshmisri.com/insights/articles/design-registration-in-india-an-overview/#