Need for Protection of Industrial Designs
The Designs Act of 2000 (the Act) is a comprehensive code in itself and is fully legally binding. It safeguards the visual design of non-utilitarian goods. The design is defined in Section 2(d) of the Act as:
“design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trademark 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 (c) of section 2 of the Copyright Act, 1957 (14 of 1957).”
The preconditions for a protective design are the following:
- It must be original and new.
- A functional article should be applicable.
- On a finished article, it should be visible.
- No prior publication or divulgation of the design should be made.
Classification as per Locarno
Designs are registered under the Locarno Agreement in multiple types. It is used to classify things for the registration of industrial designs which help in the search for design. These classes are primarily functional.
Protection- A total of 15 years of copyright for a registered design. The original Design copyright is 10 years, which can be extended for a further 5 years upon submission of a renewal application.
In the design registration, as in the case of any other IP property, there is also a monopoly right on the owner that legally excludes anyone without their prior approval from replicating, creating, selling or dealing with such design. The design registration is especially beneficial for entities whose shape has an esthetic value and where the entity wants exclusive use of this innovative and original design for its products or content(s).
The design to be protected must be newer or original, i.e. it must not be disclosed by prior publication, prior usage or otherwise to the public in India and elsewhere in the globe. Designs or the combination of designs already registered, pre-existing or divulged to the public should be significantly recognizable. Moreover, no scandalous, indecent or simply functional features should be included in the design.
Remedies for infringement
According to Section 19 of the Designs Act, 2000, any person can seek cancelation of the design registration at any point during the Design Registration’s existence by making a request before the controller for the following reasons: [ra1]”…
a) That design has previously been registered for use in India; or
(b) That the design was published prior to registration in India or in any other country; or
(c) That the design is not a new or original design; or that it cannot be registered for use under this Act;
Appeal may also be lodged with the High Court against the Controller’s order.
Registered design pirating
Article 22 of the Design Act 2000 specifies that any fraudulent or evident replication of a registered design without the owner’s authorization is illegal and also forbids the import, closely related to a registered design, of such material. The precise provisions of the section are that, with regard to the breach of a registered design, compensation payable in a civil proceeding shall not exceed Rs. 50,000/-. Because the compensation due is legally restricted, this is an excellent reason for insisting on an interim order before the trial begins.
Comparing design registration against other IP registration
- Design registration versus Patent registration: a new product or technique incorporating inventive step (technical development) and showing industrial applicability shall provide patent protection. The main differential in design vis-à-vis patent protection is that patents must, contrary to designs, contain a feature of technical importance in terms of functionality and/or structure. While an aesthetic design is examined and not the functionality/techniques of an article’s form/model, the patents on the other hand are evaluated exclusively on the functionality and not on the aesthetic of the property/form.
- Registration of design versus copyright: design and copyright protection relate to the article’s esthetic features. Section 15(1) of the 1957 Copyright Act explicitly specifies the determining characteristic as follows:
No design registered under the Designs Act of 1911 or copyright shall exist or;
Copyright must terminate as soon as an article for which the design is applied has been reproduced more than fifty times in an industry process in all designs that can be registered under this Design Act.
Accordingly, a design registration and copyright of the piece cannot exist together under Section 15 of the Copyrights Act, both kinds of IP protection are mutually incompatible.
- Registration of design versus registration of trademarks: 10A overlapping area may be available to a registered design and trademark (not yet registered). If a unique shape is a registered design and that unique shape of the Article achieves such popularity which results in brand recognition in the same classification of goods between available articles, the same may be taken into account by the proprietor/company in respect of the registration of a trade name.
The company may, consequently, consider applying for registration as a mark of the form/pattern if a unique industrial shaping or pattern is used as a design and if the design is indicating the origin of the item/products in the Company.
Design Act 2000 protects industrial designs in India. Designs are usually one of the marketing methods used to achieve awareness and popularity of the brand by successful entrepreneurs. The design of the product has a major effect on buyers and the brand name linked with it is identified by the people. The basic requirements for industrial design must apply are the uniqueness and freshness, allowing the applicant to utilize the registered industrial design exclusively. The inventor is granted an exclusive right to the unauthorized copying or replication of his/her designs by third parties for a length of time by protecting his/her industrial design. In connection with industrial design there are several advantages and thus it protects small and medium-sized enterprises. Therefore it is very necessary that sufficient knowledge should be extended to everyone to register their designs for increasing their brand name and protecting themselves against piracy for efficient execution and for ensuring the purpose of the Act.
Contributed by:– Nidhi Jha, Legal intern at LLL