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AN OVERVIEW OF THE DESIGN REGISTRATION AND PROTECTION REGIME IN INDIA

What is a Design?

A design is an object’s external appearance to the human eye. A design describes the characteristics of shape, arrangement, pattern, ornamentation, composition of lines, or color, or a combination of all of them, applied to any article, whether two-dimensional or three-dimensional or in both forms, whether manually, mechanically, or chemically, separately or together, and which in the finished article is applied only for aesthetic appeal. A trademark as defined in Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958[1], a property mark, or an artistic work as defined in Section 2(c) of the Copyright Act, 1957[2] are not considered to be ‘designs’.[3]

The importance of having a distinguishable design

A design is a by-product of individual creativity which helps a product commercially. It leaves a lasting impression on the minds of the customers. A product’s design aids in its recognition for consumers. Since the design of a product is a commercially exploitable tool, it becomes essential to accord it the necessary legal protections.

Legal Regime of Designs in India

The Design Law in India is governed by the Designs Act, 2000.[4] The Act is the primary protection mechanism for India’s Designs regime. The main goal of design registration is to prevent others from using the same design on their goods or products, depriving the designer, originator, or artisan of their reward for developing it.

Procedure for Registration of Design

Section 3(1) of the Designs Act, 2000 states that: The Controller of Patents, Designs, and Trademarks appointed under Section 4(1) of the Trade and Merchandise Marks Act, 1958 shall be the Controller of Designs for the purposes of this Act.[5] Sub-Section 2 empowers the Central Government to appoint as many examiners and officers as it deems fit.[6] Section 5 of the Design Act[7] states the procedure for the application of a design. It places the authority of registering the design on the Controller, provided that before such registration he refers the application to the Examiner appointed under Section 3(2) as mentioned above, and considers the report of the Examiner while doing so. Section 6 states that the applicant may seek to register the design in respect of any or all of the articles comprised in a prescribed class of articles.[8]

effect of registering a design

A design registration comes into effect upon the granting of an exclusive right to apply a design to the article. It begets the proprietor the sole right to incorporate a design to a product in the specific class to which such right was granted. He is granted protection for the design which is the intellectual property of the proprietor. He is free to take action in case of any infringement of the said exclusive right. [9]

Validity of the design registration

A design can be registered for 15 years. This includes a 10-year default registration period, which can be extended for another five years by submitting an application to the Controller using Form-3 and paying the stipulated fee (Rs. 1000 for a natural person, Rs. 2000 for a small entity, and Rs. 4000 for others except for a small entity).[10] However, such an extension should be sought before the initial ten-year period expires. Typically, proprietors prefer to request such an extension as soon as the design certificate is granted.

Restoration of lapsed design

An applicant has to request for restoration of the lapsed design within one year from the date of such expiry. The applicant has to mention the reasons for the non-payment of the extension fee in the stipulated period.[11] Upon the allowing of such application, the original extension fee along with an additional fee (Rs. 1000 for a natural person, Rs. 2000 for a small entity, and Rs. 4000 for others except for a small entity) is to be paid to the Controller.[12]

Transferability of designs

Section 30(4) gives the proprietor of a design the absolute power to assign, grant licenses to, or otherwise deal with, the design.[13] The right to ownership can be transferred through assignment, agreement, transmission with terms and conditions in writing, or through legal recourse. Restrictive covenants are to be avoided in the terms and conditions of such transfer. The beneficiary must submit to the Controller an Application in Form-10, with prescribed fees for one design and appropriate fees for each additional design, for registration of the transfer documents within six months of the date of execution of the instruments, or within an aggregate period of six months. The application must include an original/notarized copy of the instrument to be registered.[14]

Design piracy and protections under the act

Piracy of a design implies that a design has been appropriated and applied to an article of the same class as that of the registered proprietor, without the proprietor’s permission. Such an unauthorized application causes economic and moral harm to the proprietor of such design and is referred to as piracy.  The Designs Act, 2000 lays down penal provisions for the offence of piracy. Section 22(2)(1) of the Act states that the infringement of the copyright granted to a registered proprietor shall be punishable with a fine of Rs. 25,000/-, which shall be paid to the proprietor. The ceiling for the fine has been placed at Rs. 50,000/-, which shall be deemed as a contractual debt to be recovered. The proprietor is also at liberty to seek other civil and tortious action as he may deem fit against the offender.[15]

CASE STUDY: M/Whirlpool Of India Ltd. v. M/Videocon Industries Ltd

Facts: In the present case, Plaintiff had obtained two design registrations, which were valid for a period of ten years from 15th July 2009. In June 2012, the plaintiff came across a washing machine manufactured and marketed by the defendant, under the brand name “Videocon Pebble” which had practically the same design as that of the Plaintiff’s product for which design registration had been obtained. The Plaintiff had filed for an interim injunction at the Bombay High Court seeking to direct the defendant to stop the manufacture and marketing of the said product and further sought to bring action against them for infringement of design and passing off. The defendant contended that there was a lack of novelty on the part of the Plaintiff and further that there is negligible possibility of misrepresentation or passing off, since nobody buys a washing machine by reference to its shape or appearance, and only sees the brand value and the functional utility of the product itself.

Decision: The Hon’ble Bombay High Court, while rejecting the arguments of Defendant, allowed the contention of Plaintiff and held that Defendant was guilty of passing off and ordered Defendant to pay the costs to Plaintiff.[16]

CONCLUSION

The Designs Act 2000 is an important piece of legislation that governs the registration, protection, and enforcement of industrial designs in India. It provides a comprehensive framework for the protection of industrial designs, including provisions for registration, infringement, and remedies. It aims to encourage innovation and creativity in the industrial sector and protect the rights of designers and creators.

Overall, the Designs Act 2000 plays a vital role in protecting the intellectual property rights of designers and promoting innovation in the industrial sector. It provides a clear legal framework for the registration and protection of designs and helps to encourage investment in research and development, leading to new and improved products for consumers.

Author(s) Name : Abhinav Suresh (Osmania University, Hyderabad)

References:

[1] Trade and Merchandise Marks Act,1958, s 2(1)(v)

[2] Copyright Act 1957, s 2(c)

[3] Designs Act 2000, S.2(d)

[4] Designs Act 2000

[5] Designs Act 2000, s 3(1)

[6] Designs Act 2000, s 3(2)(s)

[7] Designs Act 2000, s 5

[8] Designs Act 2000, s 6

[9] Designs Act 2000, s 22(2)(b)

[10]Designs Act 2000, s 11(2)

[11]Designs Act  2000, s 12

[12] Designs (Amendment) Rules 2014, r 5

[13] Designs Act 2000, s 30(4)

[14] Designs Act 2000, s 30(3) r/w Designs Rules 2001, r 6

[15] Designs Act 2000, s 22(2)(1)

[16] Whirlpool Of India Ltd v Videocon Industries Ltd (2014) MANU Bom 57