Intellectual Property Rights helps the creator to have certain exclusive rights for protection over the use and application of the creations of their minds for a certain period.[1] These rights provide legal rights to the creators for their tangible expressions of their intangible ideas from their human minds, generally and include inventions, certain symbols, marks, images, names, designs and literary and artistic works.[2] This is protected by the legal framework by implementing effective IPR regulations broadly relating to Patents, Copyrights, Geographical Indications, Trademarks, Industrial Designs, Trade Secrets, Layout Designs and Integrated Circuits, Plant Variety and Farmer’s Rights, and Biodiversity. This also helps in protecting the integrity, standard, quality and originality of the product.
Industrial Design is one of the several elements under the broad category of Intellectual property Rights. It results in the protection of creative and novel shapes or activity given to a certain article for its appearance, characteristics, ornamental and specific appealing and aesthetic looks. Though under the TRIPS Agreement[3], very minimum standards of protection have been given for the same, India has enacted Designs Act, 2000[4] for the protection of designs in order to promote innovative activity and creation in the industry.[5] India passed its first legislation for the protection of Industrial Designs in the year 1872 the Patents and Designs Protection Act, 1872[6], which was followed by the Inventions and Designs Act, 1888[7].
Further, the Patents and Designs Act, 1911[8] also ensured to provide for provisions to protect Industrial Designs, which was in turn removed and repealed by the Patents Act, 1970[9].[10] The Act is further guided and given additional explanation by the Designs Rules, 2001 and the Amendment in 2008 which focuses on the Locarno Classification system.[11] The Manual of Designs Practice and Procedure published in 2011 by the Office of the Controller General of Patents, Designs and Trademarks, along with the new amended Rules of 2011, with the latest amended being The Designs (Amendment), Rules, 2021 has helped to provide a proper categorized understanding of designs in India and its procedure for Registration.[12]
Importance Of Protection Of Designs
The characteristics and aesthetic features of a product have a huge role in impacting a consumer’s mind to choose a certain product. The formula of design is not something new in India as from the age-old days, it has been inculcated and witnessed in the customs, traditions and cultures in small villages and groups. In India, design ranges from small villages to big design firms and companies with people having the skill and the experience in the same. This leads to no proper restricted definition or categorization for the persons making such designs as it involves professionally trained and graduated individuals to not such formally trained or educated people.
But this leads to the differentiation between geographical indications, designs and trademarks. Design just concentrates on the appealing and aesthetic features of a product. It leads to increasing the competitiveness of the vendor or the manufacturer in the product market. The need for design protection is highlighted in the precedent of Gorham Mfg. Co. V. White[13] wherein it was stated that the protection given to design can lead to increasing the demand for it, give a saleable value and lead to a meritorious service to the public.[14] It is essential in order to have a stronghold position in the newly created niche markets, to have own distinct, original, attractive and unique features and designs for the manufactured products to make it appealing to the eye of the customers. This helps in making the products customized and leads to strengthening the brand’s position in the relevant product market by enhancing customer choices in their favour. Design helps in the first stage of creation of a customer base by making it appealing to the eyes which generally is one of the first things that attract the attention of the customers[15].
Subject Matter Of Designs
Industrial design covers the activity by which articles are given the aesthetic or ornamental or appealing effects and appearance of the products or articles, manufactured and produced in a mass number. The UK in 1949 enacted The Registered Designs Act, 1949[16] wherein design included features like shape, pattern, configuration, or ornament and covered the external features of any industrial product.[17]
Designs do sometimes include both the aesthetic and technical features of a product as the design of the product correlates to the functional attributes too. However, for legal protection of designs, and as per under industrial design category under intellectual property law, only the aesthetic features and outer appearances are included and protected. Thus, the word “design” under IPR only refers to and includes the external form and features of the product and external characteristics that make it appealing to the eye, excluding any functional or technical features to be protected under designs.[18]
Section 2(d) of The Designs Act, 2000[19] defines what constitutes “design” and further leads to a restrictive list of things to be considered as design.
It states to include such features only that are related to the shape, configuration, pattern, ornament or composition of lines or colours, which is applied to an article in a 2dimensional or a 3dimensional format with the help of an industrial process or manual, mechanical or chemical means separately or in a combined manner. It has to be ensured that such an addition of design to an article leads to the finished article being judged to be appealing on the sole basis of an eye. It further has to be kept in mind that such a design does not include any mode or principle of construction or any mere mechanical device.
The definition confirms that designs will not include any trademark as per the definition of the same in Section 2(1)(v) of The Trade and Merchandise Marks Act, 1958[20] or any property mark as per the definition under Section 479 of The Indian Penal Code[21] or any artistic work as per the definition of Section 2(c) of The Copyright Act, 1957[22]. The definition of designs under this Section clarifies what can and cannot be constituted as the subject matter of designs.
Further, Section 2(a) of The Designs Act, 2000[23] defines “article” which is important to understand in this reference as to which the designs can be applied and then only the protection can be sought for under this Act. This Section states that an article refers to any such article of manufacture and any artificial or partially artificial and partially natural substance. It also includes any part or portion of an article that can be made and sold in a separate manner.
A reference in this regard is important to be made to Section 4 of The Designs Act, 2000[24] to understand the certain other requirements for something to be considered valid for registration as a design under this Act. It states that for a design to be considered for registration, it should be new or original,and should not disclosed before the priority date of the registration application in any part of India or in any other country be it by the means of publication in tangible form or by its use or in any other way and it should be notably differentiable from existing or known designs or its combination of such.
Section 4 further confirms that any design to be valid for registration should make sure to have no scandalous or obscene content in it. Section 2(g) of The Designs Act, 2000[25]can be referred to for the further understanding of the term “original” wherein it is stated that in the case of design, original explains something that is directly originating from the author of the design and will include old cases with new application in it.
Relevant Precedents
Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008[26]
Under the Designs Act of 2000, the Respondent registered a design for diamond-shaped glass sheets, giving it the only right to produce and sell the design in India. The German business Dornbusch Gravuren GMBH, which granted the Respondent a license to use Indian rights, developed the engraved rollers used in the design. The Respondent sued the Appellant and its associate, IAG Co. Ltd., in the District Court of Mehsana, Gujarat, when they started copying this design and won a restraining order.
The Appellant filed an application under Section 19 of the Designs Act before the Controller of Patents & Designs to cancel the Respondent’s design registration. The Supreme Court held that the appellant was under the burden to show that the design was not new or novel and failed to do so. The Court failed to find evidence that this design on glass sheets was ever produced, registered, or even published in Germany, UK, or India.
The Court stated the Assistant Controller failed to conduct a proper comparison of the registered design with that of the UK design and failed to consider the appearance of the final glass sheet. The Court therefore held that there was indeed a difference between the UK registered design and the design applied to glass sheets in affirming the decision by the High Court.
M/s Kamdhenu Limited Vs. M/s Aashiana Rolling Mills Ltd., 2021[27]
In this case, the plaintiff received registration for his design of a surface pattern having double ribs which was applied to steel bars in 2013 and he claimed that the defendant infringed his right over this registered design by using an identical design and selling such goods in South Delhi. The defendant contended that the design could not be granted registration as even before the plaintiff applied for the same, the design was already available in the public domain.
This precedent thus included two main issues as to whether the plaintiff’s design should be cancelled following the criteria under Section 4 of The Designs Act, 2000 or whether the defendant has violated the right of the plaintiff and infringed it as per Section 22 of The Designs Act, 2000. The Delhi High Court, in this case, cancelled the registration of the design of the plaintiff finding such design to be already present in the public domain and even registered as a part of British and ISO Standards.
TTK Prestige Ltd. Vs. Gupta Light House, 2023[28]
The plaintiff in this case received registration for its design in 2020 for the “Svachh Deluxe Alpha” (Handi) Pressure Cooker. The dispute arises in lieu of the plaintiff claiming its registered design being used without permission and thus resulting in infringement of his rights and piracy being done by the defendant. The Delhi High Court in this precedent upheld the registered design of the plaintiff and preserved his exclusive rights over the pressure cooker design. The Court in this case also observed that the shape and configuration of all pressure cookers are similar with just size variations whereas the one by the plaintiff has a distinctive shape which can be observed by one glance at the cooker due to its bulging mid/lower section which distinguishes it from the conventional shape of cookers.
Thus, it results in the creation of a new unique design for the article which enhances its appeal to the eye of the customers, making it novel and original and fulfilling the criteria under Section 4 of The Designs Act, 2000. Also, the precedent of Castrol India Ltd V. Tide Water Oil Co, 2010[29] was referred to in this case to place reliance on the fact that just because a design is functional in nature, it will not make it ineligible for registration.
Conclusion
Through administrative changes, legislative updates, and court decisions, the Indian design system has undergone tremendous change. It has also embraced technology to facilitate smooth stakeholder interaction. According to the Designs Act of 2000, industrial design rights in India are protected for ten years, with the possibility of a five-year extension. By conforming to international norms and defending the rights of Indian residents and registered proprietors, the government hopes to strengthen the protection of design legislation.
In order to prevent infringement, creators must also be encouraged to register their original designs through awareness campaigns. The Designs Act, 2000 in India is a very strong hold legislation when combined with the Amended Rules and the Manual for the protection of Designs. The Act clearly specifies the subject matter of the designs which makes it a restrictive one with little or no scope of judicial interpretation for expansion of the same.
[1] WIPO – World Intellectual Property Organization, https://www.wipo.int/ (last visited Nov 10, 2024).
[2] Sagar Kishor Savale & Varsha Kishor Savale, INTELLECTUAL PROPERTY RIGHTS (IPR), 5 WORLD JOURNAL OF PHARMACY AND PHARMACEUTICAL SCIENCES (2018), https://www.researchgate.net/publication/328161728_INTELLECTUAL_PROPERTY_RIGHTS_IPR.
[3] The Agreement on Trade-related Aspects of Intellectual Property Rights(TRIPS), 1995
[4] The Designs Act, 2000, No. 16, Acts of Parliament, 2000 (India)
[5] Sagar Kishor Savale & Varsha Kishor Savale, INTELLECTUAL PROPERTY RIGHTS (IPR), 5 WORLD JOURNAL OF PHARMACY AND PHARMACEUTICAL SCIENCES (2018), https://www.researchgate.net/publication/328161728_INTELLECTUAL_PROPERTY_RIGHTS_IPR.
[6] The Patents and Designs Protection Act, 1872 (India)
[7] The Inventions and Designs Act, 1888, No. 5, Acts of Parliament, 1888 (India)
[8] The Patents and Designs Act, 1911, No. 11, Acts of Parliament, 1911 (India)
[9] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India)
[10] Id.
[11] Manual Of Designs Practice &Procedure, https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_30_1_manual-designs-practice-and-procedure.pdf.
[12] Critical Analysis of Design Laws in India with Provisions of Design Act, 2000, 6 International Journal of Creative Research Thoughts (IJCRT) (2018), https://ijcrt.org/papers/IJCRT1813362.pdf.
[13]Gorhan Mfg. Co. V. White, 81U.S. (14 WALL.)511(S.Ct.,1872)
[14] sreekumar.c.nair, AN OVERVIEW OF DESIGN PROTECTION IN INDIA UNDER THE DESIGNS, lawyersclubindia (2009), https://www.lawyersclubindia.com/articles/an-overview-of-design-protection-in-india-under-the-designs-1583.asp (last visited Nov 9, 2024).
[15] Rohit Sharma, Dr. Puja Jaiswal & Prof.Amit Adlakha, Industrial Design and Its Importance in Success of A Product with Special Reference to The Design Act, 2000, 1 Pragyaan: Journal of Law 17 (2011).
[16] The Registered Designs Act, 1949 (UK)
[17] Lalit Jajpura, Bhupinder Singha & Rajkishore Naya, An Introduction to Intellectual Property Rights and Their Importance in Indian Context, 22 Journal of Intellectual Property Rights 32 (2017).
[18] Rohit Sharma, Dr. Puja Jaiswal & Prof.Amit Adlakha, Industrial Design and Its Importance in Success of A Product with Special Reference to The Design Act, 2000, 1 Pragyaan: Journal of Law 17 (2011).
[19] The Designs Act, 2000, S2(d), No. 16, Acts of Parliament, 2000 (India)
[20] The Trade and Merchandise Marks Act, 1958, S2(1)(v), No. 43, Acts of Parliament, 1958 (India)
[21] The Indian Penal Code, 1860, S479, No. 45, Acts of Parliament, 1860 (India)
[22] The Copyright Act, 1957, S2(c), No. 14, Acts of Parliament, 1957 (India)
[23] The Designs Act, 2000, S2(a), No. 16, Acts of Parliament, 2000 (India)
[24] The Designs Act, 2000, S4, No. 16, Acts of Parliament, 2000 (India)
[25] The Designs Act, 2000, S2(g), No. 16, Acts of Parliament, 2000 (India)
[26] Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008, AIR 2008 SCC 2520,
[27] M/s Kamdhenu Limited Vs. M/s Aashiana Rolling Mills Ltd, (2022) 92 PTC 624
[28] TTK Prestige Ltd. Vs. Gupta Light House, 2023, CS(COMM) 865/2022
[29] Castrol India Ltd V. Tide Water Oil Co, 2010, 1996 PTC 16 (Cal)
Author: Himika Sarkar, a 5th year BBALLB student at Christ (Deemed to be University), Lavasa, Pune
