This article has been written by Mr. Devesh Singh Chauhan, a 2nd year student of Manickchand Pahade Law College, Sambhaji Nagar, Maharashtra.

Introduction

Humans are known for their high IQ, consciousness, and creativity, which sets them apart from any other living creature. This remarkable thinking ability and imagination help humans invent and develop new things that were not in existence before. Every human has a unique perspective, which leads to the creation of various inventions. However, before inventing something new, a blueprint or design is necessary to guide the process and the appearance of the article. Design plays a crucial role in attracting people’s attention towards any product. Intellectual property rights, which include design, patent, copyright, etc., safeguard the inventors’ designs from theft and unauthorized use by others. The term ‘Design’ refers to the visible appearance of the product and not its mechanical features. To regulate and provide rights to inventors, design law was introduced. By registering their design, the innovator or owner can gain protection and recognition before anyone else makes the same design. The ‘first to file, first to get’ provision ensures that the inventor who has registered their design first gets the rights to it. In the business world, registration provides unique recognition to the company, improves competitiveness, and generates additional revenue. The movie ‘Tarzan the Wonder Car’ is an example of the unauthorized use of design law by four investors who stole the car design of Deven Chaudhary (Ajay Devgan), who was seeking investment for his work. If he had registered his design before seeking investment, it would have protected his design from copyright infringement.

Definition of ‘Design’ under Design Act, 2000

The term “Design” refers to features of form, pattern, configuration, ornamentation, or composition of colors or lines that are applied in three dimensions or in two dimensions or in both forms using any process—manual, chemical, mechanical, separate, or combined—that appeal to or are evaluated solely by the eye in the finished article. It excludes any mode of construction, Trademark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), property mark as defined in section 479 of the Indian Penal Code (45 of 1860), and artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 [1].

History of design act

If we take a glimpse of laws in India have some similarities with the laws in the UK due to the 200 years of British rule in India. The history of Design law in the UK dates back to 1787 with the Designing and Printing of Linen Act. Same as the name Act protects the designing and printing of linen and cotton and later it also includes decorative articles. However, the protection provided by the 1787 act was limited, and therefore, the Copyright and Design Act was passed in 1839 to extend protection to modern designs. Although these acts talked about registration, they did not address infringement. To address this, the act of 1842 was introduced, which included remedies for infringement and consolidated all earlier acts. In 1883, a single consolidated and amendment act was passed, which included trademark, design, and patent [2].

Origin and development of design act in India

During the British era, the first act that provided protection and privileges to designs was the Patent and Designs Act of 1872. The act defined “new manufacture” as any new or uniquely created pattern or design, and its application to any material or manufactured good. This act supplemented the 1959 act, which was passed by then Governor-General of India Charles John Canning to provide benefits to innovators and safeguard industrial designs. Later, it was replaced by the Inventions and Designs Act of 1888, which was a clear reflection of the Design act of the UK. In 1911, the British government passed the Patent and Designs Act, repealing all prior legislation and forming a new separate office for the execution of laws relating to designs, to facilitate the procedure for obtaining protection and associate registration, administration, and information facilities in one office [3]. This act grants copyright over designs for ten years following registration. If additional copyright is desired, it may be extended for an additional five years upon filing an application with the registrar and paying the required fee of Rs. 2000 before the ten-year term expires [4]. The process of registration of designs changed in 1930, when the Patent and Design Amendment Act changed the concept of “new and original design” to “new or original design.” There was a drastic change in 1970 when the Patent Act was separated from the 1911 act into the Patent Act of 1970, which solely deals with industrial designs. All the provisions related patent were repealed from the 1911 act. The Design Act of 2000 was enacted in India in compliance with TRIPS, which came into force on May 11, 2001 [5].

Importance of registration of designs 

An article with an attractive, stylish, and appealing design can increase its industrial and commercial value. The purpose of design is to protect it, which in turn encourages fair competition in the industry by maintaining originality, creativity, and novelty of the article. Once a design is registered, it can be easily identified as belonging to a particular brand, and special rights are granted to sell the design as it becomes a business asset. The Design Act not only protects the design but also allows the owner to file a suit against an infringer for loss of sales and damage to goodwill. The registration of a design provides a license to the owner, which can be used as an asset in times of need and provides exclusive rights to the owner against unauthorized copying or imitation of the design by third parties [6].

Essential Requirements for registration

There is some element which is needed to be satisfy for the registration of design are:

• Novelty: For a design to be registered, it must be new and unique, and it should not have been seen before. A new design can be formed by combining previously invented designs to produce new visuals. In the case of Bharat Glass Tube Limited v. Gopal Glass Works Limited, diamond-shaped glass sheets were formed by engraved rollers developed by Dornbusch Gravuren GMBH (also known as the German Company). The Supreme Court dismissed the appeal in this case, indicating that a new visual design can be created by combining former designs [7].
• Prior publication not acceptable: It is important to note that a design should not be made available to the public in any way, including public shows or communication, as it would constitute publication. However, if the design is used for private experimental purposes, it does not amount to publication. In the case of Wimco Ltd versus Meena Match Industries in Bombay, the court stated that if the design is no longer a secret and is in public possession, it is presumed to be published. It is worth noting that if a design has been previously published but not registered, there are two ways in which it can be considered as published – either through a prior document or through prior user [8].
• Visibility of design over finished article:The virtual representation of design is only possible if it is crafted on the article which is in the form of either three-dimensional or two-dimensional. It should be anything like painting, clothing designs, product shapes, etc.
• Virtual representation of finished good: Designs that offend public sentiment and disrupt public harmony are not allowed to register. In the absence of such issues, designs should be registered under Section 5 of the Design Act, 2000, and no government or institution should be able to prohibit them.

Documents required for design registration

In order to get design registration, the aforementioned papers must be submitted.

• A certified copy of the original or certified copies of extracts from the disclaimer
• Affidavits
• Declaration
• Other public documents can be made available on payment of a fee.

However, the controller may regulate the cost involved in design registration according to the fourth schedule [9].

Duration of the registration of a design

The duration of design described under Section 11 of design act, 2000 which provides total duration of registration was 15 year where 10 years given initially from the date of registration and later 5 years extended by the controller with the fees of Rs. 2000 and it should be happen before the expiry of that 10 year period [10].

Conclusion

Design law has undergone many changes in its journey from the UK to India. However, its sole purpose remains to protect designs from piracy and any other infringement. With every amendment, new provisions are added to make design law more rigid. Each amendment increases the rights of the owner over their design and enables them to take action against any infringement of design law. It is essential to protect the rights of designers to encourage creativity and originality in industrial design. This ensures that their hard work is not in vain and that they receive the recognition and compensation they deserve. By safeguarding the designer’s rights, we can foster a more innovative environment.

WIPO (World Intellectual Property Organization) has introduced e-filing, which facilitates an easier way to register designs without any delay. E-filing provides faster delivery of documents, low fees, and the best advantage of fighting against bribery. If every process is done online, including payment and document verification, it reduces the chance of threats by any means. E-filing makes it easier to register designs and find out if there has been any prior publication of the design, including all the details.

In addition to having rigid design laws to protect against infringement, the legislature should also take into consideration the practice of counterfeiting, which affects brand sales and goodwill. Counterfeit products are often indistinguishable from the original, which can harm the originality of the design and the work of makers. To protect the originality of designs and promote the work of makers, we must say no to counterfeiting.

Reference

1. Section 2(d) of The design act, 2000
2. This article was originally written by Balaji P Nadar, published on Scribd. The link for the same herein. https://www.scribd.com/doc/53318556/Evolution-of-Designs-Act-in-India-Protection-of-Industrial-Designs-under-International-IPR-Regime
3. Section 77 of Patents and Designs act, 1911
4. Section 47 of Patents and Designs act, 1911
5. This article was originally written by Tushar Verma, published on Ipleader. The link for the same herein. https://blog.ipleaders.in/salient-features-design-act-2000/
6. This article was originally written by Pranjali Nanadikar, published on Ipleader. The link for the same herein. https://blog.ipleaders.in/steps-involved-in-registration-of-design-act-2000/
7. Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008 (37) PTC 1 (SC)
8. Wimco Ltd , Bombay V Meena Match Industries, Sivakasi, AIR 1983 Del 537 :1983 Rajdhani LR 631.
9. This article was originally published on Indianfilings. The link for the same herein. https://www.indiafilings.com/learn/design-registration-2/
10. Section 11 of Design act, 2000