This article is written by Amit Kumar, a final-year student of Campus Law Centre, Faculty of Law, Delhi University, Delhi

Abstract

The history of design law in India has witnessed a continuous evolution to encompass the expanding concept of design, particularly focusing on the aesthetics that enhance an object’s value. The Industrial Revolution in the United Kingdom and Europe significantly influenced India, a British colony at the time, as it developed its legal framework for design protection. Key legislative milestones include the 1787 “Designing and Printing of Linen, Cotton, Calico, and Muslin Act” and the subsequent expansion of protection to various materials and the introduction of registration systems. The evolution culminated in the 2000 Designs Act, aligning with international standards and emphasizing the protection of intellectual property rights associated with original designs. International treaties, such as the Paris Convention, played a pivotal role in shaping design law in India, recognizing both aesthetic and functional elements. As the concept of design continues to expand, the future evolution of design law will depend on its ability to adapt to changing industry needs and dynamics, with an ongoing commitment to balancing the rights of creators and fostering innovation.

Recognition of Design as IP

The concept of design is exceptionally vast and continually evolving, encompassing a wide array of elements. It’s worth noting that design law doesn’t cover every potential aspect of what falls under the broader notion of design. The Design Act primarily, if not exclusively, concerns itself with the outward appearance of objects, specifically focusing on the aesthetic aspects that add value to a product. It pertains to the intellectual creativity involved in creating visually appealing items, ultimately contributing to their monetary worth.

The Designs Act explicitly recognizes and safeguards designs that enhance the aesthetic appeal of a product or article. On the other hand, designs that primarily contribute to the functionality of an article fall outside the purview of this Act and are instead protected under the Patents Act.

The development of design protection is intricately linked to the Industrial Revolution and the advancements in mass production techniques, particularly in the United Kingdom and Europe. India, being a British colony during this period, was significantly influenced by the legal developments in industrial design protection that were taking place in the UK. These developments played a role in shaping the design protection framework in India and adapting it to the changing needs of the time, which ultimately led to the enactment of relevant design protection laws. This historical context underscores the importance of design protection in the context of industrial progress and the legal evolution that accompanied it

In 1787, a significant milestone in the history of industrial design protection was achieved in the United Kingdom with the enactment of the “Designing and Printing of Linen, Cotton, Calico, and Muslin Act.” This legislation marked the first instance of legal provisions specifically addressing concerns related to industrial design and distinguishing it from copyright protection. It represented a crucial recognition of the role of intellectual property in design and its importance in commerce.

Initially, the 1787 Act offered somewhat limited protection for designs, primarily those related to linen, cotton, calico, and muslin patterns. It granted protection for a relatively brief period, starting at two months from the initial publication date. However, in 1794, this protection period was extended to three months, indicating a growing recognition of the value of design protection.

The year 1839 saw the introduction of the first Copyright and Designs Act, which expanded upon the provisions of the 1787 Act. This new legislation went beyond textiles, broadening its protection to include items made from wool, silk, hair, and mixed fabrics. This marked a significant shift in the legal landscape, as it recognized the importance of design protection beyond textiles and established the foundation for contemporary design law.

The second Copyright and Designs Act of 1839 was a pivotal development. It departed from its earlier focus on textiles, now safeguarding any novel or distinctive design, as well as the shape and configuration of manufactured items. Moreover, it introduced a registration system, requiring designs to be registered before publication to be eligible for protection under the Act. This distinction set registered design rights apart from copyright for unregistered designs, expanding the scope of items protected and enhancing the importance of registration.

As the Industrial Revolution continued to evolve, the significance of design in various articles became evident. This led to the culmination of the Design Act of 1842, which further broadened the scope of protection. It extended coverage to encompass any new and original designs, categorizing protectable manufactured items into different classes and specifying varying durations of protection for each class, ranging from 9 months to 3 years. This legislation significantly expanded the legal measures available to address instances of design infringement, recognizing the growing importance of design in industrial progress.

In 1843, the Utility Design Act provided protection for designs with functional features, bridging the gap between patent and design law. It explicitly acknowledged that design protection would only cover the shape and configuration of an article, whereas patent law would govern the use of such articles.

The Copyright of Designs Act of 1850 introduced the concept of ‘provisional registration’ for designs, a concept similar to the modern-day ‘grace period’ granted to designs. Additionally, the Act expanded the range of manufactured items that could receive protection to encompass “Sculpture, Model, Cast, or Reproduction under the safeguard of the Sculpture Acts.”

Throughout the evolution of industrial design law, a delicate balance was sought to be maintained. This balance aimed to avoid impeding the free use of available designs while considering the rights of creators, the duration of protection, the methods of acquisition, and the entitlement to protection. These developments in design law reflected the changing industrial landscape and the growing importance of design as a vital component of intellectual property protection and commerce.

India’s journey in establishing a legal framework for design protection has seen several important developments. It all began with the Patterns and Designs Protection Act of 1872, marking the country’s first step in recognizing and safeguarding designs as intellectual property. This early legislation laid the foundation for the protection of innovative designs.

Subsequently, in 1888, the Inventions and Designs Act was enacted, consolidating and introducing a dedicated section for designs. This Act represented a significant progression in India’s approach to design protection.

However, it was the British Patent and Designs Act of 1907 that set the stage for the Indian Patent and Design Act of 1911. This framework, influenced by the British legal system, laid down comprehensive provisions for the protection of designs. Under this Act, design protection was closely integrated with patents, emphasizing the importance of protecting new and original designs.

In 1930, a pivotal amendment was made to the 1911 Act. The change in the definition of design from “new or original” to “new and original” raised the bar for design protection, establishing more stringent criteria. This amendment reflected a commitment to safeguarding truly unique and innovative designs, setting higher standards for what could be eligible for protection.

The Indian Patent Act and the Indian Patent and Design Act were initially part of the same legal framework. However, following a separation of these two domains, the Design Act continued as it was. This separation recognized the distinct nature of design protection and its role in promoting innovation and creativity.

A significant milestone came in 2000 with the passage of the Design Act 2000, which became effective in 2001. This Act represented a comprehensive modernization of India’s design law, aligning it with contemporary needs and international standards. It marked a crucial step forward in enhancing the protection of industrial designs in India.

The primary and fundamental objective of the Designs Act of 2000 was elucidated by the Supreme Court in the case of Bharat Glass Tube Limited v. Gopal Gas Works. The Court provided a clear definition of the purpose and intent of the Design Act, which is to safeguard the intellectual property rights (IPR) associated with original designs. The overarching goal of the act is to reward innovators for their dedicated research and effort in creating new and distinctive designs. The Court underscored that the protection granted under this act is fundamentally geared towards advancing industries and maintaining their competitiveness at a high level of progress and innovation.

Treaty and Convention

International treaties have played a crucial role in shaping and advancing the legal provisions of design laws around the world, and India is no exception. Among these treaties, the Paris Convention stands out as one of the most influential. This treaty had a profound impact on the definition and protection of industrial designs.

The Paris Convention, with its global reach, offered a comprehensive definition of industrial design, encompassing the decorative elements and features of a functional object. These elements could include both the two-dimensional and three-dimensional aspects related to the shape and surface of the object, collectively contributing to its visual appearance. This definition acknowledged the intricate and multifaceted nature of industrial design, recognizing that it goes beyond mere functionality to encompass aesthetics and form.

One of the significant provisions of the Paris Convention was the introduction of a priority period of six months for industrial designs. This meant that once a design was first disclosed in one member country, the designer had a six-month window to seek protection in other member countries while still benefiting from the initial filing date. This provision aimed to simplify and streamline the process of securing design protection internationally, encouraging designers to explore and expand their markets without losing crucial rights.

Crucially, the Paris Convention emphasized that the protection of industrial designs should not be susceptible to loss of rights, whether due to non-utilization or the importation of items that resembled those already under protection. This reinforced the idea that design rights should be robust and unwavering, ensuring that creators could safeguard their innovative designs even if they were not immediately put into commercial use.

Furthermore, the convention recognized the importance of international exhibitions in promoting and showcasing innovative designs. It provided temporary protection to industrial designs for goods displayed at official or officially recognized international exhibitions conducted within the territory of any participating country. This provision encouraged designers to exhibit their work on the global stage, knowing that their designs would be safeguarded during these exhibitions.

In summary, the Paris Convention, with its comprehensive definition, priority period, and unwavering protection provisions, significantly influenced the legal framework for industrial designs in India and worldwide. It not only recognized the artistic and functional aspects of design but also encouraged international collaboration and innovation in the field of design.

The Hague Agreement, established in 1925, is a system that streamlines the process for design owners from certain countries, enabling them to submit a single application for their designs in multiple states and intergovernmental organizations. This innovation eliminates the need for them to file separate applications for each individual state or organization, significantly simplifying the administrative burden associated with protecting their designs internationally.

The Hague Agreement operates through three distinct acts: the London Act of 2 June 1934, the Hague Act of 28 November 1960, and the Geneva Act of 2 July 1999. Each of these acts comes with its own set of regulations and provisions. Countries can choose to become parties to one, two, or all three of these acts based on their specific needs and priorities. This flexibility allows countries to tailor their participation in the agreement to their own legal and economic contexts.

The original version of the Hague Agreement, the 1925 version, is no longer in effect, as all states parties have transitioned to subsequent instruments. Countries now have the option to become a party to either the 1960 (Hague) Act, the 1999 (Geneva) Act, or both. When a country chooses to join one of these acts, designers and applicants from that country can exclusively utilize the Hague system to seek protection for their designs in other countries that have also ratified the same act. This streamlined approach enhances the efficiency and cost-effectiveness of the international design protection process.

Since January 1, 2010, the application of the London Act has been frozen, meaning it is no longer in use as a part of the Hague Agreement. Therefore, countries and designers primarily focus on the 1960 (Hague) Act and the 1999 (Geneva) Act.

Article 7(4) of this Convention places the responsibility on individual countries within the Union to determine the scope of application of their laws to works of applied art, industrial designs, and models, as well as the specific conditions for their protection. If a work is protected in the country of origin exclusively as a design or model, it will receive equivalent protection in another Union country only if that country also provides similar special protection to such designs and models. If the receiving country does not offer this special protection, the works will be protected as artistic works and will receive protection for a period of twenty-five years from the time of creation.

In essence, the Hague Agreement simplifies the process of protecting designs internationally by allowing centralized applications, and its flexibility in choosing acts accommodates the varying needs of countries. It also emphasizes the importance of equivalent protection for designs and models across participating countries while respecting their individual legal frameworks.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) 1994 is a crucial international agreement under the World Trade Organization (WTO). TRIPS addresses various aspects of intellectual property rights, including industrial design protection. It sets out minimum standards for the protection of industrial designs among its member countries.

he TRIPS Agreement, which stands for Trade-Related Aspects of Intellectual Property Rights, imposes specific requirements on its member countries regarding the protection of industrial designs. To be eligible for protection under TRIPS, industrial designs must meet certain criteria, including being new or original and created independently. Moreover, TRIPS grants member countries the authority to establish the conditions under which designs that lack significant differentiation from known designs or are combinations of known design features are not considered new or original, thus rendering them ineligible for protection.

TRIPS plays a pivotal role in promoting global harmonization of intellectual property standards, including those pertaining to industrial design. This harmonization is crucial for facilitating international trade and fostering innovation and creativity on a worldwide scale. By setting consistent rules and standards for the protection of intellectual property, TRIPS encourages fair competition, safeguards the rights of creators, and contributes to the growth of innovative industries in the global market.

In order to comply with its obligations under TRIPS, India undertook the task of modernizing its legal framework and aligning its intellectual property laws with the provisions of the treaty. This effort culminated in the enactment of the Designs Act in 2000, which serves as the legal framework governing the protection of industrial designs in the country. By adopting the Designs Act, India demonstrated its commitment to meeting international intellectual property standards and fostering an environment conducive to innovation, creativity, and participation in the global marketplace.

After TRIPS

To better understand the evolution of designs act lets see changes made by designs act 2000 over previous Act.These changes reflect the evolution of design law in the country and aim to bring it in line with international standards and address contemporary issues. Following are important changes:

1. Definition of “Original”: The Designs Act of 2000 introduced a definition for “original” in relation to a design, emphasizing that it must originate from the author of the design and may include cases where old designs are new in their application.

In the case of Hello Mineral Water Pvt. Ltd. vs Thermoking California Pure (1999), the Delhi High Court emphasized that novelty is not solely based on the mere form or shape of a design, but rather on a thorough evaluation of the distinctions between the registered and previously published designs by an informed observer.

1. Publication Criteria: Under the 1911 Act, non-registration was determined solely by publication in India. However, the 2000 Act extended this to include publication anywhere in the world, making a design non-registrable.
2. International Classification System: The Act of 2000 introduced the International System of Classification for design registration, replacing the older system.
3. Restoration of Lapsed Designs: The 2000 Act introduced a provision for the restoration of lapsed designs, which was missing in the 1911 Act.
4. Appeal to High Court: The Designs Act of 2000 included a provision for appealing against the decision of the Controller in the High Court instead of the Central Government.
5. Reciprocity Provision: While the 1911 Act had a reciprocity provision with the United Kingdom, the 2000 Act expanded this provision to include other convention countries.
6. Tenure of Protection: In the 1911 Act, design protection initially lasted for five years, extendable to five more years. The 2000 Act extended the period of protection from five to ten years, with a further extension of five years.
7. Protection of Security of India: The Designs Act of 2000 added a provision for the protection of the security of India.
8. Public Order and Morality: The 2000 Act introduced the requirement that a design should not be contrary to public order or morality.
9. Transfer of Cases: The 2000 Act proposed a situation for transferring a case from a district court to the High Court if a party raises questions about the validity of registration in the case of infringement.
10. Registration of Assignment/transfer: The requirement to register any document for the transfer of rights over a registered design was made mandatory

These changes reflect an effort to modernize and align India’s design law with international practices, protect national interests, and address evolving societal and legal considerations.

Conclusion

India’s journey in design protection law has been marked by a series of legislative developments aimed at recognizing the significance of design as intellectual property. From its early steps in the 19th century to the modernization of the law in 2000, India’s legal framework for design protection has evolved to meet the changing needs of its creative and industrial sectors while adhering to international norms and standards. The issue of protecting unregistered designs is of great importance within design law, especially in industries characterized by frequent design changes where the process of registering each new design can be logistically challenging and financially burdensome. It is vital to address this concern to strike a balance between safeguarding the rights of designers and industries and ensuring a practical, accessible, and efficient framework for design protection. Only time will reveal how the law will continue to evolve in this context, adapting to the changing needs and dynamics of the design industry

Reference

1. Intellectual Property Rights in India, V K Ahuja, ISBN : 9789351433880, 2nd Edition
2. Law Relating to Intellectual Property, Dr B L Wadehra, ISBN : 9789350350300, 5th Edition
3. The Designs ACT, 2000
4. India Patent and Designs Act 19011
5. This article was originally written by Mr. Pournav Nair published on legalserviceindia.com. The link for the same is herein.

https://www.legalserviceindia.com/legal/article-475-origin-and-development-of-designs-act-2000.html

1. Critical Analysis of Design Laws in India with Provisions of Design Act, 2000, published on www.ijcrt.org. The link for the same is herein  https://www.ijcrt.org/papers/IJCRT1813362.pdf
2. Paris Convention, 1883
3. Bern Convention, 1886
4. Hague Agreement Concerning the International Registration of Industrial Designs (1925) 
5. TRIPS Agreement 1994
6. Locarno Agreement (1968)
7. Bharat Glass Tube Limited v. Gopal Gas Works 2008 (37) PTC 1 (SC)
8. Hello Mineral Water Pvt. Ltd. vs Thermoking California Pure (1999), 2000 (56) DRJ 700