This article has been written by Mr. Atul Chaudhary, a 3rd Year Student of M.S. Law College, Mumbai.

Abstract

The British Parliament passed “The Patterns and Designs Act, 1872” in order to protect Industrial Designs, marking the introduction of Industrial Designs during the British era. This was the first time that India had passed legislation to protect industrial designs. In 1911, the British Parliament enacted “The Patents and Designs Act, 1911,” which established procedures for registering design applications in India and guaranteed and offered protection against design infringement. To bolster the protection of industrial designs, the Indian government did, however, develop new legislation in 2000 after a number of years of delay. This act was essentially passed to implement the TRIPS Agreement and to combine and modify the laws pertaining to design protection.

CONCEPT OF INDUSTRIAL DESIGN RIGHTS – THE GLOBAL PERSPECTIVE  

Industrial Design Rights is a part of the intellectual property rights that provides the rights of exclusiveness to the visible designs of objects like textile, jewellery, furniture, flower vase or any other decorative items that are usually not popular utilitarian. Design protects design of the industrial object as well as its appearance. It aids in constructing any material or item much attractive and appealing resulting in growing trading viability of product and help in increasing its market eventuality1.  Human beings are creative and that creative tendency derives inspirations from nature. This creativity leads to designs that are unique in nature and force the human soul towards its beauty since it appeals to the finer senses and the eye. It can be said that The Design Act, 2000. Human beings are creative and that creative tendency derives inspirations from nature. This creativity leads to designs that are unique in nature and force the human soul towards its beauty since it appeals to the finer senses and the eye. It can be said that The Design Act, 2000 essentially protects the elements of design which can be judged only by the eye.

A design is applied to an object and it is not the object itself. Design applied to an object ought to be something that to be provided to the consumer as a finished goods. As Intellectual property is of two-fold nature, so the rights granted on a design varies from country-to-country in aspects of both national as well as international arena. Any type of artistic creation possesses designs rights as well as copyright over it. Design law provides provisions of protecting any article in national as well as international arena, and in order to acquire protection registration of such design is essential under law.

Hence, the international protection of industrial design must not only be judged as an element of industrial property but also as an element of copyright law, as some of the national laws are applied to designs of an artistic work as well. Generally, industrial design protection is countryspecific. But if the owner of a design desires to safeguard a design in another country, he must separately seek protection in each country under the respective relevant laws.  If application has been made for registration of design in India, it provides protection only in India. Yet there is no provision where a single application will be enough to protect design rights internationally. However, there are several international conventions that administer the fundamental requirements of intellectual property protection in industrial designs. For design registration, an application must be filed with the Indian patent and design office that appropriately establishes a priority date for a design application filed in a country that complies with international treaties, Paris convention3, and TRIPS, as well as local laws. Following section is an examination of many international treaties pertaining to industrial design in comparison with the Indian Designs Act, 2000.

The Paris convention for the protection of industrial property, 1883, was the first international convention at the international level that was established for the protection of industrial property (WIPO).This convention is the corner stone of the international system pertinent to all types of industrial property in broadest sense, including industrial design that provides protection to the individuals as well as to the commercial sectors of industrial property.  This convention took the first initiative in protecting the works of a creator in other countries as well and requires the member countries to acquire minimum protection for industrial properties. It was through this convention which establishes that same protection must be given to a creation as one would give to the national citizen of its own state. India, as a signatory or member of the Paris treaty, protects industrial designs. The countries to whom this convention applies form an industrial property protection union5. In context of Industrial design, this convention was mainly designed to unify the norms of protection of design among the member.

The Paris convention for the protection of industrial property, 1883, was the first international convention at the international level that was established for the protection of industrial property (WIPO).This convention is the corner stone of the international system pertinent to all types of industrial property in broadest sense, including industrial design that provides protection to the individuals as well as to the commercial sectors of industrial property.  This convention took the first initiative in protecting the works of a creator in other countries as well and requires the member countries to acquire minimum protection for industrial properties. It was through this convention which establishes that same protection must be given to a creation as one would give to the national citizen of its own state. India, as a signatory or member of the Paris treaty, protects industrial designs. The countries to whom this convention applies form an industrial property protection union5. In context of Industrial design, this convention was mainly designed to unify the norms of protection of design among the member

Loopholes IN THE DESIGNS ACT, 2000 ARISING DUE TO NON COMPLIANCE  

1. ISSUE OF COMPULSORY LICENSE AFFECTING THE PROTECTION OF INDUSTRIAL DESIGN  Article 5B11 of the Paris Convention states that industrial design protection shall not be forfeited for failure to work or for the importation of items identical to those covered. Members therefore have an in-built discretion to provide for compulsory license to ensure the working of the product. However, the Designs Act 2000 does not provide for compulsory licenses.
2. ISSUE OF COMPULSORY LICENSE AFFECTING THE PROTECTION OF INDUSTRIAL DESIGN  Article 5B11 of the Paris Convention states that industrial design protection shall not be forfeited for failure to work or for the importation of items identical to those covered. Members therefore have an in-built discretion to provide for compulsory license to ensure the working of the product. However, the Designs Act 2000 does not provide for compulsory licenses.
3. CONDITIONAL COMPLIANCE IN RELATION TO ADOPTION OF LOCARNO CLASSIFICATION (DESIGN AMENDMENT RULES, 2021)

Until January 25, 2021, the Indian Classification of Industrial Designs was based on the Locarno Classification’s tenth edition, which contained 31 classes and a miscellaneous Class 99. The World Intellectual Property Organization (WIPO) published the tenth edition of the Locarno Classification in 2013, but it omitted classes for diverse items made utilising cuttingedge technologies. However, the Designs (Amendment) Rules, 202113 require that the articles claimed in design applications must be classified in accordance with the most recent version of the World Intellectual Property Organization’s International Classification for Industrial Designs (Locarno Classification)” (WIPO). As a result, applicants will rely on the Locarno Classification’s 13th Edition, which became effective on January 1, 2021, until WIPO announces a new classification. The Locarno Classification’s most recent edition comprises 32 groupings and 237 subclasses, as well as explanations.  The revised rules allow applicants to submit applications using the most recent classes and subclasses indicated in the Locarno Classification, rather than the earlier classifications specified in the Third Schedule of The Designs Regulations. Allowing applicants and agents to utilise the most recent version of the Locarno Classification simplifies the process of filing Design Applications for freshly generated articles by allowing them to use the most relevant classes/sub-classes, avoiding misunderstandings about the articles’ kind and usage.

Until January 25, 2021, the Indian Classification of Industrial Designs was based on the Locarno Classification’s tenth edition, which contained 31 classes and a miscellaneous Class 99. The World Intellectual Property Organization (WIPO) published the tenth edition of the Locarno Classification in 2013, but it omitted classes for diverse items made utilising cuttingedge technologies. However, the Designs (Amendment) Rules, 202113 require that the articles claimed in design applications must be classified in accordance with the most recent version of the World Intellectual Property Organization’s International Classification for Industrial Designs (Locarno Classification)” (WIPO). As a result, applicants will rely on the Locarno Classification’s 13th Edition, which became effective on January 1, 2021, until WIPO announces a new classification. The Locarno Classification’s most recent edition comprises 32 groupings and 237 subclasses, as well as explanations.  The revised rules allow applicants to submit applications using the most recent classes and subclasses indicated in the Locarno Classification, rather than the earlier classifications specified in the Third Schedule of The Designs Regulations. Allowing applicants and agents to utilise the most recent version of the Locarno Classification simplifies the process of filing Design Applications for freshly generated articles by allowing them to use the most relevant classes/sub-classes, avoiding misunderstandings about the articles’ kind and usage.

Case Laws

Niki Tasha Pvt. Ltd. v. Faridabad Gas Gadgets Pvt. Ltd.

Pleading for the grant of an interlocutory injunction requires the plaintiff to prove or show that the balance of convenience lies in his favor. In this case, the court held that there would be no grant of an interlocutory injunction unless the court is completely satisfied that there is a real possibility of the plaintiff succeeding in the lawsuit.

Calico Printers Association Ltd. v. Ahmed Abdul Karim

In this case, the court held that in the instance of industrial design infringement, the order for delivery up of the infringed articles could be made by the court as a reasonable or equitable relief to the registered design’s proprietor, even though the same was not expressly provided in the Act.

Micolube India Ltd. v. Rakesh Kumar

The Delhi High Court’s larger bench upheld the availability of the passing off remedy concerning industrial design infringement in the nation.

M/S Kamdhenu Limited v. M/S Aashiana Rolling Mills Ltd

In a case involving a registered design pertaining to double rib pattern of steel rods, the Delhi High Court cancelled the registration summarily stating that there is no need for a full trial. The Court came to this conclusion primarily based on the fact that the design that formed part of the registration was published as part of British, ISO and other standards before the filing date of the design application. Based on the evidence on record, the Court stated that the  application for cancellation of the Registered Design has a high likelihood of success, and that no further evidence needs to  be led in this respect. While stating so, the Court pointed out that a strong prima facie case at the interim level does not necessarily give rise to a high likelihood of success.

CONCLUSION

In a country like India, one of the numerous reasons why designs are often not protected is that market dynamics in clothes and technology are constantly changing, and new models must keep up with current trends. The condition that a design should not be in the public sphere before registration is something that the majority of these corporations are unable to achieve, resulting in an increase in piracy and infringement on a daily basis. The duration of industrial design protection has also become a point of contention. This is also why businesses choose to file for copyrights and trademarks, as it offers them with a longer period of protection, especially if the design of the corporation is the sole source of profitability in the marketplace. As a result of which, it becomes significant that more provisions are introduced resolving the issues mentioned above, thus ensuring enough protection to the industrial designs. However, even with these issues, India has ensured that an appropriate structure is in place to protect the industrial designs of every individual, entrepreneur, inventor, innovator, and producer on the market.

References

This article was originally written by Paras Gupta The link for the same is herein

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This article was originally Published by kashishipr The link for the same is herein

https://www.kashishipr.com/blog/india-liability-of-industrial-design-infringement/#:~:text=Section%2022(a)%20of%20the,be%20more%20than%20Rs%2050%2C000.