This article is written by Vasundhara Kashmira, student of Banasthali Vidyapith, 5th year B.A. LLB during internship at LeDroit India.
KEYWORDS
• Design
• Industrial process
• Design Controller
• Infringement
• Rights
• Proprietor
• Penalty
INTRODUCTION
The visual distinction between two items is mostly determined by their design, which also contributes to the products’ initial attraction and lasting impact on the observer. In certain cases, better designed products are also seen to be more useful. Because industrial designs provide a competitive advantage in the market and require a significant investment of time and money to produce, they must be protected. There wouldn’t be much of an incentive to create novel ways of displaying products if illegal industrial design imitation were not stopped. It is going to stifle creativity. Therefore, a particular regulation pertaining to industrial designs is required to aid their preservation.
Aesthetic, functional, economic, and sociopolitical aspects of the design process and the final product must frequently be considered while designing. It could entail a great deal of study, consideration, modeling, interactive modification, and redesign. In the meanwhile, a wide range of items, like as apparel, graphical user interfaces, goods, buildings, corporate identities, business procedures, and even design methodologies or processes, may be created. Only a product’s aesthetic features are protected by industrial design; its practical design is not. Aesthetic and non-functional designs applied to industrial items are often protected under industrial design legislation. These designs only serve to improve industrial items’ visual attractiveness. Typically industrial designs are utilized on things like furniture, packaging, timepieces, textiles and handicrafts. Enhancing these items’ visual attractiveness to customers is what gives them economic worth.
If a design is unique and the original work, it is protected. Since a product’s aesthetic appeal and increased marketability make it essential to safeguard it against imitations, the Design Act is essential to this process. Design rights are a crucial component of intellectual property that safeguards a product’s visual appeal. Protecting distinctive designs is essential for firms in India, given the country’s expanding economy and rising level of creativity. Businesses may preserve their distinctive designs and improve their market presence by comprehending the registration procedure and implementing design protection.
WHAT ARE DESIGN RIGHTS?
A form of intellectual property protection that covers a product’s visual design or look is known as “design rights.” Shape, arrangement, pattern, and decoration are examples of this. The
functional features of a product, which are normally protected by patents, are not covered by these rights. Design rights can be unregistered, which offers less extensive and temporary protection, or registered, which offers stronger protection and exclusive rights. Design rights are intended to keep others from stealing or utilizing your product’s appearance. A product’s shape, configuration, pattern, ornamentation, and overall aesthetic appeal are all protected by design rights. It includes two-dimensional designs like logos, fabrics, and graphics as well as three-dimensional designs like the form or pattern of a product. It’s crucial to remember that functional elements and concepts are not protected by design rights. These rights are intended to stop unauthorized use or duplication of your original design.
The Indian Designs Act of 2000 governs design rights in India. By forbidding unauthorized use or replication, this statute guarantees that the owner of a design has the only right to utilize it. The Designs Act 2000 defines “design” as “any features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether in two or three dimensions, or in both, by any industrial process or means, whether manual, mechanical, or chemical, separate or combined, that in the end appeal to and are judged solely by the eye.” It excludes any mode or principle of construction, anything that is essentially a simple mechanical device, and any trademark.
In Shree Vari Multiplast India Pvt. Ltd. v/s Deputy Controller of Patents & Designs & Others,1 the Hon’ble High Court ruled that competitors may use the same construction techniques or principles to produce competing designs as long as they differ in shape or configuration from the proprietor’s original design.
LEGAL FRAMEWORK FOR PROTECTING DESIGN RIGHTS IN INDIA
In India, the submission, prosecution, and registration of an industrial design are governed by the Designs Act, 2000 and its companion Designs Rules, 2001. Design rules are now governed by the Design Act of 2000. The purpose of this Act is to update and unify the laws pertaining to design protection. On May 12, 2000, it became operative after being published in the Indian Gazette. This statute is both a formal statute and a comprehensive code in and of itself. It encompasses the whole of India.
Salient features of Designs Act 2000 may be traced out:
- The new Act has expanded the meaning of design. Only the visual appearance of an object, including its shape, configuration, pattern, and ornamentation, whether in two or three dimensions, was eligible for design registration under the prior rule. New or unique aspects of shape, configuration pattern, ornamentation, or line or color composition applied to a product, whether in two or three dimensions, or both, can now be registered as designs under the new rule.
The Hon’ble Court held in Vega Auto Accessories (P) Ltd. vs. S.K. Jain Bros. Helmet (I) Pvt2 that when two designs are compared, the fact that they have similar characteristics does not always imply that they should be the same in every way. Instead, they may be almost identical. - A clause asserting precedence from a design application submitted in any nation covered by the Convention has been included. India has signed the Patent Cooperation Treaty and is a member of the WTO and the Paris Convention. Members of these conventions are therefore entitled to preferential rights.
- The Locarno classification, which is based on articles—the subject matter of design—has been chosen as the international categorization system. A ‘Design’ was categorized under the prior rule according to the material used to make the piece.
- The idea of “absolute novelty” has been established, whereby an article’s “novelty” is now evaluated based on its previous publication, not just in India but also in other nations. The situation was unclear under the prior legislation.
In Pilot Pen Co v. Gujarat Industries Private Ltd,3 it was decided that unless the design is unique and pre-existing common type, registration could not be considered effective. However, if a mix of previously recognized designs creates a novel visual appeal, it may be registered under the statute.The opinions of professionals in the field are used to evaluate a design’s originality and innovation. - A design must be made public as soon as it is registered and added to the register. Any member of the public is welcome to see the documents and acquire a certified copy of the entry under the prior Act, it was illegal to see or get a certified copy of any entry in the records during the two-year secret period that followed registration.
According to the ruling in Kemp and Company v. Prima Plastics Ltd.4, a proprietor’s disclosure of a design to a third party cannot be regarded as publishing as long as the disclosure was made in good faith.
Additionally, the court determined that publishing is the reverse of being kept secret in the Wimco Ltd. Bombay v. Meena Match Industries, Sivakasi5 case. If a design is no longer a secret, it is deemed published. If the design has been made public or is in the hands of the general public, there has been a publishing.
Furthermore, a previously published design of this kind cannot be registered. There are two types of publishing: publication by a previous user and publication in a previous document. A cylindrical water dispenser design was not deemed original in the Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure6 case because shape and form alone are insufficient to establish innovation.
- The validity of a design registration is for ten years (from the date of registration, which is also the date of application), after which it is renewable for an additional five years. The previous statute had a five-year lifespan that may be extended for two more five-year terms.
- Within a year after its latest expiration date, a design registration may be reinstated. There was no clause in the prior statute addressing restoration once the design registration expired.
- A Design registration may only be cancelled under the new law in front of the Controller, and a few other grounds have been acknowledged as well:(a) The design’s subject matter is not registrable under the Act; (b) The design is not a “design. “The cancellation was allowed under the previous Act in the High Court within 12 months or later, and before the Controller within 12 months of registration on certain circumstances.
- In the event that the defendant contests the legality of the design registration, the new Act grants a District Court the authority to refer the matter to the High Court, which has jurisdiction.
- The amount of the penalty for violating a registered design has been raised.
ADVANTAGES AND DISADVANTAGES OF THE ACT ADVANTAGES
• Design rights are inexpensive and easy to evaluate, which benefits businesses that need to protect the designs of a wide range of products.
• When a design is registered, it may be protected from infringement by third parties. As an illustration, consider the toy firms that have been prompt in safeguarding doll and accessory variants.
• As is well known, copyright may protect a company’s code, but design rights may be necessary for the company’s appearance. It safeguards its digital products in this way.
• Fast-paced businesses like the fashion industry also benefit greatly from it. Designers may safeguard their goods in important markets by using the speed at which design rights offer a recourse for violation.
DISADVANTAGES
• Only a few designs are rejected based on substantive criteria; the majority are simply rejected if there is a minor procedural problem.
• The Design Act only offers protection for a short 15 years, thus businesses would prefer to obtain a trademark or copyright, depending on their article, which offers longer protection.
• Unlike copyright, design rights are only available in the UK if no specific application is made in the other nations.
• A person can also get protection if he creates a certain design with just minor modifications to the original.
ISSUES AND CHALLENGES
• People don’t know enough about the online registration procedure.
• There are many more requirements than necessary for the registration process.
• There is a lack of appropriate progress updates and the registration period should be shortened to six months.
• Due to market restrictions and the demand for the finished product, the process needs to be accelerated.
• Because most violations are unreported and enforcement is poor, there is a lack of confidence in the legal ramifications.
• Although the Designs Act protects over 98% of designs, small businesses nonetheless copy them.
LANDMARK JUDGEMENT
M/S.Whirlpool Of India Ltd. v. M/S.Videocon Industries Ltd.7
Facts: In this instance, Whirlpool had two registered signs. Later, Videocon registered a design that seemed like a copy at first glance and shared the Plaintiff’s characteristics, arrangement, and shape—a whirlpool. Since Videocon had previously registered, they said, they were immune from liability for both infringement and passing off, which are not applicable to registered designs.
Judgement: The Court determined that the plaintiff’s and defendant’s designs were comparable. Videocon, the defendant, was found accountable for violating and copying the plaintiff’s design.
Bharat Glass Tube Limited v. Gopal Gas Works Ltd. (2008)8
The respondents had registered and received a certificate for their diamond-shaped glass sheet design. With this design, the appellants started their marketing. These designs were created in collaboration with a German company.
When they learned that the appellants were abusing their design, they took the matter to court. Because the German business had been utilizing the respondents’ ideas since 1992 and they had already been published in the UK Patent Office, the appellants claimed that the designs were no longer new.
When the case was appealed to the High Court, the designs were returned to the respondents. When the case reached the Supreme Court, it upheld the Calcutta High Court’s verdict.
Disney Enterprises Inc. v. Prime Housewares Ltd. (2014)9
In India, the issue of international industrial design registration became contentious. The Disney corporations filed a lawsuit against Prime Housewares, a Mumbai-based business that once produced figures like Mickey Mouse, Donald Duck, and others, alleging that the latter had violated their internationally registered designs.
According to the Delhi High Court, Indian law protects the plaintiff’s trademark but not the designs. The trademark infringement of the enterprises was ordered by the court. All infringing content had to be sent to the businesses by the Indian company so that it could not be used again.
SUGGESTIONS AND CONCUSION
- Broaden the Scope of Protection: At the moment, India’s design protection laws only cover aesthetics, leaving out functional components. The scope might be increased by adding new design types (such virtual or visual user interfaces), incomplete designs, and functional elements where practical.
- Simplify Registration and Exam Procedures: In India, the design registration procedure may be cumbersome, even with recent advancements. The process might be accelerated and made more effective by implementing more reliable digital platforms, automation, and artificial intelligence to manage design categorization and inspection.
- Reinforcement Mechanisms: The existing system of fines for design violation might not be a powerful enough deterrent. Punitive tactics for repeat offenders and increased fines and penalties may be more effective ways to deter infringement.
- Encourage Public Knowledge and Capacity Building: Raising public knowledge of design rights through campaigns, seminars, and educational initiatives—especially targeted at MSMEs, entrepreneurs, and designers—can support the development of an innovative and IP- rights-respecting culture.
- Promote worldwide Harmonization: The Hague Agreement, which promotes worldwide design registration, does not include India. By signing this pact, Indian designers will have easier access to numerous countries for design protection, fostering global competitiveness.
CONCLUSION
In conclusion, a wider range of protection, more efficient registration procedures, more robust enforcement tools, and initiatives for global harmonization will all improve India’s design rights regime. These upgrades will create an atmosphere that is more conducive to invention, increasing the competitiveness of Indian companies abroad and giving designers and inventors strong protection. In addition to helping designers, bolstering the design rights framework will boost the economy by encouraging innovation and drawing in foreign capital.
REFERENCES
https://www.lexology.com/library/detail.aspx?g=82ce6f03-de3d-4923-b224-4fff545f55ca
https://aishwaryasandeep.in/design-patents-enhancing-aesthetics-in-indian- manufacturing/
https://chambers.com/articles/shape-of-goods-trademark-or-design
