This Article Is Written By Anushka Singh, 3rd Year BA.LLB, D.E.S Shri Navalmal Firodia Law College, Pune during Her Internship at Ledroit India
ABSTRACT:
Inventive design protection is a key that opens the door for India’s economy to the world, providing a legal monopoly on the product’s aesthetic to encourage innovation and secure a commercial value. This paper serves as a guide to the legal system under the Designs Act, 2000, detailing a design’s life cycle from registration to enforcement. This paper bases its argument on the review of the Designs Act, 2000, its rules, and court decisions. The important issues discussed in this article are the definition of “design, ” the criteria for registration, the rights of the proprietor, and the complex personality of the law in terms of copyright and trademark overlap.
The final point evaluates the system’s efficiency, pointing out court rulings, problems such as digital designs, and future reforms, including specialized IP benches. This article provides a comprehensive overview of the legal framework governing the protection of industrial designs in India. It sets out to explain and evaluate the complete lifecycle of a design right, meticulously detailing the governing statute, the Designs Act, 2000, from the initial application process through to the enforcement of rights against piracy.
Keywords: Inventive design protection, innovation, Designs Act 2000, registration, copyright, trademark, future reforms, digital designs, specialized IP benches.
INTRODUCTION:
Industrial design is the term used for the attractive or decorative parts of the article, such as its shape or pattern. It is a product’s visual side only the “look and feel” of the product. The legal system, as represented by the Designs Act, 2000, protects these features visually while it is clear that the technical and functional aspects are those of patent law.
The power of this protection lies in the fact that consumer choice in India’s design, driven economy (e.g., auto, fashion, electronics) is mostly based on visual appeal. A sound legal framework is necessary to shield this investment, thus ensuring that creators can get a return on their work and that competition remains fair. It is an integral part of national innovation programs like “Make in India.”
This report is a review of the Indian legal system regarding industrial designs. It will explain the basic legal concepts, examine the procedural life cycle from the application to the issuance, and analyse the enforcement, remedies, and the complicated overlaps with copyright and trademark law aspects.
CONCEPT OF INDUSTRIAL DESIGNS:
1. Meaning Of Industrial Design:
The legal structure’s foundation is the formal description of “design” in Section 2(d) of the Designs Act, 2000. The section specifies a “design” as:
An example highlighting the main characteristic of the design is the following:
“…only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article…”
The major feature of the law is that these visual features must, “in the finished article appeal to and are judged solely by the eye”. This “eye test” is the core point of design law.
Alongside the definition, there are also some cornerstones, which come in the form of negative exclusions; it even goes further and enumerates: ” … any mode or principle of construction, ” ” … in substance a mere mechanical device, ” “any trade, mark, ” or “any artistic work”. This distinction establishes the fundamental difference that design law regulates the aesthetics of a product (what a product looks like), while at the same time, patent law deals with the functionality (how a product works).
2. Economic And Commercial Importance
In a marketplace filled with similar products, the uniquely designed one serves as a significant market differentiator and a major consumer preference driver in markets like smartphones, cars
By way of a design registration, the owner who acquires an exclusive right will be in a position to add a lot of market value not only to the product but also to the brand. Such a legal monopoly facilitates fair competition as it offers a guaranteed return on the huge investment that is necessary for design development.
3. Difference from other types of IP
The “judged solely by the eye” test is a crucial point in the legal framework that separates industrial designs from the other main forms of intellectual property. It is very important to understand these differences.
• Design vs. Patent: This is the “Aesthetics vs. Function” issue. A patent safeguards a technical invention (how a product works), and the technicality is evaluated by a “person skilled in the art.” A design rights cover the decorative aspects the visual novelty “judged solely by the eye.” The duration of a patent is 20 years.
• Design vs. Copyright: This is the “Industrial vs. Artistic” distinction. Copyright is a protection for original artistic works (e.g., paintings), which comes automatically at the time of creation and lasts for the author’s lifetime plus 60 years. Design rights only cover the industrial application of aesthetic design on a commercial article, hence the need for registration, and the protection period is not more than 15 years.
• Design vs. Trademark: This is the “Appearance vs. Source” distinction. A trademark is a source identifier (like a logo or brand name) that distinguishes one entity’s goods from another, and this is based on the “likelihood of confusion” in the consumer’s mind. A design is the visual aspect that attracts the consumer. A trademark may be renewed indefinitely.
EVOLUTION OF THE LEGAL FRAMEWORK IN INDIA:
1. Historical Background
Design protection in India has been based on British, derived laws of the colonial era, starting with the Patent and Designs Act, 1872. It was later merged into the Indian Patent and Designs Act, 1911. The Patents Act, 1970, which brought a modern patent framework, only the parts of the 1911 law dealing with patents were repealed, while the design provisions of the colonial era remained intact for another 30 years.
2. The Designs Act and associated rules
The anomaly was cleared up by India’s WTO membership and TRIPS Agreement ratification. The 1911 Act was not in line with TRIPS. Therefore, the Indian Parliament passed the Designs Act, 2000, which not only repealed the remaining provisions of the 1911 Act but also realigned the legal framework with the country’s international commitments.
The Indian Designs Act, 2000 was enacted with the dual objectives of meeting TRIPS requirements and fostering the creation of industrial designs. Among the important features of the modernization were:
• Absolute Novelty: A more universal concept of “absolute novelty” was introduced instead of the local “novelty in India” whereby a design had to be new anywhere in the world.
• Locarno Classification: The internationally accepted Locarno Classification system for grouping was adopted.
International priority: It made the provisions for priority claims from the foreign application under the Paris Convention more straightforward.
The comprehensive procedural framework is specified in the Designs Rules, 2001.
3. Administrative Authority
The Designs Act, 2000 is overseen by the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM), which is under the Department for Promotion of Industry and Internal Trade (DPIIT). The Design Office situated in Kolkata is where the examination and registration of design rights are carried out though application filing can be done at different Patent Office branches.
SUBJECT MATTER AND SCOPE OF PROTECTION:
1. What Can Be Registered as a Design
A design for registration has to be one that is applied to “an article of manufacture”; a design cannot just be an idea. A registration is made for a particular article (e.g., “a bottle”) of a certain class. Only the aesthetic, visual features “judged solely by the eye” are acceptable. The design also has to be “capable of being applied… by any industrial process, ” which means that it is for mass production and thus differs from a unique “work of art.” A design for a part of an article is registrable, but only if that part is “capable of being made and sold separately.”
The traditional idea of a design being something applied to a physical “article” has, in the digital era, caused problems, especially in the case of the registration of GUIs.
2. What Cannot Be Protected
The Act and rules provide the subject matter that are deducted deliberately.
• The Functionality Exclusion: A design cannot be registered if it “is functionally dictated.” If the shape is the only way of achieving the technical result, then it is a functional one and should be under the patent system. It also excludes “mere mechanical device[s]” and “must, fit” designs in which the shape is determined by the need to connect to another product.
• Public Order and Morality: Designs that are “contrary to public order or morality” or “scandalous or obscene” are not registrable.
• Non, IP: As per the definition, a “design” does not incorporate any “trade mark” or “artistic work.”
• Security of India: The Controller, if he thinks it is “prejudicial to the security of India, ” can refuse or cancel any design.”
CONDITIONS FOR REGISTRATION:
1. Novelty and Originality
Novelty is the main prerequisite for a design registration to be valid. The Act stipulates that the design must be “new or original”.
• “New” (Novelty): The 2000 Act sets an “absolute novelty” standard. In other words, the design must not have been “disclosed to the public, anywhere in India or in any other country” by publication or use prior to the date of the application (or priority) (date). Any disclosure anywhere in the world can be a novelty killer.
• “Original”: Section 2(g) defines “original” as “one including cases which though old in themselves yet are new in their application.” This means one can get a patent for new application of old or publicly available elements.
There are limited exceptions to prior publication, such as for disclosures at registered exhibitions or those made in bad faith.
2. Not Previously Registered
A design cannot be registered in the event that it was already registered in India. Also, it has to be “significantly distinguishable from known designs or a combination of known designs.” “Mere trade variants” cannot be registered; the new design’s “ocular impression” should be to a great extent different from the prior art.
PROCEDURE FOR REGISTRATION OF INDUSTRIAL DESIGNS:
1. Filing of the application
“Any person” may file an application if he/she claims to be the owner of a new design. The application (Form, 1), which can be in English or Hindi, and is submitted to the Designs Office or its branches, should have:
• Representations: As this is the most essential part, the applicant must provide “exact representations” (e.g. drawings, photographs) which clearly show multiple views of the entire design.
• Article and Class: The application should mention the name of the article and its class according to the Locarno Classification.
• Statement of Novelty: A statement indicating the specific features that are new or original (e.g., “novelty resides in the unique shape”).
2. Examination
Different from some other jurisdictions, the examination is done automatically and no special request is necessary. The Designs Office carries out formal (correct forms, fees) and substantive examination of the filed application. The examiner evaluates if the design is “new or original”, has not been previously published, and is not non, registrable (e.g., functional). If the file is found with objections, an Examination Report is sent, and the applicant may respond or attend a hearing.
3. Acceptance, publication and registration
After the applicant removes all objections, the acceptance of the application and registration of the design takes place. A certificate of registration is given to the applicant. Subsequently, the Controller advertises “the prescribed particulars of the design” in the official journal. Only after registration and publication is the design available for public viewing.
4. Duration of protection and renewal
The rights that are given by registration are limited.
• Initial Term: The registered proprietor is given a “copyright” (i.e., the exclusive right) in the design for ten years starting from the date of registration (or from the priority date if such is claimed).
• Renewal: The proprietor is allowed to renew the term for a further period of five years only.
• Renewal Procedure: If the proprietor wants to keep this renewal, he should file a request (Form, 3) and pay the fee before the expiry of the first ten years of the term.
• Maximum Term: The whole period of non, renewable protection for an industrial design in India is fifteen years.
• Restoration: The design which has been terminated due to the failure to pay the renewal fee may be reinstated within a period of one year counting from the date of termination.
RIGHTS CONFERRED BY REGISTRATION:
1. Exclusive rights of the registered proprietor
As per Section 11, the proprietor will be entitled to a “copyright in the design” which is granted upon registration. This is a sui generis (unique) right, separate from artistic copyright under the Copyright Act, 1957. Basically, it is a “negative right”, the exclusive right to prohibit all other persons from commercially exploiting the design without consent. More particularly, this includes such exclusive rights as the right to:
• Use the design on any article belonging to the registered class.
• The import for sale of any article to which the design has been applied.
• The publication or exhibition for sale of any such article.
These rights are territorial, and may be put into effect all over India.
2. Assignment and licensing
A design that is registered is an intangible asset and may be put to use for commercial gains.
The owner is allowed to sell and assign (transfer) the right to another person and/or company, or issue a license to a third party granting permission to use the design. For an assignment or a license to be legally binding, especially in relation to third parties, it has to be entered in the Register of Designs.
INFRINGEMENT AND REMEDIES:
1. What Amounts to Piracy of a Registered Design
The Designs Act, 2000, is quite a unique piece of legislation in that it does not directly refer to an “infringement” of a design. Rather, it characterizes in Section 22 the unauthorized use of a registered design as “piracy of a registered design”.
Piracy is the act which happens when a person, knowingly and without the proprietor’s written consent, during the period of the design copyright:
1. For the sake of sale uses the design or any “fraudulent or obvious imitation” of it to any article in the registered class.
2. Brings in for sale an article to which the design or its imitation has been applied.
3. Makes public or exposes for sale such an article, if he knows that it is an infringement.
The wrongful acts must be for business purposes, not for private use. The court applies a visual legal test when it determines whether something is an “obvious imitation”. The court considers the overall visual impression of the allegedly infringing product from the standpoint of an “average customer with imperfect recollection” or the “eye of the purchaser”.
2. Civil remedies
Section 22(2) offers the registered proprietor two alternative choices of action. The proprietor may only take one:
• Remedy (a), Statutory Penalty:
• File a suit to recover a sum not exceeding ₹25, 000 for every contravention, which can be recovered as a contract debt.
• The remedy is limited by a total cap for any one design of ₹50, 000.
• Remedy (b), Injunction and Damages:
• Initiate a civil suit for:
1. Injunction – The court’s order to stop the recurrence of the piracy.
2. The reclaim of the actual damages incurred.
As a matter of fact, the ₹50, 000 limit under Remedy (a) is of little significance in economic terms and thus, it is not a deterrent at all. A serious proprietor has no option but to choose Remedy (b) in order to obtain the injunction which is the only effective means of putting an end to the continuing commercial damage. Any legal action should be brought before a court at least of the level of District Court.
3. Defences available to the alleged infringer
The main defence in a piracy case is to challenge the validity of the design registration of the plaintiff. According to Section 22(3) of the Act, the defendant may raise “every ground on which the registration of a design may be cancelled” under Section 19 in response to the plaintiff’s assertion of the infringement. In effect, this provision turns every infringement case into a trial on design validity.
The major points for cancellation (and hence, defence) include:
• The design in question was previously registered in India.
• The design was published in India or any other country prior to the date of registration (i.e., lack of absolute novelty).
• The design is not new and/or not original.
• The design cannot be registered under the Act (e.g., it is a design solely determined by function).
If the defendant pleads the defence of invalidity in a District Court, the case is referred to the High Court for decision. Therefore, a design registration certificate is not an unquestionable right; it is simply prima facie (at first sight) evidence of validity, which can be contested.
OVERLAP WITH OTHER INTELLECTUAL PROPERTY RIGHTS:
Carefully managing the overlaps between different intellectual property rights is a highly complicated issue, yet at the same time, it is pivotal from a strategic point of view. The decision hinges on which is to be protected. Industrial Designs (Designs Act, 2000) are the ones that safeguard the aesthetic/ornamental side of the article (e.g., shape, pattern), based on the standard of absolute novelty judged ‘solely by the eye.’ The protection comes with the registration and lasts for a maximum of 15 years.
Whereas patents (Patents Act, 1970) are there to protect a new technical invention (how it works). The main difference is that the standard is much higher, requiring novelty, an inventive step, and industrial applicability. The duration of a patent is 20 years.
Copyright (Copyright Act, 1957) is the legal protection for original literary and artistic works (e.g., paintings, books, software code). The protection is given automatically upon creation and is based on the originality of the expression. It lasts for the creator’s life plus 60 years.
Finally, Trademarks (Trade Marks Act, 1999) are legally mandated characters that allow consumers to differentiate between the goods or services of various traders (e.g. logos, brand names, or slogans). The criteria used is distinctiveness and ‘likelihood of confusion.’ A trademark may be renewed forever.
1. Designs and copyright
This is the most significant and the riskiest overlap, controlled by Section 15 of the Copyright Act, 1957. The law intention is to avoid double protection; a creator cannot have both long, term, automatic copyright protection and short, term, commercial monopoly of a design right for the same item.
• Section 15(1): This provision declares that copyright shall not subsist in a design that has been registered under the Designs Act.
• Section 15(2): This is the “trap.” It refers to the designs that can be registered as designs but have not been. It indicates that copyright in such a work (e.g., an “artistic work” like a sketch for a new chair) shall terminate (become extinguished) when any article to which the design is applied has been made more than fifty times by an industrial process.
The effect of Section 15(2) is significant: a designer who counts on his/her “automatic” copyright and neglects to register the design will find his/her copyright protection disappear at the moment the 51st unit is made. After that, he/she has zero rights.
2. Designs and trademarks
This overlap dealt with the shape of a product or the packaging (trade dress) protection. Such a shape can be a design (because of its aesthetic novelty) and a trademark (because of its ability to identify the source). The Indian Trade Marks Act, 1999, permits “shape of goods” registration as a trademark explicitly.
This presents a strategic decision:
• Design Registration: Keeps the shape of the product new. It is generally quicker to get but is only valid for 15 years.
• Trademark Registration: Keeps the distinctiveness of the shape as a source identifier. It is difficult to be proved; the applicant should demonstrate that consumers identify the shape with a specific company and that the shape is not functional. However, if approved, a trademark registration can be renewed indefinitely.
The most common method is to employ the rights one after another: initially, the design is registered for a 15, year monopoly. Within this time, promote the product extensively in order to create the “secondary meaning” or “goodwill” which is necessary for the registration of the shape as a trademark before the expiry of the design right. You can file a composite suit for design infringement and the common, law action of “passing off”.
3. Designs and patents
This is the clearest difference. The decision depends on what is innovative:
• Design: Focus on what it looks like (aesthetic, decorative features).
• Patent: Focus on how it works (functional, technical features).
If the unique selling point is the visual side, then submit a design application. If it is the technical side, then a patent application should be filed. Different protection types may apply to different parts of the same product; for example, an internal motor can be covered by a utility patent, while the external casing can be registered as a design.
INTERNATIONAL DIMENSION:
1. TRIPS Agreement and India
India, as a WTO member, is bound by the TRIPS Agreement.
• Article 25 of TRIPS requires members to protect “new or original” industrial designs and expressly allow members to refuse protection for designs “essentially dictated by technical or functional considerations”, a choice that India has fully exercised.
• Article 26 mandates that members provide an exclusive right to the owner and sets the minimum duration of protection to ten years.
The Designs Act, 2000, was drafted mainly to comply with these TRIPS obligations. The Indian system even exceeds these minimums by offering a 15, year term and also providing for the stringent standard of “absolute novelty, ” thus representing a “TRIPS, plus” approach.
2. Priority claims and foreign applicants
India belongs to the Paris Convention for the Protection of Industrial Property. The main feature of this agreement is the “right of priority.” It permits an applicant from any member country to file a design application first in their home country. Then, provided that the corresponding filing in India is made within six months of the first filing, the Indian application will be considered to have the filing date of the original application. This priority claim is vital for keeping the novelty when filing globally.
RECENT TRENDS, CASE LAW AND PRACTICAL ISSUES:
1. Key judicial decisions
Two recent court decisions provide examples of how laws concerning design are being enforced in reality.
• On Novelty and Prior Publication: M/S Crocs Inc. USA v. M/S Liberty Shoes Ltd
This case is an example of a registered design concept being its own worst enemy. Crocs brought a suit against Liberty Shoes for the infringement of their clog design which had been registered by Crocs. One of the main points of the defendants was that the registration of Crocs was null and void because there was prior publication, a claim that is supported by Section 22(3).
The Delhi High Court in its interim injunction review found that there was appearance of truth that the design had been disclosed to the public before the date of registration by Crocs. As one of the pieces of evidence, there were pictures of Crocs’s own website, showing that the registration was not the first disclosure. The court demonstrated that a registration is not infallible and that the “absolute novelty” standard will be rigorously applied.
• On Infringement Test and Composite Suits: Cello Household Products v. Modware India.
This is a case which can be considered an exemplary model for turning the law into reality. Cello as a registered design owner of “Puro” water bottle filed a case against Modware for piracy, alleging the “Kudoz” bottle was a copy. The injunction was granted by the Bombay High Court. The right “eye test” was used by the court when it said that the question is not whether the designs are identically the same but whether the “essentials of that which makes it visually appealing have been substantially… copied”.
Not only this case confirmed the “imperfect recollection” test but also it supported the plaintiffs’ right to bring a “composite suit” for statutory design infringement and the common, law tort of passing off.
2. Emerging sectors
The major contemporary challenge to the Designs Act, 2000, is from the digital economy. The Act was meant for physical, industrial, age products, however, most of today’s valuable designs are virtual ones such as Graphical User Interfaces (GUIs), icons, and fonts.
The Designs Office has in the past been “reluctant” to grant registrations to GUIs, mostly rejecting them on the basis that:
1. A virtual GUI cannot be considered an “article of manufacture” as stipulated by Section 2(d).
2. The design is not “consistent, ” as it can only be seen when the product is in the “ON” mode.
3. A GUI is the result of software code and, therefore, a matter for copyright.
The deadlock was addressed in the landmark 2023 case, UST Global (Singapore) Pte Ltd v. Controller. The Calcutta High Court disagreed with the Controller’s decision to refuse a GUI registration and overturned it. The Court said that the argument about the “ON mode” was “wrong” and that built, in features (like GUIs) which improve the “aesthetic value of the product” can be registered. The Court directed the application back to the Controller for a new decision, thus, showing that the judiciary is ready to interpret the 2000 Act in the light of the modern context.
3. Practical challenges
Though the law on the relative is fairly strong, there are still some major practical challenges.
• Awareness: The issue of the lack of awareness regarding the rights of designs has been greatly discussed, especially among Small and Medium Enterprises (SMEs), the creative industry of independent designers, and the artisan community, which in most cases, are the groups most susceptible to infringement of their rights.
• Enforcement: It is hard, expensive, and time, consuming to execute the law. Design piracy, especially in the fashion industry, is “rampant”. The judicial system is stretched to its limits, and the large amount of money and time needed for the case might discourage the rights holders, especially SMEs, to exercise their rights.
FUTURE DIRECTIONS AND REFORM:
1. Need for more explicit rules for intersecting IP rights
The confusion that arises at the point where designs, copyright, and trademarks are combined is still a major factor for a large number of lawsuits and the lack of understanding of the change. The “Section 15 trap” in the Copyright Act and the quite complicated criteria for “shape mark” trademarks cause legal risks. It is necessary either for clearer legislative changes or, at least, for official administrative guidelines to clarify these aspects.
2. Reforms for Enforcement and the World
The Indian design regulation is not a closed matter; it is undergoing substantial changes.
- Domestic Reforms (Specialized Benches): The government, in April 2021, decided to do away with the Intellectual Property Appellate Board (IPAB). Thus, all appeals from IP Offices and cancellation actions are now to be dealt with by the High Courts. The Delhi High Court, (later, the Madras High Court) to be able to handle such a heavy workload, has created a dedicated Intellectual Property Division (IPD). The Delhi HC IPD has its own specialized procedural rules (DHC, IPD Rules, 2022) to facilitate and accelerate IP dispute settlement.
- International Reforms (Treaties): India is progressively aligning its design framework with the worldwide network. Joining the Hague Agreement Concerning the International Registration of Industrial Designs is still a significant policy target. The Hague System enables a designer to present a single worldwide application to get design protection in up to 99 countries. In addition, to this major move, India has signed the new Riyadh Design Law Treaty (DLT) (adopted in November 2024). The agreement merges procedures (not substantive law), thus making operations like e, filing simpler and, also, it introduces a compulsory 12, month grace period to make registration quicker and more accessible, mainly for MSMEs.
CONCLUSION:
The Designs Act, 2000, provides a robust, TRIPS, compliant foundation for India’s “design, led” economy, with strong “absolute novelty” standards and a 15, year protection term. Nevertheless, the framework does not cover everything thoroughly. The statutory damages limitation of ₹50, 000 under Section 22 is insufficient to strongly deter wrongdoings, thus forcing parties to go to court for injunctions in costly litigations.
As the Act was designed for an industrial economy, it does not have the necessary features for the digital era, especially for GUIs, whereby the court has to resort to case law in order to “patch” the statute. In addition, the overlapping of legal areas namely copyright and trademark law, which cause significant uncertainty and risk, while the gap of IP awareness, especially among SMEs, is a critical issue, has been identified as well.
The framework is not fixed. The establishment of specialized IP Divisions in the High Courts and India’s adherence to the new Design Law Treaty are robust, far, reaching, and reform, oriented signals. The legal framework’s continuous transformation will, as India makes its economic future dependent on innovation, be a decisive factor for the country’s success.
