CRITICAL ANALYSIS OF THE DESIGNS ACT, 2000.

SUBMITTED AS A PARTIAL FULFILLMENT OF THE COURSE

CURRICULLUM OF CLINICAL PAPER (IPR).

SUBMITTED TO: MRS. NIDHI BUCH

FACULTY CO-ORDINATOR
SUBMITTED BY: REGN NO. – 04A053.
X SEMESTER.

GUJARAT NATIONAL LAW UNIVERSITY.

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 CONTENTS PAGE NUMBER
1.Introduction 3
2. Salient new features of the 4
designs Act, 2000.
3. Essential characteristics of a design. 6
4. Subject-matter of designs. 8
5. Procedure of registration of a design. 10
6. Infringement of a registered design and 12
remedies under the act.
7. Overlapping Legislations: Copyright 14
Under The Designs Act & Copyright Act.

INTRODUCTION

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Liberalization has brought with it unlimited options for the Indian
consumer who now has numerous alternatives for any single
product. This change has revolutionized the Indian consumers
outlook as also the sellers approach. No longer do the sellers
have to establish only their reliability and integrity in the market,
but they have to also appease the aesthetic senses of the
consumer. More than ever before, sellers are required to package
and market their products in a manner which appeases the
consumer and which a consumer could recognize and relate to.
Considering the huge amount of capital and effort expended by
manufacturers and marketers in establishing the recognition of
consumers through the presentation and appearance of their
products, it is essential that the law protect the designs that
emanate from these efforts of the manufacturers of goods.

Like other intellectual property rights, the right in a design is also

an intellectual property right. The object of the Designs Act is to
protect the aesthetic appearance of an article if it is original or
novel. The law presumes that an aesthetic appearance is the
result of intellectual efforts. The protection given by the law
relating to designs to those who produce new and original
designs is primarily to advance industries and keep them at a
high level of competitive progress. There has been a
considerable increase in the registration of designs. To provide
more effective protection to registered designs and to promote
designs activity, in order to promote design element in an article
of production, it has become necessary to make the legal system
of providing protection to industrial designs more efficient. It is
also intended to ensure that the law does not unnecessarily
extend protection beyond what is necessary, to create the
required incentive for design activity, while removing
impediments to the free use of available designs.

The Designs Act, 2000 is a consolidating and amending Act

relating to the protection of design. From the statements of the
objects and reasons of the new Act, it appears that the framers of
the law became aware of the considerable progress in the field of
Science and technology, the changing scenario in the
international trade and globalization of Indian economy, which
had taken place since the enactment of the old Act in 1911, also
made it essential for this law to be at par with the international
trends in design administration. As such, one of the objects of the

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new Act was to ensure effective protection to registered designs.
One of the objects was also to ensure that law does not
unnecessarily extend protection beyond what is necessary to
create the required incentive for design activity and one of the
main objects was to remove impediment to the free use of
available design.1

SALIENT NEW FEATURES OF THE DESIGNS ACT, 2000.

1. International classification based upon Locarno

classification has been adopted wherein the classification is
2

based on articles, the subject matter of design. Under the

previous law a Design was classified on the basis of the material
of which the article was made.

2. A provision claiming priority from a Design application filed

in any Convention country has been introduced. India is a
member of WTO, Paris convention and has also signed Patent Co-
operation Treaty. As a result members to these conventions can
claim priority rights.

3. The definition of Design under the new Act has been widened.
Under the previous law, the Design registration was granted only
for the visual appearance of an article which included shape,
configuration pattern, and ornamentation whether in 2 or 3
dimensions. Under new law, a Design registration can now be
obtained for new or original features of shape, configuration
pattern, ornamentation or composition of lines or colours as
applied to an article, whether in 2 or 3 dimensions or both.

4. A concept of absolute novelty has been introduced

whereby a novelty would now be judged based on prior
publication of an article not only in India but also in other
countries. Under the previous law, the position was ambiguous.

5. A Design registration has been brought within the domain

of the public records right from the date it is physically placed
on the Register. Any member of public can take inspection of the
1
IAG Company Ltd. v. Triveni Glass Ltd. 2005 (30) PTC 143
2
See Locarno Classification, available at http://www.ipo.gov.uk/types/design/d-applying/d-after/d-
class.htm.

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records and obtain a certified copy of the entry. In the previous
Act, there was a 2-year confidential period post registration,
which prohibited taking inspection/certified copy of any entry in
the records.

6. A Design registration would be valid for 10 years (from the

date of registration which is also the date of application)
renewable for a further period of 5 years. Under the previous law
the validation period was 5 years which was extendable for 2
terms of 5 years each.

7. A Design registration can be restored within a year from its

last date of expiry. Under the previous law, no provision relating
to restoration upon expiration of the Design registration was
provided.

8. Cancellation of a Design registration under the new law is

possible only before the Controller and there are a couple of
additional grounds which have been recognized:

8.1 The subject matter of Design not registerable under the Act.

8.2 The subject matter does not qualify as a Design under the
Act.

Under the previous Act, the cancellation was provided for before
the Controller within 12 months from registration on limited
grounds and in the High Court within 12 months or thereafter.

9. Under the new Act, a District Court has been given power to
transfer a case to the High Court having jurisdiction in the event
the defendant challenges the validity of Design registration.

The above mentioned new features have been introduced with

the intent of bringing the Indian design legislation in conformity
with other design legislations of the advanced economies of the
world and at the same time give necessary impetus to trade and
industry in this country.

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ESSENTIAL CHARACTERISTICS OF A DESIGN.

Those who wish to purchase an article for use are often

influenced in their choice not only by its practical efficiency but
also by its appearance.3 The physical appearance of goods really
means design. The appearance of an article is dictated by the
design it wears. The primary purpose of a design is to interest the
aesthetic and visual senses of a consumer with intent to induce
him into purchasing the article, without the necessity of having to
reveal the identity of the manufacturer or the producer. Design
must necessarily mean something which determines the
appearance of an article, or some part of an article. Designs are
applied to an article with the objective of ornamenting the article.
If a particular feature is so embossed on an article that it does
not appeal to the eye at all and is not capable of attracting a

3
Samsonite Corporation v. Vijay Sales 1998 (18) PTC 372 [Del].

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purchaser in any manner for the purchase thereof, then such
feature will not fall within the scope of a design.4

Design, is defined in Section 2 (d) of the Designs Act 2000 as

follows:

S. 2(d) – Design means only the features of shape, configuration,

pattern, ornament or composition of lines or colours applied to
any article whether in two dimensional or three dimensional or in
both forms, by any industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye;
but does not include any trade mark as defined in clause (v) of
sub-section (1) of section 2 of the Trade and Merchandise Marks
Act, 1958 or the property mark as defined in section 479 of the
Indian Penal Code or any artistic work as defined in clause (c) of
section 2 of the Copyright Act, 1957.

Design primarily represents features of shapes, configuration,

pattern, ornament or composition of lines. Design does not imply
the article but the features which are a conception, suggestion or
an idea of a shape.5 Such features should be applied to an article,
which in the finished article appeals to and are judged solely by
the consumers eye.

If a design is not visible to the eye then it will not qualify for
registration under the Designs Act for the very reason that it
would fail to influence consumers into purchasing the article on
which it is embossed.6 The eye should be the eye of an average
consumer and not that of an expert or an experienced / seasoned
dealer.

For the purposes of registration under the Designs Act it is not of

significance whether the design has any utility and/or
usefulness.7 Thus an important aspect of a design is that it should
have the ability of being the deciding factor for purchase of an
4
Corning, Incorporated, U.S.A v. Raj Kumar Garg, 2004 54 SCL 378.

5
Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors 2002 (24) PTC 449 [Del]

6
Re. Stenor Ltd. v. Whitesides (Clitheroe) Ltd., 63 RPC 81.

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article by a consumer. If a consumer develops a positive
perception of an article purely on the basis of its outwardly
features, irrespective of its utility, then such features would
definitely qualify for registration under the Designs Act. Similarly,
a visual characterization of an article which influences a person
to purchase an article in preference to other articles which are
identical in function but differ in appearance, such
characterization would also meet the criteria of a design.8 If the
features of a design are dictated, caused or prompted solely by
or attributable only to the function which the article is required to
perform, then such features cannot be registered as a design,
even though such features may also appeal to the eye. A design
will not protect any technical features of an article.

For a design to qualify for registration under the Designs Act it is

important that the design should also he new and original. The
test for novelty and originality is dependent on determining the
type of mental activity involved in conceiving the design in
question. If the design is a mere trade variation of a previous
design then the designer could be said to have kept an existing
design in view and made some changes. There should be some
original mental application involved when conceiving a new
design.9

The introduction of ordinary trade variants into an old design will

not make the new design novel or original. Mere workshop
improvements will not qualify for registration under the Designs
Act. The word original implies that the person had originated
something; that by the exercise of intellectual activity he had
started an idea which had not occurred to anyone before.
Original would mean something that no person had created
earlier for any purpose whatsoever. New would imply something
which is not necessarily original but which has been applied to an
article for the first time. What is novel need not also be new.
There may be a new arrangement of features that may appeal to
the eye.10
7
Glaxo Smithkline Consumer Healthcare and Co. KG v. Amigo Brushes Private Limited and Anr, 2004
(28) PTC 1 (Del).

8
Samsonite Corporation v. Vijay Sales, supra Note 3.
9
Western Engineering Company v. America Lock Company, ILR (1973) 11 Del.

10
Wimco Ltd. v. Meena Match Industries, AIR 1983 Del 537.

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SUBJECT-MATTER OF DESIGNS.

An article is distinguished not only by its utility but also by its

visual appeal which too usually play an important role in shaping
the buyers preference for the article. Therefore, the design of an
article and even design of its packaging is important from the
commercial viewpoint.

Designs which are not new or original or have been disclosed to

the public anywhere in India or in any other country by
publication or not significantly distinguishable from known
designs or combinations of known designs or comprise or contain
scandalous or obscene matter are not registerable under the
Designs Act. A design can be registerable only when it is new or
original and not previously published in India. Though the word
publication has not been defined by the Designs Act, 2000, to
constitute publication, a design must be available to the public or
it has been shown or disclosed to some person who is not bound
to keep it secret.

Publication can occur in two types

(i) Publication in prior document.

(ii) Publication by prior user.

Publication in prior document would result when the design has

already been published in a document which is easily available.
The private or the secret use or an experimental use of a design
will not constitute publication by prior use. The exhibition of a
design or an article to which the design has been applied in an
industrial or other exhibition notified by the Central Government
would not constitute infringement of the design if prior notice of
such exhibition is given to the Controller of Patents and Designs
and an application for registration is made within six months of
the date of first exhibiting or publication of the design.

The Delhi High Court has held that Publication means the
opposite of being kept secret. It is considered published if a
design is no longer a secret. There is publication if the design has

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been disclosed to the public or the public is put in possession of
the design. The disclosure even to one person is sufficient to
constitute publication.11

A design would be registerable if the pattern though already

known is applied to a new article. What is essential is that the
design must be new with respect to the class of article to which it
has been applied. The novelty or originality is to be judged on the
evidence of experts in the trade. An expert who is aware of what
is common trade knowledge and usage in the class of goods to
which the design is applied would be the one entitled to pass the
verdict on the novelty and originality. Colour may form a part of
design but the colour by itself cannot constitute a subject-matter
of design.

11
Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors 2002 (24) PTC 449 [Del]

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PROCEDURE OF REGISTRATION OF A DESIGN.

The procedure for registration of a design is comparatively

simple when compared to procedure for registration of a patent
or a trademark.

Briefly, the procedure consists of the following steps:

(1) Submission of application

(2) Acceptance / objections / refusal

(3) Removal of objections/appeal to Central Government

(4) Decision of Central Government

(5) Registration of the design.

Submission of application

The proprietor of the design has to file application for registration

of the design. According to section 5(1), the controller may on
application made by any person claiming to be the proprietor of
any new or original design not previously published in any
country and which is not contrary to public order and morality,
register the design under the Act. The application is to be
accompanied by the prescribed fee and in prescribed Form and in
prescribed manner.

The application under section 5 shall be accompanied by four

copies of the representation of the design and the applicant shall
state the class in which the design is to be registered. The
applicant is also to file a brief statement of novelty with the:
application.

The Designs Act, 2000, which he claims for his design lays down
31 classes plus miscellaneous class 99 of goods to which
ornamental designs, etc., and which are capable of being
registered under this Act generally apply.

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Acceptance/Objection

On consideration of the application if the Controller finds that the

applicant fulfils all the prescribed requirements, he shall register
the designs. If on consideration of the application any objections
appear to the Controller, a statement of these objections shall be
sent to the applicant or his agent.

Removal of Objection/Appeal to the Central Government

The applicant has to remove the objection within one month of

communication of the objections to him failing which the
application shall be deemed to have been withdrawn. He may
also apply to the Controller for being heard on the matter. When
the Controller refuses the application after the submission, he
may directly appeal to the Central Government whose decision is
final.

Decision of the Central Government

The decision of the Central Government on the registrability of

the design is final.

Registration of the Design

On acceptance of design filed in respect of an application, the

Controller shall direct the registration and publication of the
particulars of the application and the representation of the article
to which the design has been applied, in the Official Gazette.
When published in the Gazette, the controller may select one or
more views of the representation of the design, which in his
opinion would depict the design best.

(1) When the design is accepted, there shall be entered in the

Register of Design, in addition to the particulars required by the
Act, the number of the design, the class in which it is registered,
the date of filing the application for registration in this country,
the reciprocity date, if any, claim for the registration, and such
other matters as would effect the validity or proprietorship of
design.

(2) When such Register of Design is maintained wholly or partly

on computer under floppies or diskettes, such computer floppies

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or diskettes shall be maintained under superintendence and
control of Controller and in case of any dispute or doubt with
regard to information of designs, the information as contained in
the back-up file or master file shall be final.

(3) Where the accepted design is one in respect of which a

reciprocity date has been allowed, registration, the extension or
the expiration of the copyright in the said design shall be
reckoned from such reciprocity date.

On the completion of the above procedure, the Controller shall

grant a certificate of registration to the proprietor of the design.

INFRINGEMENT OF A REGISTERED DESIGN AND

REMEDIES UNDER THE ACT.

Infringement of a copyright in design is termed as "Piracy of a

registered Design". It is not lawful for any person during the
existence of copyright to do the following acts without the
consent or licence of the registered proprietor of the design.
Section 22 of the Designs Act, 2000, lays down that the following
acts amount to piracy:

(1) To publish or to have it published or expose for sale any

article of the class in question on which either the design or any
fraudulent or obvious imitation has been applied.

(2) To either apply or cause to apply the design that is registered

to any class of goods covered by the registration, the design or
any imitation of it.

(3) To import for the purpose of sale any article belonging to the
class in which the design has been registered and to which the
design or a fraudulent or obvious imitation thereof has been
applied.

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In fact any unauthorized application of the registered design or a
fraudulent or obvious imitation thereof to any article covered by
the registration for trade purpose or the import of such articles
for sale is a piracy or infringement of the copyright in the design.

Fraudulent/Obvious Imitation:

A distinction is made between fraudulent and obvious imitation.

The only common factor between the two is that both should be
imitations. Thus even in the case of fraudulent imitation the
design applied must be an imitation of the registered design. In a
fraud the imitation has been made with the intention to deceive
another person with the knowledge that what is being done is a
violation of the other persons right. Where, therefore, fraudulent
imitation is established even if the imitation is rather clumsy and
not obvious, the Court will declare it as an infringement of
copyright in the design. There must be exact duplication, an
imitation of the registered design. Nothing less than imitation is
sufficient to establish piracy.

Fraudulent imitation must mean If a man knowing that the

pattern is a registered design, goes and imitates it, and does that
without sufficient invention on his own part, that would be
fraudulent imitation, if in fact it is an imitation (an exact copy of
the registered design).

Judicial Remedy

The judicial remedy for infringement of a registered design

recommended in the Act is damages alongwith an injunction.
Section 22(2) stipulates remedy in the form of payment of a
certain sum of money by the person who pirates a registered
design. A suit in the appropriate manner for seeking the relief in
the form of an injunction is also recommended.

Jurisdiction of the Court

A suit under section 22 is to be instituted in a District Court or a

High Court depending upon the quantum of damages claimed.
The provisions of this section do not exclude action for passing
off and for rendition of accounts. A person complaining
infringement of his design can certainly ask for accounts from the
defendant to show the profits earned by the defendant which

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would be the loss sustained by him which he could claim as
damages. A suit for injunction restraining infringement of
registered design and for rendition of accounts is, therefore,
maintainable only when filed in the appropriate court.

OVERLAPPING LEGISLATIONS: COPYRIGHT UNDER THE

DESIGNS ACT & COPYRIGHT ACT

The exclusive right conferred on a design is termed as copyright

in design. This should not be confused with exclusive right
granted for literary and artistic work also termed a copyright in
the literary and artistic work. There may be certain designs which
can qualify for registration under both the Designs Act and the
Copyright Act. Copyright in an industrial design is governed by
the Indian Designs Act 2000.

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If a design is registered under the Designs Act, it is not eligible
for protection under the Copyright Act.12 In the case of a design
which is capable of being registered under the Designs Act, but
not so registered, copyright will subsist under the Copyright Act,
but it will cease to exists as soon as any article to which the
design has been applied has been reproduced more than 50
times by an industrial process by the owner of the Copyright or
with his license by any other person.13 It would, therefore, follow
that those industrial designs which are not registerable under the
Designs Act get protection under the Copyright Act provided it
comes within the scope of section 13 of the Act as original Artistic
works.

A design capable of being registered means a design possessing

when they were made those essential characteristics which
qualify them as designs. If such designs are, at that time, used or
intended to be used for the purposes of industrial reproduction,
they are not to qualify for Copyright under the Copyright Act. 14
There is an overlapping area of the applicability of the Designs
Act and the Copyright Act but they cannot be applied at the same
time for protection of the same subject-matter.

12
S. 15(1) of the Copyright Act 1957.
13
S.15 (2) of the Copyright Act 1957.
14
Interlego v. Tyco [1988] RPC 343.

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