The Design Act in India protects only those Design, which are solely appealed by eye or in other words, the Design which are aesthetic in Nature are protectable in India.
1. The Act: Earlier the Design Law in India was governed by Design Act 1911. There has been considerable growth in the area of science and technology since the enactment of the Design Act, 1911. It was also felt that a better legal system is required to ensure effective protection of a registered Design. The enactment of new act was also necessary in order to bring the India Design Law at par with the International Law. The Design Act 1911 has been repealed and replaced by Design Act 2000. Presently the Law pertaining to Design in India is governed by Design Act 2000.
2. Definition of DESIGN: A Design is defined in Section 2 (d) of Design Act 2000, which is reproduced herein below.
"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 mode or principle of construction or anything which is in substance a mere mechanical device, and 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 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.'
In other words the Design Act 2000 defines a Design as two-dimensional or three-dimensional features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article by any manual, chemical, or mechanical (separate or combined) industrial process or means, which in the finished article appeal to and are judged solely by the eye. The Design Act 2000 in India specifically excludes any mode or principle of construction or anything which is in substance a mere mechanical device. The Design Act in India also excludes any trade mark, property mark or any artistic work.
3. WHY OWNER OF A DESIGN SHOULD BE VIGILANT ABOUT PROTECTING THE DESIGN: The design is the aesthetic features applied to an article and hence it becomes major force to attract the consumer attraction. The Design of an article has tremendous marketing value. The Industrial Design is business assets of a company. The design of an article increases the competitiveness of the Company in the market. The owner of a design should be very much vigilant as the pirates in the market may seriously jeopardize the exclusive right of the Company in its Design. In order to obviate such problem, it is strongly recommended that the Company should get its Design Registered.
4. THE BENEFIT OF A REGISTERED DESIGN: The registered Proprietor of a Design hold the exclusive right to apply the Design in respect of the Article in relation to which the Design is registered.
5. WHAT DESIGN ARE REGISTRABLE: The Design Act 2000 defines the Registrable Design in negative way. Section 4 of the Design Act 2000 defines the non-registrable Design in following way:
'Prohibition of registration of certain designs.
A design which-
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or
(c) is not significantly distinguishable from known designs or combination of known designs; or
(d) comprises or contains scandalous or obscene matter, shall not be registered.'
It is apparent that a Design, in order to qualify for registration it must be new , original and not previously published in India. Publication of a Design means publication in Public. The use of a Design for private purposes or only for research purpose does not amount to be publication in Public.
A design is registrable, even if the pattern though already known, is applied to new article. For example, the Shape of spider man , if applied to geometry box is registrable. It is necessary that the design must be new with respect to the class of the article to which it has been applied. A combination of already existing Design may also be registrable, provided the combination gives rise to new aesthetic appeal to eye.
A design is not registrable in case it comprises or contains scandalous or obscene matter.
6. PROCEDURE OF REGISTRATION OF A DESIGN: Section 5 of the Design Act 2000 provides for the procedure for obtaining the Design registration, which is reproduced here in below.
'(1) The Controller may, on the application of 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 or morality, register the design under this Act:
Provided that the Controller shall before such registration refer the application for examination, by an examiner appointed under sub-section (2) of section 3, as to whether such design is capable of being registered under this Act and the rules made there under and consider the report of the examiner on such reference.
(2) Every application under sub-section (1) shall be in the prescribed form and shall be filed in the patent office in the prescribed manner and shall be accompanied by the prescribed fee.
(3) A design may be registered in not more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Controller may decide the question.
(4) The Controller may, if he thinks fit, refuse to register any design presented to him for registration; but any person aggrieved by any such refusal may appeal to the High Court.
(5) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned.
(6) An design when registered shall be registered as of the date of the application for registration.'
There are 4 design offices in India, located in Kolkata, Chennai, Mumbai and New Delhi. Each design office is provided with specific territorial Jurisdiction in India. The Design Application can be filed in the respective offices according to territorial jurisdiction.
Any person, claiming to be owner of a new and original design, ,may apply for obtaining registration of Design. The Application of a Design has to be filed in 4 copies with requisite official fee of Rs.1000/-. The application must specify the class in relation to which it is to be registered. The following information is required to be furnished by the Applicant of a Design:
- Full Name/ Address/Nationality of Applicant
- Photographs/Drawing of the Article in each pose(front view, back view, top view, bottom view, side view etc.). Six copies of each view has to be filed.
- The Power of attorney.
The Details of the Design
- Title of Article
- Statement of Novelty in the Design;
- Class & Sub Class of the article in respect of which the Design is used.
- The Photographs/Drawings of Design taken from different angle (e.g. front, back, top, bottom, side, another side and perspective views of the article (7 copies of each view);
- The size of each representation must not be less than 5 by 4 inches or 13 by 10 centimetres wide.
After filing of the Design Application, the Design Office provides the application number and filing date of the Design Application and send the same to the applicant/attorney of the Applicant.
The Procedure for obtaining Design registration is respectively simple , as compared to Trade Mark and Patent. The Design office conduct the examination of the Design Application. Syndicate this Article
The Design office examines the Design Application and in case it is found to be not offending any of the provision, the registration certificate is issued to the Applicant. In case of any doubt , a hearing a appointed and then, if the office is satisfied, the registration certificate is issued.
7. DURATION OF A REGISTERED DESIGN: Section 11 of the Design Act provides for the tenure of a registered Design, which is reproduced here in below:
'Copyright on registration.
(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.
(2) If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years.'
The registered Design is initially registered for a term of 10 years. The registered design can be further registered for a period of 5 years. Thus total protection of a registered design is for a period of 15 years.
8. REMEDIES AVAILABEL FOR HOLDER OF A REGISTERED DESIGN: The Section 22 of the Design Act provides for remedies available to the registered proprietor of a Design. Section 22 of the Design Act 2000 is reproduced here in below:
(1) During the existence of copyright in any design it shall not be lawful for any person-
(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
(2) If any person acts in contravention of this section, he shall be liable for every contravention-
(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or
(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof to pay such damages as may be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees:
Provided further that no suit or any other proceeding for relief under this sub-section shall be instituted in any court below the court of District Judge.
(3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defense.
(4) Notwithstanding anything contained in the second proviso to sub-section (2), where any ground on which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceeding shall be transferred by the court, in which the suit or such other proceeding is pending, to the High Court for decision.
(5) When the court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.'
A registered proprietor of a Design may file a Civil Suit of infringement against the other person who are guilty of pirating the registered Design. The Court may grant permanent or interim injunction against the infringers. The Court may also grant damages against the infringers. In Suit of infringement of Design, in case the Defendant takes the ground of Section 19 of Design Act, challenging the validity of a registered Design, then under Section 22 (4) of the Design Act, the case has to be tried by High Court only. Unlike Trade Marks and Copyright Act, there is no any specific provision of criminal remedy in case of infringement of registered Design. The Design registration is valid only for a particular country.
9. WHETHER A REGISTERED DESIGN CAN BE CANCELLED: Section 19 of the Design Act provides the ground on the basis of which a registered Design can be cancelled. Section 22 of the Design Act 2000 is reproduced here in below:
'Cancellation of registration.
(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
(e) that it is not a design as defined under clause (d) of section 2.
(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.
Any person interested may file a petition for rectification of the registered Design on the grounds mentioned in the Section 19 of the Act, before the office of controller of Design.