Changes in the global economic situation have brought forth numerous new issues which need to be resolved through a pragmatic global approach. One such pressing issue is protection of Intellectual Property Rights (“IPR”). Governments of countries worldwide joined hands to formulate World Intellectual Property Organization (“WIPO”) where member countries are under an obligation to provide legal means to the creator of an original and new design to prevent its misuse by third parties.
This bulletin aims to highlight the meaning of designs, why there is a need to protect them, main provisions of Indian Design Act, 2000 (“the Act”) and the role played by judiciary in protecting the creator of an original design. Finally, it touches upon the method to protect new designs amongst the signatory countries to WIPO.
1. What is a design?
A design1 is the ornamental or aesthetic aspect of an article2. Primarily, design means the features such as shape, configuration, pattern, ornament, or composition of lines or colors which forms an article. Therefore, an article created by means of an industrial, manual, or chemical process should as a finished product appeal to the eyes. Designs are applicable to a wide variety of products from different industries and handicrafts; for example, technical and medical instruments to watches, jewelry, and other luxury items. The Courts in India have held that article includes any part of an article which is capable of being made and sold separately. In Marico Limited v. Raj Oil Mills Limited3 it was held that, “The meaning of article under Section 2 (a) of the Designs Act, includes that such article should be capable of being sold separately; it should have separate commercial existence to be qualified as an article.” The definition of design does not take within its ambit any artistic works which are provided protection under the Copyright Act, 19574.1
1.1 Need to protect designs
Albert Einstein stated “imagination is more important than knowledge5” which explains the need for safeguarding IPR. There is an ever increasing need to protect designs, through registration under the Act, because an article seems striking due to its design which enhances its appeal, thus increasing its marketability. A designer through his imagination creates an original design. While creating a design, he spends his time, energy, and resources. Therefore, there is a need to protect a design thus ensuring that the owner (i.e. the person or entity that has registered the design) is assured an exclusive right against unauthorized copying or imitation of the design by third parties. Further, an original creator must get a fair
return on investment made while creating an original design. An effective system of protection also benefits consumers and the public at large, promotes fair competition, and encourages creativity6.
1.2 Prerequisite for registering a design
A design can be registered only if it is new or original and never published previously in India or any other country7. “New” means that no identical or similar design is known to have existed before. Also, the design must be different and unusual either in shape, configuration, or pattern and if the design for which application is made does not involve any real creativity in its conception, then registration may not be considered. Consequently, design of water dispenser in cylindrical shape was held not to be original.8 Although the Act does not define ‘publication’, a design is considered published if it is available in public domain and freely accessible to all or disclosed to third parties without any obligation to keep it secret.
A design is considered published in two ways – in a document previously published or through prior usage9. For example, if a design is described in a book, published in India and is available in a public library it shall constitute as published. Publication by prior use would occur when a design is exhibited, for instance in a fashion show, before registration application is filed. However, private or experimental use of a design, prior to the registration date, does not constitute as prior publication10. In Wimco Limited v. Meena Match Industries11 the Delhi High Court held that, “publication means opposite of being kept secret. It is considered published if a design is no longer secret. There is publication if the design has been disclosed to the public or the public is put in possession of the design. The disclosure to one person is sufficient to constitute publication.”
1.3 Registration of a design
The Act prescribes the procedure for registration of a design12. Any person who claims to be the owner of a new or original design can file an application along with prescribed fee with the Controller of Designs13 (“Controller”) for the registration of a design14. However, a key point of consideration for registration is the “proprietor of a new or original design15.” The Act states that a person is considered an owner of a design, (i) if such a person commissions an author to execute a work for him in lieu of consideration; (ii) when an acquirer of a design has a right to apply a design to an article; and (iii) if the person is the author of a design and in case the right to apply a design has devolved on another person then such other person also comes within the definition. The Courts have also held that where two persons have created a similar design and thereafter, informed each other of such a creation then they both have joint ownership of the design16.
Assuming there is no objection, the Controller after scrutinizing the application for registration of a design shall make an entry in the Register of Designs17 and issue a certificate of registration18 to the owner of the design. The date of registration is the actual date of filing of the application except in case of priority. In case of registration of design with priority19, the date of registration is the date of making an application in the reciprocal country.
1.4 Rights granted through registration
The Act confers ‘copyright’ in the design to an owner of a registered design. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered20. The owner has an exclusive right to use for a period of ten years from the date of registration21. By filing an application with the Controller, this period of ten years can be extended for further five years provided the application is made before the expiry of the initial ten years. However, a registered design whose copyright has expired cannot be re-registered.
The intention of the legislature is to provide copyright for a limited time period because the law of designs is based on the same principle as applicable to other monopolies. The law does not want to stagnate or kill competition but rather fuel industrial innovativeness by granting limited time-limit to the monopolies and allow others to make use of designs after they have passed into the public domain. The owner of design has the right to protect its design from piracy. The right accruing on the copyright holder is the right to prevent third parties from copying the design for commercial exploitation without seeking an express authorization. In such circumstances, piracy is committed. Contravention of the provisions leads to monetary sanctions22.
2. Overlap between copyright and design
The exclusive right conferred on an individual under the Act is termed as ‘copyright in design’. This is different from the exclusive right granted for literary and artistic work and termed as ‘copyright’ in the literary and artistic work as per the provisions of the Copyright Act, 1957. Sometimes a design can qualify to be registered under both the legislations. However, industrial and product designs are registrable under the Act and if a design has been registered under the Act then it cannot seek protection under the Copyright Act23.
In case a design which can be registered under the Act but has not been so registered, copyright in such a design will continue to subsist under the Copyright Act. However, this right under the Copyright Act will cease to exist the moment an article to which the design is applied is manufactured more than fifty times24. This view was upheld by Delhi High Court in Microfibres Inc v. Girdhar and Company25.
In SmithKline Beecham Consumer Healthcare Gmbh v. G.D. Rathore26, SmithKline sued several parties in India, raising multiple proprietary claims regarding the zigzag neck feature of a toothbrush manufactured by them. It claimed trade mark and design rights with regard to its zigzag feature as it was a registered design. The Court had held that the registrations of toothbrush designs were invalid because they were subject matter of Designs Act, 1911 and have since been cancelled and surrendered by SmithKline. Therefore, they have no rights subsisting in the design. Once the design registrations were invalidated, SmithKline claimed copyright on the moulds and drawings used to make the toothbrushes. Rejecting SmithKline’s plea, the Court stressed that balance has to be maintained between statutory rights conferred on the registered user by the Act and the Copyright Act and the larger interest of the public to utilize a work once it falls into the public domain. The Courts held that SmithKline could not claim a proprietary right in the flexible neck feature of the toothbrush because the feature was “utilitarian” and once the work’s design registrations become invalid, the design enters the public domain for free utilization.
3. Hague Agreement
The WIPO was created in 1967 under the aegis of United Nations to encourage creative activity, and promote protection of intellectual property amongst the member countries. In pursuance of this endeavor, WIPO has administered a treaty titled the Hague Agreement Concerning the International Deposit of Industrial Designs (“the Hague Agreement”) whereby a procedure for an international registration is offered to protect an original design within all nations which are party to the Agreement.
Generally, design protection is limited to the country in which protection is granted. However, under the Hague Agreement, an applicant can file a single international deposit either with WIPO or the national office of a country which is party to the treaty. This would ensure that design will then be protected in as many member countries of the treaty as the applicant wishes. By filing a single application with the International Bureau of WIPO, a person can protect a design in multiple jurisdictions. An international registration has the same effect in each of the designated countries as if the design had been registered there directly unless the application is refused by the competent office of a country because it is against its national laws. The Hague Agreement also simplifies the subsequent management of the design, since it is possible to record subsequent changes or to renew the registration through a single procedural step with the International Bureau of WIPO. However, India is not a signatory to the Hague Agreement. Different Indian trade bodies are lobbying with the Government to become a signatory to the Hague Agreement.
In knowledge based economies, there is a greater need for IPR protection laws. The companies in such countries spend huge amount of funds every year on research and development to create new and original designs which would lead to more sale and greater returns for them. Therefore, creator of a design
deserves to be rewarded for his efforts and creativity. It is important for countries like India to be a signatory to the Hague Agreement whereby Indian companies can get same protection for their indigenous designs in different territories. The IPR protection would help in curbing grey markets and infringements because goods sold in grey markets implies loss of income for the companies.
A registered design confers a legal right on the registered user to bring an action against those persons27 who infringe upon his design right, and restrain them from such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, if the design is not registered under the Act, an original designer has recourse under the Copyright Act against the infringer and can seek protection under the law of passing off.
4. Remedies against piracy/infringement
An owner of a registered design can take recourse to civil remedies against infringement of copyright in his design. The options available are (a) an injunction (permanent or temporary); and (b) damages or compensation.
In case there has been an isolated case of infringement, the owner may seek for compensation from the infringer with an undertaking by the defendant not to repeat the infringement. However, if the infringement is on a large scale whereby the infringer has made huge profits and there is every possibility of repetition then the original owner can file a suit in which a temporary injunction can be sought which will restrain the infringer until the main case is decided on merits. Alternatively, a suit can also be filed only for a permanent injunction. The registered owner can also seek recovery of damages. The injunction can be granted when a plaintiff puts forth enough evidence to support his case. However, courts may not grant injunction if:
- A plaintiff can be adequately compensated in cash. In Niky Tasha v. Faridabad Gas28, the Courts observed that “the granting or withholding of interlocutory injunction relief would depend upon the ability of either party adequately to be compensated in monetary terms and ultimately on the balance of convenience. The defendants’ ability to pay damages is a factor which tilts the scales against the plaintiff.”
- The defendant gives an undertaking that he would adequately compensate the plaintiff.
- There is unexplainable delay on the part of the plaintiff to seek legal remedies.
In case, the title of a design is seriously disputed on grounds of prior publication or lack of originality then prior to granting the injunction, the courts establish the title of the design as they are against monopolies. The court in Sat Paul Singh v. S.P. Engineering Works29 held that, “mere raising of an objection pertaining to the validity of registration does not disentitle the grant of interim injunction.” However, in Subhash Chander Sehgal v. Sona Enterprises30, it was held that, “mere registration of a design is not prima facie evidence of its validity. Therefore, if the defendants counterclaim for cancellation of the design on the ground that it is not new or original interlocutory injunction may not be granted.” Therefore, the grant of injunction depends entirely on the merits of a case.
A design is a very integral and important component of any article. It enhances the appeal of an article thus increasing its commercial utility. Due to increased consumerism, companies try to capture new markets in order to maintain a competitive edge. Indian companies are also trying to compete with foreign companies both within India and outside. Therefore, the Government must also ensure that new and innovative ideas which augment marketability of any product are duly protected.
1 Section 2 (d) of the Act defines “Design.”
2 Section 2 (a) of the Act defines Article as something which is either artificial or natural or both. It further includes any part of an article which is capable of being made and sold separately.
3 2007 (4) MhLJ 354.
4 Microfibres Inc v. Girdhar and Company; 128 (2006) DLT 238.
5 http.//thinkexist.com visited on August 1, 2007.
6 Narayanan P; Law of Copyright and Industrial Designs, Fourth Edition 2007; chapter 27.
7 Section 5 of the Act.
8 Hello Mineral Water v. Thermoking California (2000) PTC 177 (Del).
9 Wadhera B.L; Law relating to Patents, Trade Marks, Copyright, Designs & Geographical Indications, Third Edition published in 2004; chapter 50, page 485.
10Section 16 of the Act and held in Kemp & Company v. Prima Plastics Limited (2000) PTC.
11 AIR 1983 Delhi 537.
12 Chapter II of the Act.
13 Section 3 of the Act states that the Controller-General of Patents, Designs and Trade Marks appointed as per section 4 (1) of the Trade & Merchandise Marks Act, 1958 is the Controller of Designs under the Act.
14 Section 5 of the Act.
15 Section 2 (j) of the Act defines “proprietor of a new or original design.”
16 Vrendenburg Registered Design (1935) 52 Report of Patent Cases (England).
17 Under section 10 of the Act, the Register of Designs is maintained by the Patent Office, Kolkata. It contains the design number, class number, date of filing (in India) and reciprocity date (if any), name and address of proprietor and such other matters as would affect the validity of proprietorship of the design. It is available for public inspection after paying fee.
18 Section 9 of the Act.
19India is signatory to the Paris Convention; therefore, provisions for the right of priority are applicable in India as well. Based on a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states; later application will be regarded as if it had been filed on the same day as the first application.
20Narayanan P; Law of Copyright and Industrial Designs, Fourth Edition published in 2007; chapter 27.
21 Section 11 of the Act.
22 Section 22 (2) of the Act.
23 Section 15 (1) of the Copyright Act.
24 Section 15 (2) of the Copyright Act.
27 Person includes legal entities as well.
28 (1984) PTC 87 Del HC.
29 (1982) PTC 193 Del HC.
30 (1982) PTC 359 Del HC.