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Briefing Paper

Protection of Industrial Design in India: Issues


and Challenges
March 2013

Introduction

Contents
Introduction

Protection of ID: International


Agreements and India
3
The Legal and Policy Framework in India 4
Key Issues and Recommendations

The Briefing Paper has been prepared by Gaurang


Meher Diljun, M V Shiju, and Nitya Nanda and
published by TERI under the project, Post-TRIPS IPR
Regime in India supported under the Prosperity
Fund of the Foreign and Commonwealth Office of
the UK.

In the era of globalization, it is increasingly evident that


the competitiveness of any enterprise depends on its
ability to innovate its product and service with an objective
to distinguish itself from its competitors in the market. It
is common for manufacturers to capture product market
or create a niche for their product by differentiating, an
otherwise similar product (substitutes in terms of functionality)
on the basis of eye appeal. Even if these products are
not perfect substitutes, the choice of consumers and in turn
market demand; may, to a large extent, depend on the
appearance. In this respect, Industrial Designs (ID) have
become a signicant element in a products value chain.
This allows a high potential and incentive for profitability
for business through investment in ID especially large
producers. For such product segments, design feature is
an essential component and hence is protected to avoid
imitation with an intention of passing off.
ID stand at the junction of artistry and industry and
are applicable to many different product markets and
nature of protection may vary from cultural artistic market
to a consumer-oriented general product market. The
various arguments extended to seek protection for design
is grounded on the role of designs in maintaining and
promoting competition within a market economy. Govaere
(2007) states, Like patent and copyright, design rights
have a reward and incentive function, but the objective is
different. The objective of granting an exclusive right in an
industrial design can be defined as providing the possibility
of obtaining a return for investment made, and progress
achieved, in the field of aesthetics in order to stimulate

The Energy and Resources Institute

Protection of Industrial Design in India: Issues and Challenges


overall research and development of the aesthetic features
of technical or functional product.
ID may be described as consisting of those
ornamental aspects or elements of a useful article,
including its two dimensional or three-dimensional
features of shape and surface, which make up the
appearance of the article. The proprietor of such
industrial design will usually, under existing legislations,
have the exclusive right to make, sell, and use articles
embodying such design. Industrial designs refer to one of
the categories of Intellectual Property Right (IPR) where
the design system focusses on only the aesthetic feature
of an article derived from its visual appearance (Box 1).
Designs that are linked to technical or functional aspects
are granted patent rights. ID innovation subjective to a
specific article, involves investments in terms of time and
money in research and development. It was observed
that an article may sell better than another which can be
attributed to the design aspect of that article (Narayanan,
2002). Therefore, it is profitable to invest in terms of
time and money in the process of designing. There are
various examples where popular designs have become a
brand and have consolidated their market share making
innovation in ID a competitive strategy. For designers
alike, intellectual input can provide a valuable income
stream and rights of a good design can be sold.
In this light, the object of the design registration is to see
that the originator of a profitable design is not deprived

of this reward by others applying it on their goods. Just


like patents, trademarks, and copyright, industrial design
is an element on Intellectual property and is protected
under the Indian law (Box 2). The rationale for protection
of designs under IPR regime is clarified by the Supreme
Court of India. The Honourable Court, in the case of
Bharat Glass Tube Limited v. Gopal Gas Works1 clearly
defines the object and the purpose of the Design Act. The
object of the act is to protect the IPR of original design
with the aim to reward the innovator for research and
labour applied to evolve a new and original design. The
Court further emphasized that the protection given with
respect to designs is primarily to advance industries and
to keep them in high level of competitive progress. One
interesting feature of ID is that, unlike patents, it does not
have high social costs as it does not offer someone the
status of an absolute monopolist in the relevant market.
The Energy and Resources Institute (TERI) undertook a
detailed study on the evolution of ID registration in light
of post TRIPS amendments in the national legislation. The
key objectives was to capture the trends of ID registration
in India and legal, policy, institutional, and compliance
concerns that are limiting the scope and potential of such
IP protection especially with respect to Micro, Small, and
Medium Enterprises (MSMEs) in India. The Indian MSMEs
sector is extremely important given the employment
potential at low capital cost. They also play a key role in
the development of economy with their effective, efficient,

Box1 The Object of the Act is to Protect Aesthetic Shape and not Function or Functional Shape
In order to get statutory protection under the Designs Act, 2000 the design has to satisfy the definitional requirements of Section 2
(d). As per the definition, design does not include any mode or principle of construction or anything which is in substance a mere
mechanical device. In Escorts Construction Equipment Ltd Vs Action Construction Equipment Pvt Ltd, 1999 PTC 36(Del), the Delhi
High Court had occasion to interpret this part of the definition (as contained in the Designs Act, 1911). This case was concerning the
alleged illegal copying of a design by the respondent of Pick-N-Carry Hydraulic Self Mobile Cranes manufactured by the plaintiff. Though
the case was not directly coming under the Designs Act, the Court examined whether the said design was capable of registration under
the Designs Act. After examining the definition of design under the Act, the Court held that the design in question was incapable of
registration. According to the Court the definition made it amply clear that the primary object of the Act was to protect shape and not
function, or functional shape. The expression design does not include a method or principle of construction or features or shape or
configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.
Rejecting the contention of the plaintiff who claimed protection of certain specific parts of the crane, the Court held: The aforesaid
parts of the crane are made in a particular shape so as to interrelate with others mechanically. These parts of the crane are not made
to appeal to the eye but solely to make the crane work or function. Most of the key components or parts, unseen in the crane for which
they were required, had only to pass the test of being able to perform their function. They would be judged by performance and not by
appearance. Consequently, the aforesaid key components or parts are incapable of being registered as designs.

2008 (1) CTMR 500 (SC): AIR 2008 SC 2520.

Protection of Industrial Design in India: Issues and Challenges

BOX 2 Protection of Industrial Designs in India


The entities having unique and distinct pattern, appearance and design can register under Indian Design Act. The registered owner,
under the act, gets the exclusive right to apply the design to any article in the class in which the design is registered. Apart from providing
protection of design element of industrial protection, the law aims to promote innovative activity in the field of industries.
From an intellectual property law perspective an industrial design is concerned only to the ornamental or aesthetic aspects of
a product. As per Indian law protecting industrial design, design constitutes 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 the context of the act, an article implies any object of manufacture and any substance, artificial or partly natural; and includes any
part of an article capable of being made and sold separately. For the purpose of registration under the Act the design must be new or
original, unpublished previously or in existence in any other country and the article must have its existence independent of the designs
applied to it. So, the design as applied to an article should be integral with the article itself. Trademark and property mark, stamps,
labels, tokens, cards, etc. are excluded from the registration under the act as these cannot be considered as an article. Moreover, any
mode or principle of construction or operation, which is in substance a mere mechanical device and it is required that the design should
be visible on the finished article.
The total term of a registered design is 15 years. (Initially 10 years, can be extended, by another 5 years.) The Design Wing of Patent
Office (Kolkata) is entrusted to administer the provisions under the Design Act, 2000.

flexible, and innovative entrepreneurial spirit. Protection


under ID conventionally is seen as more applicable to large
firms producing for mass production. However, given that
MSME often is nursery of entrepreneurship, the importance
of ID registration is equally relevant to this category as it
could lead to transition from MSME to something bigger.
With respect to products segment that is intractably
linked with aesthetic features, the protection is even more
important. In this light, two sectors i.e., Gems and Jewellery
and Leather Shoes were chosen for the study.

Protection of ID: International Agreements and


India
Conventionally, designs can seek protection under
intellectual property regimes including copyright laws,
dedicated designs laws, and unfair competition. At the
international level, international treaties dealing with
protection under copyright or exclusively ID, deal with
general standards of protection to be provided by the
contracting countries. These treaties are aimed at creating
a framework for international integration of intellectual
property rights with a common understanding. These
agreements/treaties and subsequent Indian take on the
same are briefly highlighted below:
P The Paris convention (1883) for the Protection of
Industrial Property was the first international convention

which discusses the concept of industrial property


and its protection including general standards of
protection for industrial designs to be provided by
the member states. India is a contracting party to the
convention. Article 5 quinquies of the Paris Convention
provided that industrial designs shall be protected in
all contracting countries however, the scope for such
protection was not defined.
P The Berne Convention (1886) for the Protection of
Literary and Artistic Works, commonly referred to as
the Berne Convention, is an international agreement
governing copyright. India is a party to the convention
and recognizes the copyright of works of authors from
other members of the Berne Union in the same way as
it recognizes the copyright of its own nationals.
P The Hague Agreement changed the basis for the
protection of industrial designs from the so-called
copyright approach to the patent approach.
The Hague Agreement consists of several separate
treaties. The most important of them are: The London
Act of 1934, the Hague Act of 1960, and the
Geneva Act of 1999 (The 1934 Act is frozen as
of January 1, 2010). The Hague Agreement or the
Hague System provides a mechanism for registering
a ID and thereby getting protection in several
member countries by filing one application with the

Protection of Industrial Design in India: Issues and Challenges


administrating body known as International Bureau
of WIPO. India has not signed the Geneva Act of the
Hague Agreement and the international protection
for industrial designs in several countries by means
of a single application is not available.
P The Locarno Agreement (1979) establishes the
international classification for industrial designs and
solely an administrative tool and does not bind the
member states with regard to the nature of protection
afforded by a design so classified (Nadar, 2010).
India has not signed the agreement. However, India
follows the international classification for industrial
designs based on the Locarno Agreement.
P The Trade Related Aspects of Intellectual Property
Rights Agreement (TRIPS) came into force on the
1st of January 1995, with the establishment of the
World Trade Organization (WTO). TRIPS provide
for minimum norms and standards with respect to
different categories of intellectual property rights
including Industrial Designs. The TRIPS Agreement
obliges member nations to provide for the protection
of independently created new or original
industrial designs.

The Legal and Policy Framework in India


India has a long history of providing statutory protection for
industrial designs (Table 1). At the time of independence,
The Patents and Designs Act, 1911 passed under the British
rule was the relevant statute in the field. In 1970, The Patents
Act, 1970 was adopted. With the adoption of a separate
legislation for patents, the 1911 Act was substantially
amended and renamed as the Designs Act, 1911. In
view of globalization there was a need to adapt with
the changed technical and commercial development; and
there was also a need to meet the international obligations
under the TRIPS Agreement. Under the TRIPS Agreement
member countries of the WTO are mandated to enact or
amend their laws to give minimum level of protection to
industrial designs. Owing to its obligation under the TRIPS
agreement, India has amended its national legislation to
provide for these minimal standards (Table 2). The Designs
Act, 2000 (No. 16 of 2000) was adopted in this backdrop.
The Act along with the Designs Rules, 2001 presently govern
the design law in India. The Act and subsequent rules were
amended which came to effect from June 2008.
In 2007, National Design Policy was adopted.
Among other things it aims at promotion of Indian design

Table 1Evolution of Design Law in India


Year

Developments

1872

The Patents and Designs Act was passed. The first Indian legislation to protect industrial designs

1888

The Inventions and Designs Act replaced the 1872 Act

1911

The Patents and Designs Act amended and consolidated the law relating to inventions and industrial designs. Based on the UK
Patents and Designs Act of 1907. Patent administration came under the Controller

1912

The Patents and Designs Act, 1911 came into force on 1st January

1930

Amendments to the 1911 Act. Eligibility criteria for design registration changed from new and original design to new or original
design

1970

The Patents Act passed by the Parliament. Provisions relating to Patents deleted from the 1911 Act. The short title of the Act
changed to The Designs Act, 1911

1972

20th April: The Patents Act notified by the Central Government and became operational

2000

The Designs Act passed by the Parliament. The Act of 1911 repealed. Came into force on 25th May

2001

11th May: The Designs Act came into force. Designs Rules 2001 notified by Department of Industrial Policy, Ministry of
Commerce and Industry

2007

8th February: National Design Policy adopted. Among other things aims at promotion of Indian design through a well-defined and
managed regulatory, promotional, and institutional framework. Action plan for implementation of the policy was also adopted

2009

2nd March: The Central Government constituted the India Design Council. The Council is intended to act as the national strategic
body for multi-disciplinary design and to get involved in promotion of design with the ultimate vision to make Indian Industry a
design enabled industry

2008

Designs (Amendments) Rules, 2008 notified

2011

Manual of Designs Practice and Procedure published by the Office of the Controller General of Patents, Designs, and Trade Marks

Protection of Industrial Design in India: Issues and Challenges


Table 2 Key Amendments in the Designs Act
Section

Changes brought by the 2000 Act

Definition of article S. 2(a)

Explicitly provides for non-registration of an article which does not have a separate
identity and which is really an integral part of another article.

Definition of design S. 2 (d)

Composition of lines or colours added to the definition.

Definition of original S. 2 (g)

The definition of original is introduced.

Prior Publication S. 5 (1)

Enlarges the scope of prior publication from India to the entire world.

Restoration of lapsed designs S. 12 (1)

Restoration of a lapsed design registration due to nonpayment of fee now permissible.

Time period for protection S. 11

Initial period of registration extended from 5 years to 10 years. Maximum period of


registration remains 15 years.

Appeal from the decision of the Controller Ss. 5 (4),


19 (2); 31 (3); 35 (2); and 36

The appeal from the decision now lies to the High Court. Under the 1911 Act, the
appeal had to be filed to the Central Government.

Cancellation of a registered design S. 19

Under the 1911 Act, revocation authority vested with the controller only if a petition
was filed within one year and on limited grounds. In all other cases petition to be
filed in the High Court. Under the 2000 Act, petition to be filed before the Controller
in all cases and no time period prescribed. Grounds for challenging the registration
expanded. Appeal lies to the High Court from the decision of the Controller.

Quantum of Compensation S. 22

Quantum of compensation has been substantially increased.

Measures to check anti-competitive practices S. 42

Provisions prohibiting restrictive conditions imposed by the design holder which is


unrelated to the article in respect of which the design registration has been granted
being introduced.

Priority accorded to convention countries S. 44

Provision giving priority for registration of designs registered in convention countries,


i.e., countries which are parties to the Paris Convention and WTO members is
introduced.

Period of secrecy S. 7

The two year period of secrecy in the 1911 Act has been done away. Instead provides
for mandatory publication of the registration of a design and provision for open public
inspection.

Special Provisions in the interest of security of India


S. 46

This new provision empowers the Controller not to disclose designs if such disclosure
is prejudicial to the interest of security of India and not to initiate cancellation
proceedings with respect to certain designs on a notification by the Central
Government in this behalf.

Register of designs S. 10

Provides for e. register

System of classification
Schedule III Design Rules

Designs Rules 2001 as amended in 2008 follows the international classification


system based on Locarno Classification System.

Note: As explained earlier, the 2000 Act was passed in the context of the rapid process of globalization and changes taking place in the technological field, the
2000 Act was a substantial modification on the 1911 Act. The major changes brought out by the Act are explained with the help of the above table.

through a well-defined and managed regulatory,


promotional and institutional framework. Action plan
for implementation of the policy was also adopted for
building a platform for innovation in creative design,
propagation of Indian designs and innovations on the
international arena and for global positioning and
branding of Indian designs.
Subsequently, in 2009 the Central Government
constituted the India Design Council under the Department
of Industrial Policy and Promotion (DIPP). The council is
intended to act as the national strategic body for multidisciplinary design and to get involved in promotion of

design with the ultimate vision to make Indian Industry


a design enabled industry. The India Design Council has
constituted three major task forces (working committees)
focusing on: a) possible ways of promoting design
in different sectors and elds; b) capacity-building
via benchmarking design educational and training
institutions as well as developing model curriculum; and
c) policy mechanisms and the provision of incentives
for promoting research and development, adoption of
design by industries and providers if design services.
In March 2011, the Council unveiled good design
marking base on quality assurance with respect to

Protection of Industrial Design in India: Issues and Challenges


originality, innovation, aesthetic appeal, user-centricity,
ergonomic features, safety and eco-friendliness. I-Mark
is the Indian equivalent of the Japanese G-Mark, the
highest quality marking for industrial design in Japan,
which leads the world in industrial design innovations.
The I-Mark benchmarking initiative is also intended to
be the preparation of a mechanism for recognizing
and encouraging industry achievers in creating a brand
image abroad for Indian designs.
Various activities for comprehensive computerization of
the Designs Wing of the Patent Office have been initiated
with the assistance of National Informatics Centre (NIC).
Digitization of designs applications and preparation of
e-Register have already been completed. The examination
of designs applications started electronically from April
2009. The application status for the same is made
available electronically on the official website. Process for
starting e-filing of designs applications is in progress. Front
office software has already been installed to provide the
auto- generated application number as soon as a design
application is filed at any of the offices at Kolkata, Delhi,
Chennai, and Mumbai. Awareness programmes were
conducted in industrial designs in various cities such as
Ahmedabad Pune, Bangalore, Kolkata, and Delhi by the
Controller General of Patents, Designs and Trademarks
and The National Institute of Designs.

Key Issues and Recommendations


Total number of applications filed for registration of
designs during 201011 was 7589, which included
5084 application filed from India and remaining 2484
applications originating from abroad. The total number
of designs registered were 9206 including applications
received in the previous years. This is nearly 50 per cent
increase given the figure of 6025 of previous year. The
10000
9000
8000
7000
6000
5000
4000
3000
2000
1000
0
2004-05 2005-06 2006-07 2007-08 2008-09 2009-10 2010 - 11
Total Filed

Total Registered

Figure 1 Trend of applications filed and registered in India

facility for filing application of design electronically


commenced from 1 April, 2009 and has resulted in an
increase in the registration. The number of registered
designs in force at the end of 201011 was 42348. The
progress can be easily qualified as below par given the
potential of designs originating from India. Between 2005
and 2011, the number of designs filed for registration
increased from 4949 to 7589. An analysis of the legal
framework both at the national and international level,
analysis of data relating to industrial designs in India,
and interaction with stakeholders indicate that in order to
strengthen the existing system of design protection in India,
the following issues need to be addressed.

Low number of ID registrations


An analysis of the data from the Indian Patent office
reveal that the number of applications for design
registration is very small compared to trademark and
patent applications. It is worthwhile to note here that the
registration process for designs is comparatively easier
than patent and trademarks registration in India. The
data analysed from 200102 to 201011 show that
design applications constitute only less than 4 per cent of
the total number of applications.
IDs are the cheapest form of IP protection with minimum
procedural hassles involved. Despite these advantages ID
rights are largely underrated in the portfolio of most of the
IP right holders. It is a fact that the registration of industrial
designs is not abundant in the world (de Carvalho, 2011).
Protection of designs are narrower than patents and
trademarks and thus could be circumvented more easily;
enforcement of patent is easier than designs; short-term
lifespan of designs; and the perception by small and
medium industries that IPRs are not a potential tool for
protecting their innovations are some reasons advanced
for the less enthusiastic response for design protection
(Correa, 2007). There are counter arguments suggesting
that enforcement of design is comparatively less complex
and costly as the infringement is determined by mere visual
impression (de Carvalho, 2011). But compared to 557000
(2008), 587000 (2009), and 669000 (2010) applications
filed in China (WIPO, 2012) the Indian figures of 6557,
6092, and 7589 (IPO, 2012) cuts a sorry figure.

Stakeholder Perceptions: Procedural aspects


To assess the enforcement of Design Act and to capture
the innovation with respect to designs in India, survey
was conducted in five cities in India, namely, Delhi,

Protection of Industrial Design in India: Issues and Challenges


Per cent
100
90
80
70
60
50
40
30
20
10
Examination

Registration
Gems and Jewellry

Publication

Enforcement

Leather Shoes

Figure 2 Key areas of concern: TERIs Perception Survey (2013)

Ahmedabad, Kolkata, Jaipur, and Mumbai. Small and


Medium enterprise represented around 85 per cent of
the sample respondents. Number of respondents that had
applied for Design registration was higher in leather shoes
(47per cent) compared to jewellery (32 per cent). Almost
all the applications were made to Indian office in spite
of majority of the respondents had operations in other
countries. Success rate reported for the total application
was 64 per cent. Majority of the respondents reported
that the cost implication for design registration was
minimal with 83 per cent in gems and jewellery and 86
per cent for leather shoes. Approximately half of the total
respondents who had registered designs earlier hired a
legal expert for registration. Most of the respondents
reported that they didnt find the process burdensome,
however, suggested that the registration process must
be sped up given the high pace of changing demand in
global market.
Respondents from jewellery and leather footwear
industry stated that they give limited emphasis to ID
registration as the market and tastes for their products

are evolving at a rapid pace and innovation are required


within short duration. Moreover, given that the local and
export market that they predominantly cater to leave
limited scope for detection of infringement. This is similar
to Piracy Paradox applicable to fashion industries, where
piracy leads to more innovation. Similar apprehensions
were shown by respondents from shoe manufacturing,
however, they believed that the reason lies in avoiding
legal hassles. Most of the respondents emphasized on the
need for raising awareness of stakeholders and benefits
an industry can derive from registering designs. Especially
training with respect to IP protection available in the
export target countries can go a long way in promoting
ID registration.
The survey results also point out that the registration
procedure in India is not very complicated. A vast
majority of the respondents agreed that they did not
face any difficulty in filing design protection in India.
A majority of the respondents also agreed that the
registration process in India is the same or better than
other countries. Stakeholders feel that due to various
challenges the number of designs filed for registration is
not at all encouraging (Table 3). The lack of support by
industrial associations came out very prominently in the
survey. Even though the fee for registration for a design
under the Designs Rules, 2001 is Rs 1000/ only, many of
the respondents thought that it was very high. The fact
that in common perception the fee includes the filing fee
charged by the law firms explains this anomaly. These
findings and the comparative data clearly point to the
need for more awareness programmes and a greater role
by industrial associations in helping the small firms in filing
for registration and other legal assistance.

Table 3 Key issues raised in the survey are categorized in the table below
Registration

Examination

Formalities should be
reduced
Registration time must
be reduced to 6 months
and proper status
updates must be given
from time to time
Awareness should be
raised with respect
to option of online
registration

Need to speed
up the process
given the
demand for the
final product
and market
competition

Publication & Information


dissemination
Authorities normally
take 2.5 years to
register their name in
their publication
Sometimes there is
no up gradation of
database
There is a need to
speed up this process

Enforcement of the Act

General

Enforceability is weak with


most of the infringements
go unnoticed
Nearly 98 per cent of
the product designs are
protected under Industrial
Design Act but then also
it gets copied by the small
firms
No threat of legal
implications

Lack of awareness
Lack of trust on
the enforcement
mechanism
Tendency to avoid legal
hassles
Informal markets and
size of these markets
in some products
segments limits the
scope of monitoring

Protection of Industrial Design in India: Issues and Challenges


One of the major challenges considered by the
stakeholders is the awareness. Stakeholders perceive
that design protection does not pay off due to weak
enforcement and high legal costs involved in preventing
infringements. It is also perceived that the same result
can be achieved with different shape and configuration
amounting to new design protection.
Infringement of design is quite frequent in India and
occurs when there is a likelihood of confusion with regard
to similar shape, configuration and surface pattern or
appearance of any articles having similar nature and
purpose. Monitoring is a major challenge and in the
presence of any infringement, penalties are not much.
In case of infringement of a design, the proprietor may
bring a suit against the infringer for recovery of damages,
injunction to stop the use and seizure of infringing products.
Penalties can range from Rs 20,000 to Rs 50,000.

Better scrutiny of applications at the IP Office


A constant complaint heard among the practicing
lawyers and their industry clients is that there is nonapplication of mind at the Controllers Office in granting
design registration. It is a common complaint that many
common designs used in many industries have been
granted registration. This may be partly due to the lax
procedure for registration of designs as opposed to
patents and geographical indications under the relevant
laws. There is neither a procedure for publication before
the grant of registration nor an occasion for pre-grant
opposition under the Designs Act, 2002. This has led to
a complete non-application of mind thereby resulting in
common designs, same designs and functional designs
getting registered.
Another complaint commonly reported is the lack of
understanding of the laws concerned even by the officials
at the patent office. Sometimes, even functional designs
get registration under the Designs Act in spite of law being
very clear about it. While there is an understanding of
the rationale for a liberal procedure for registration in the
case of designs as opposed to patents and geographical
indications, there is a general feeling that greater scrutiny
of applications is needed at the IP Office. In many cases it
is reported that the same design is registered more than
once. The Trademarks Act, 1999 allows the concurrent
use of the same trademark in certain cases. But in the
Designs Act, one cannot find similar provisions. This points
the need for greater scrutiny at the IP Office in granting
registration under the Designs Act.

In this regard, capacity-building at the patent


office and technology orientation at the examination of
design applications is essential to streamline registration
procedures. One would hope that with the modernization
drive going on in the Indian Patent Office including the
examination of design applications electronically and the
appointment of more examiners many of these challenges
could be addressed.

Better enforcement of design protection law


Poor enforcement of design protection law is yet another
common complaint in industry circles. Stakeholders in
selected industry segments have reported that copying
is rampant and that they are aware of the perpetrators.
However, given limited trust on overburdened judiciary
added to high cost of litigation has posed as a severe
barrier for seeking legal recourse in case of infringement.
Here, small firms have reported that associations should
play a more important role in monitoring and must support
legal action and expenditures.
There is a need to strategize IP protection of
innovative designs to create a better future and compete
and in order to achieve the same it is important to
have the broadest possible protection. Also, given the
large number of infringement cases pending, there is a
need to devise mechanisms for out of court settlement.
There should be proper deterrent remedies including
stringent fines.

Infringement actions and the cancellation procedure


The registration of a design under the Designs Act
could make sense only if the infringement of the same
is proceeded against. However, there seems to be not
many takers for initiating infringement actions. The
survey conducted showed that only 5 per cent of the
respondents were party to an infringement action. Many
of the respondents answered that they knew about the
infringement of their designs, but were not initiating any
action. The complex nature of the legal procedure and
the time involved in the entire process are the deterrents
against filing infringement actions. However, some of the
practicing lawyers reported that their clients were not
very keen on the final outcome of the case, but were more
interested in obtaining a stay against the infringer.
The cancellation procedure under the Designs Act, 2000
was also mentioned as a bottleneck. As per the 2000 Act, in
order to challenge a registered design, application has to
be submitted to the IPO in Kolkata and an appeal from the

Protection of Industrial Design in India: Issues and Challenges


decision of the Registrar lies to the High Court at Calcutta.
This in a way makes it difficult for people from other parts
of the country to challenge the registration of common
designs and functional designs. Even though grounds of
cancellation could be taken as a defense in infringement
proceedings before the High Court, it would be better
to allow for a more streamlined cancellation procedure.
All these issues point to the need for greater action by

governmental agencies and industrial organizations in


initiating infringement actions and cancellation procedures.

Minimizing confusion and mainstreaming procedures


Unlike Patent Act, Industrial Design Act includes originality
but does not exclude traditional knowledge per se.
There are also ambiguities with regard to the terms
independently created or significantly differ and

BOX 3 Protection under the Design Act, 2000 and the Copyright Act, 1957
As discussed above, conventionally designs have been
considered both under the domain of artistic work and
industrial production. This has led to ambiguity and overlap
with other IPR laws like copyright law, trademark law, utility
model and unfair competition law. This overlap has been
carefully evaded in both Paris and Berne convention which
identified that designs are subject matter for copyright as
well as industrial production (Dutfield and Suthersanen,
2008) . Hence, there will be works that are both protectable
under copyright law as well as under designs law. Indian law
has tried to resolve this by the provision of Section 15(2),
Copyright Act of 1957 which deals with the rights to which a
holder of an original artistic work is entitled.
In Microfibers Inc. vsGirdhar& Co. &Anr, the Delhi High Court
has clarified the interplay between the Designs Act, 2000
and the Copyright Act, 1957 in the light of section 2(d) which
excludes artistic works under the Copyright Act from the
definition of design. The original paintings/artistic works
which may be used to industrially produce the designed
article would continue to fall within the meaning of the artistic
work defined under Section 2(c) of the Copyright Act, 1957
and would be entitled to the full period of copyright protection
as evident from the definition of the design under Section
2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant. It is the exclusive right of the holder of a
Copyright in an original artistic work to reproduce the work in any material form. If the design is registered under the Designs Act, the
Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been
registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an
article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection
under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.

Nature of protection of designs under the Copyright Act vis--vis the Designs Act
Designs

Copyright

Exclusive rights, i.e., Complete monopoly for large scale production


(most countries also confer exclusive rights)

Only protects against copying

Needs to be registered

Copyright is accorded automatically, thus there are no formalities of


registration process

Requires originality and novelty

The criterion for protection is originality, which is easier to fulfil compared


to novelty

Duration of protection is 10 plus and can be extended further by 5


years

The duration of protection is much longer (60 years +)

Only confined to the product that it is registered upon

Not product specific

Protection of Industrial Design in India: Issues and Challenges


have not properly been defined in the Designs Act 2000.
There is some confusion in the jurisprudence regarding
novelty and originality. Some of the provisions in the law
are also very difficult. As for example, design. 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. Similarly, Section 15(2) of the Copyright Act, 1957,
outlines that Copyright in any design, that is capable
of being registered under the Designs Act, 1911, but,
which has not been so registered, shall cease 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 (Box 3). Moreover, discussions with
officials have indicated that there are limitations faced
by the examiners in the form of unavailability of relevant
information/data for cross verification due to poor
documentation and lack of understanding of the law and
its interpretation. Therefore, there is a need to mainstream
the definitions and procedures for building confidence
and trust in ID protection.

Signing the Hague Agreement


The key concern raised by the stakeholders was that at
present Indian MSMEs are exporting the craftsmanship
to others countries without any tangible benefits to the
craftsman who is the inventor in many cases of a new
design. The benefits go to middlemen who are more aware
of ID registration in other countries. There is a need to
explore the possibility of signing the Hague Agreement to
be able to facilitate international registrations of design
in the member countries especially for major export
segments such as gems and jewellery, leather footwear
and textiles. The Hague Agreement Concerning the
International Deposit of Industrial Designs, also known as
the Hague system, provides a mechanism for registering
an industrial design in several countries by means of a
single application, filed in one language, with one set of
fees. The system is administered by WIPO.

Raising awareness and capacity-building


Most importantly there is lack of awareness about industrial
designs. Even for the most prominent players, in terms of
innovation, those were tapped in the questionnaire survey
only less than 40 per cent had applied for registration.

10

The percentage is expected to be much lower for overall


MSME sector. The primary reason for this is the complete
lack of awareness with respect to potential benefits arising
for innovation in designs for industrial uses. Similar picture
is true for officials at the patent office. It is imperative to
raise awareness and build capacity at the level of policymaking, implementation institutions, legal fraternity,
professional institutes, and industrial organizations.

Industrial design mark


In sectors like jewellery, often producers are scared of
advertising their products with innovative and attractive
new designs as that might lead to imitation of their designs.
If producers are able to advertise their products that the
designs concerned are registered and any imitations of
the designs may attract legal actions, then the chances of
such imitation can be reduced. This might be facilitated by
introducing ID Mark in line with Trade Mark or Copyright.
Producers can use such Mark in their advertisement which
will also raise awareness on the issue.

References
Carvalho, Nuno Pires de. (2011).The TRIPS regime of
trademarks and designs. Kluwer Law International,
Netherlands
Correa, C. (2007). Trade Related Aspects of Intellectual
Property Rights (Volume VI of Commentaries on the
GATT/WTO Agreements). Oxford University Press.
Oxford. UK.
Graham Dutfield and Uma Suthersanen. (2008). Global
Intellectual Property Law. Edward Elger Publication.
Inge Govaere, Hanns Ullrich. (2007). Intellectual Property,
Public Policy and International Trade. P.I. E Peter Lang.
Nadar, B P (2010). Evolution of Designs Act in India
&Protection of Industrial Design underInternational
IPR Regime. Retrieved April 16, 2012, from
http://www.scribd.com: http://www.scribd.com/
doc/53318556/Evolution-of-Designs-Act-inIndia-Protection-of-Industrial-Designs-underInternational-IPR-Regime
Narayanan, P (2002). Law of Copyright and Industrial
Designs.
Venkatraman, S. (2010). Understanding designs act.
Universal Law Publishing.
WIPO (2012 ). Intellectual Property Statistics. Available
at
<http://www.wipo.int/ipstats/en/statistics/
country_profile/countries/in.html>. last accessed on
10 January, 2013

For more information contact:


Mr Nitya Nanda
Fellow
Resources, Regulation, and Global Security
Centre for Global Agreements, Leg. & Trade
The Energy and Resources Institute (TERI)
Darbari Seth Block,
IHC Complex, Lodhi Road,
New Delhi- 110003

Tel: 24682100 or 41504900


Fax: 24682144 or 24682145
Web: www.teriin.org
E-mail: nitya@teri.res.in