Design

Consumers are influenced by appearance of article in their choice. Many people blindly choose the
article which catches their eye or some are attracted towards artistic merit. A design is something
which Is applied to an article and is not the article itself and that article to which design is applied is
to be delivered as finished product, which needs to be protected to encourage creativity and helps in
economic development of nation. The buildings and structures are not articles within definition of
design but portable structures or models which are sold as finished articles are subject matter for
registration of design.

Meaning of design:

Designs can be of: Aesthetic aspects or outward appearance that is applied to a product; or 2 D like
patterns, lines, composition, colour; or 3 D like shape; or combination of both 2D & 3D.

There are 4 features relevant to an industrial or product design. They are: shape , configuration,
pattern and ornament. The shape and configuration refers to form of an article and is usually in 3-D
nature. Pattern and ornament are decorative features ordinarily applied to surface of article and are
in 2-D nature.

Protection of industrial design:

The concepts of globalization & liberalization have flooded the markets with large variety of
products. The consumers are provided with numerous alternatives for any single product. This has
made the consumers more selective. Nowadays the producers have to not only prove their product’s
reliability but they also have to satisfy the aesthetic appetite of the consumers. The producers spend
huge capital in developing innovative designs for catching the recognition of consumers by
enhancing the appearance of their products. There are professional designers who put great
intellectual effort in creating new & attractive designs. The rationale for design protection is clear
from US Supreme court’s decision in the case, Gorhan Mfg .Co .v. White [1], in which the court
stipulated that the essential rationale for design Law are that the design right may enhance the
design’s “saleable value”, “may enlarge the demand for it” and may be a “meritorious service to the
public”. Design protection will play an important role in the product market, increasing the
competitiveness of the manufacturer or vendor of the product, and enhancing quality of societal life.
Hence it is necessary to protect designs so as to reward the designer’s creativity and to encourage
future contributions. To this end, industrial designs are protected by legislations.

International conventions have also raised laws for protection of industrial design.

The paris convention for protection of industrial property,1967 and industrial designs under article 5
intends to protect industrial designs throughout the world.

Hague agreement of industrial deposit of industrial designs, 1960 take cause of protecting industrial
designs further. The TRIPS agreement also postulates for protection of industrial design through
registration.

DESIGN PROTECTION IN INDIA.

Historical perspective of design law in india:

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In british india, the first legislation was made as patents and designs act, 1872. Later the inventions
and designs act, 1888 was made to give protection to inventions and design. On the lines of british
patents and design act,1907 , the indian patent and dsign act 1911 was enacted. The patents act,
1970 repealed the provisions of patents from patents and designs act,1911. Thereafter designs act,
1911 and design rule, 1933 continued in india to deal with designs.

In India, previously the law of designs was governed by the Designs Act 1911.Since the enactment of
the Design Act, 1911 considerable progress has been made in the field of science and technology.
Hence the legal system for the protection of industrial design required to be made more efficient in
order to ensure effective protection to registered designs. It was also essential to promote design
activity in order to promote the design element in an article of production. The Designs Act, 2000,
repealed the Act of 1911 and it aims at protecting the designs in India and bringing the Indian law at
par with International law. . India's Design Act, 2000 complies with the articles 25 and 26 of TRIPS
agreement which stresses on designs protection.

The new Act has come into existence on 25.05.2000 and the new Act is a consolidating and
amending Act relating to the protection of design. From the Statement of 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 which has taken place since the enactment of the old Act in 1911.
As such, one of the objects of the new Act was to ensure effective protection to the 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 to remove
impediment to the free use of available design. 1 The important purpose of design registration is to
see that the artisan, creator, originator of a design having aesthetic look is not deprived of his
bonafide reward by others applying it to their goods.

Definition of design:

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

 Design means only the features of shape, configuration, pattern, ornament or composition of lines
or colors 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.

The definition is exclusive and only those which satisfy the following conditions can be brought
under the purview of design:

1
[2] IAG Company Ltd. v. Triveni Glass Ltd. 2005 (30) PTC 143
1. Design primarily represents features of shapes, configuration, pattern, ornament, color or
composition of lines.

2. Such shape, configuration, pattern, ornament, color, or composition of lines should be applied to
any article.

3. Such article may be two dimensional or three dimensional or both.

4. Any of these features may be one that is applied by any Industrial process or means which may be
manual, mechanical, chemical, separate or combined.

5. And such an application of the aforesaid features in the finished article shall appeal to and judged
solely by the eye.

6. It does not include any mode or principle of construction or anything which is in substance a mere
mechanical device.

7. It 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.

The definition of Design under the new Act has been widened. Under the previous law[3], the Design
registration was granted only for the visual appearance of an article which included shape,
configuration pattern, and ornamentation whether in two or three dimensions. Under, the Designs
Act 2000, 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 two or three dimensions or both. A Design is 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 and beautifying the article. If a particular feature is so applied on an article
that it does not appeal to the eye at all and is incapable of attracting a prospective consumer in any
manner for the purchase thereof, then such feature will not fall within the scope of a design. [4] 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.[5] A design must be applied in the article itself as in the case of a
shape or configuration which is three-dimensional, e.g., shape of a bottle or flower vase or the case
of design which is two dimensional, e.g., design on a sari, bed sheet, wallpaper which serves the
purpose of ornamentation.It should be one which catches the eye of the purchaser.In Delhi Metro
Plastic Industries v. Galaxy Footwear case[6], it was held the definitions of "design" in Section 2(5) of
the 1911 Act and Section 2(d) of the 2000 Act were slightly different and the present definition had
certain additional features. The legislation has amplified the definitions of article and design to
confirm them with international accepted definitions for providing wider protection. The definition
of article has been broadened to include parts of articles sold separately within its scope. The
definition of Design has also been amplified to incorporate the composition of lines and colors to
avoid overlapping with Copyright Act, 1957 regarding the definition of design with respect to artistic
work.

REQUIREMENTS FOR REGISTRATION OF DESIGNS.

1. DESIGN MUST BE APPLIED TO ARICLES.

A Design is something which is applied to an article and not the article itself. A design must be
incorporated in the article itself as in the case of a shape or configuration which is three-
dimensional, e.g., shape of a bottle or flower vase or the case of design which is two dimensional,
e.g., design on a bed sheet, wallpaper which serves the purpose of decoration. An article to which
the design is to be applied must be something which is to be delivered to the purchaser as a finished
article.

2. APPEAL TO THE EYE.

The design must be capable of being applied to an article in such a way that the article to which it is
applied will appeal to and judged solely by the eye. The particular shape, configuration, pattern or
ornamentation must have a visual appeal. Feature to be registered must “appeal to the eye” and be
“judged by the eye.[7] In Amp v. Utilux, (1972),it was held that ,

(a) to have eye appeal, the features must be externally visible.

(b) The feature must appeal to the customer’s eye.

(c) The eye appeal need be neither artistic nor aesthetic, provided that some appeal is created by
distinctiveness of shape, pattern, or ornamentation calculated to influence the consumer’s choice.

The shape adopted in Amp v. Utilux found no “eye appeal”, because the part (electrical connector
which was an internal component of a washing machine) although visibly distinctive was entirely
functional and would not affect the consumer’s choice. A different approach was taken in the case,
Interlego v.Tyco, (1988), where the toy brick’s shape, though functional, did have a visual appeal
which would affect the buyer’s choice.

3. NOVELTY OR ORIGINALITY.
A design can be registered only when it is new or original and not previously published in India.A
design would be registrable if the pattern though already known is applied to new article. For
example, the shape of an apple if applied to school bag would be registrable.It was held in Pilot Pen
Co. v. Gujarat Ind. P. Ltd[8], that registration could not be deemed to be effective unless the design,
which sought to be protected, was new and original and not of a pre-existing common type. Also if it
comprises or contains scandalous or obscene matter, shall not be registered under the Act. In Rotela
Auto Components (P) Ltd. and Anr. v. Jaspal Singh[9],it was held that, 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. The novelty or originality of a particular
part of the article may be sufficient to import the character of novelty and originality to the whole.A
combination of previously known designs can be registered if the visual impact of the combination
as a whole is new.                                                                                                                                                                                  

4. NO PRIOR PUBLICATION.

A design can be registered only when it is not previously published in India. In the case of Wimco Ltd.
v. Meena Match Industries,[10] the Court held that publication means the opposite of being kept
secret. The disclosure even to one person is sufficient to constitute publication. The design cannot
be registered under Design Act if it is not significantly distinguishable from known designs or
combination of known designs. To constitute publication a design must be available to the public
and it has been ceased to be a secret. For e.g.:-the display of a design on a saree in a fashion show is
a publication of that design. 

Should be judged solely by the eye and the features of the design should be visible.       

Should be new or original.        

Should not be disclosed to the public in India or elsewhere in the world by prior publication or by
prior use or in any other way.           

Should be significantly distinguishable from designs or combination of designs that are already
registered or pre-existing or disclosed to the public.          

Should not include any scandalous or obscene matter.       

Should be applied to an article by an industrial process.       

Should not include any feature that is purely functional.        

Should not include any trademark or property mark or artistic work as defined under the Copyright
Act.    

WHY REGISTER YOUR DESIGN?

• Statutory right – accrues only on registration - territorial • Right to prevent all other from
producing, importing, selling or distributing products having an identical appearance or a fraudulent
or obvious imitation • Monopoly Period of 10 years extendable by 5 • Gives you a Unique Selling
Point (USP) • Is an asset & can be licensed.

Scope of protection of design registration  

The aesthetics of any article or product of manufacture are protected and registered in India under
the Designs Act, 2000 (“the Act” for short) and Designs Rules, 2001, as amended in 2008. A “Design,”
according to Section 2 (d) of the Act, is defined as features of shape, configuration, pattern,
ornament or composition of lines or colors applied to any article by any industrial process or means.
The article can be a two-dimensional or three-dimensional article, and should be capable of being
made and sold separately. The design in the finished article should appeal to and be judged solely by
the eye.   Protection of design does not include any mode or principle of construction or anything,
which is in substance a mere mechanical device, and does not include any trademark or property
mark or artistic work. Thus, the Act provides protection or registration right only to the designs that
are aesthetic in nature, applied to articles, and not to the designs dictated by a functional feature.  

 Criteria for Design Registration:

For registeration of designs, the designs axt provides low level of scrutiny by not providing an
examnation procedure at the time of filing of design application. A design may be registered only on
an application, provided it fulfil criteria as prescribed in the act.

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 register.