ALIGARH MUSLIM UNIVERSITY

MURSHIDABAD CENTRE
SESSION: 2021-22

2 GCT
nd

SUBJECT - INTELLECTUAL PROPERTY LAW

TOPIC = EVOLUTION OF DESIGNS ACT IN INDIA & PROTECTION OF

INDUSTRIAL DESIGN UNDER INTERNATIONAL IPR REGIME

SUBMITTED TO SUBMITTED BY

MS. SHAILA MEHMOOD M. Daniyal Siraj

(Asst. Professor) 18BALLB55
GL0749
4TH YEAR
7th SEMESTER
Evolution of Designs Act in India & Protection of Industrial Design under
International IPR Regime
1. INTRODUCTION:
Design is a process of taking something from its existing state and moving it to a preferred state.
This applies to new artifacts; whose existing state is undefined and previously created artifacts,
whose state stands to be improved. An Industrial Design is the commercial or aesthetic aspect of
an article. It makes a product attractive and appealing hence, they add to the commercial value of
a product and increase its marketability. The design may consist of three-dimensional features
such as shape or surface of an article, or of two-dimensional features, such as patterns, lines or
color. Designs are used in various distinct productions and across the various business or
commerce like handicrafts, special ornamentations, jewelry, medical, and engineering
appliances. An Industrial design rights is an intellectual property rights that protects the visual
design of objects that are not purely utilitarian. It safeguards the appearance, structure, style,
design of the industrial object such as tools, spares, machines and instruments.

2- HISTORY OF INDUSTRIAL DESIGN RIGHTS:

Emergence of Designs Rights:
Before discovering the history and the evolution of the designs act in India, it will be better to see
the history of the designs act in United Kingdom, as they are the pre-runners in protecting the
industrial designs and our laws relating to industrial designs are based on their legislations during
the colonial period. The law of designs has a long history dating back to the latter part of 18th
century. Its origin can be found from the United Kingdom in 1787 with the Designing and
Printing of Linen Act. The Copyright and Design Act was passed in the year 1839 and
increased the protection given to fabrics and textiles by extending the law according to the
modern design. This act only introduced the system of registration to avail benefits under the act.
Then the act of 1842 consolidated all earlier acts and provided a higher level of protection and
increased the remedies for infringement.
Importance and Recognition:
In 1949, the registered designs were once more separated entirely from patents and the law
relating to registered designs was governed by the Registered Design Act 1949. Then it was
further modified in the year 1968 by a concise act. The Registered Designs Act 1949 is still in
force today but as amended by the Copyright, Designs and Patents Act of 1988. The new
amendment of 1988 was intended to reduce the luxurious nature of the design’s rights. The
Directive mandate all the member countries of EC to implement the directive before 2001, to
give the holder of a registered design right an exclusive right to authorize or prohibit others from
using the design in anyway, but the right holders cannot restrict the private or non-commercial
use. Further the period of protection was extended to a maximum total of twenty-five years. The
European Community has introduced a community design in the year 2002 that provides a
unitary industrial design right.
Paris Convention and Hague Agreement:
At the international level the Paris convention for the protection of Industrial Property, 1883 is
the first international convention which discusses the concept of industrial property and its
protection. The convention was amended in the year 1979 and mandates the countries of the
union to protect Industrial designs.
Another important international document which provides adequate protection to the industrial
property is the Geneva Act of the Hague Agreement concerning the International Registration of
Industrial Designs which was adopted in the year 1999. The Hague system provides an
international registration of designs which provides a mechanism for registering a design in
countries and intergovernmental organizations party to the agreement.

3- EVOLUTION OF DESIGNS ACT IN INDIA

 Introduction of Design Rights by British:
The first act in India to grant exclusive privileges to inventors of new patterns and designs was
passed in 1872. This act was titled as “The Patterns and Designs Act, 1872”. It gave a
definition of new manufacture to include any new or original pattern or design or the application
of such pattern or design of the application of such pattern or design to any substance or articles
of manufacture. Afterward the act was replaced by a new consolidated act called The Inventions
and Designs Act, 1888. Then it came the Patents and Designs Act, 1911, which repealed the
previous acts relating to patents and for the first time in India this act has introduced a new
separate office for the execution of law relating to designs.

 Significance and effectiveness of Colonial Designs Act of 1911:

The Act of 1911 excludes any trademark or property mark from the definition of the term
‘design’ which was stated as only the features of shape, configurations, pattern or ornament
applied to any article by any industrial process, which in the finished article appeal to and are
judges solely by the eye. The act further provides certain essential requirements to be satisfied in
order to get a design registered in India. When a design is registered under this act, the proprietor
of the design shall have copyright on his design for a period of five years, which may extend to
fifteen years on an application filed before the registrar with the prescribed fee for the extension
of the period of copyright before the expiry of the five years term.

 Protection of Industrial Designs under the new Indian Designs Act, 2000:
The 1911 act was amended so many times in the British colonial period and after the Indian
independence. Finally, Indian Designs Act, 2000 was enacted to consolidate and amend the law
relating to the protection of designs and to implement the TRIPS Agreement. It came into effect
in India on May 11, 2001, replacing the old law of 1911 to provide more effective protection to
the registered designs and to encourage design activities. The new act of 2000 grants the owner
or proprietor of the registered designs an exclusionary right of selling, licensing, assigning and
using the same in any product. In India, registration of an industrial design is possible to protect
if it is new or original provided it is a: non-functional features of shape, configuration, pattern,
ornamentation or composition of lines or colors, applied to any article whether in two or three
dimensional or in both forms, by any industrial process or means whether guide, mechanical or
chemical, separate or combined.

The new act has made another major change to the existing act by extending the initial period of
protection to ten years from five years, but the maximum term of protection remains the same for
fifteen years. In case of piracy of the designs, the person who infringed the design copyright shall
be liable for the fine not exceeding fifty thousand rupees.

4- INTERNATIONAL PROTECTION OF INDUSTRIAL DESIGNS:

 TRIPS:
The TRIPS Agreement obliges members to provide for the protection of independently created
industrial designs that are new or original. It says that the members may provide that designs are
not new or original if they do not significantly differ from known designs or combinations of
known design features and that such protection shall not extend to designs dictated essentially by
technical or functional consideration. Further the TRIPS require the members to grant the owner
of a protected industrial design the right to prevent third parties not having the owner's consent
from making, selling or importing articles bearing or embodying a design which is a copy, or
substantially a copy, of the protected design, when such acts are undertaken for commercial
purposes. Under the TRIPS agreement, the minimum term of protection given to the proprietor
should be ten years.

 Objectives and basic features of the Hague System:

The Hague system gives the owner of the industrial design the possibility to have his design
protected in several countries by simply filing one application with the International Bureau of
WIPO, in one language. The design so registered with the WIPO under this system will get the
protection at all the member countries to the Agreement. The Hague system was aimed at
providing simpler and more cost-effective design protection solutions for the users from the
member states. It also simplifies the management of an industrial design registration, since it is
possible to record subsequent changes or to renew the registration through a single procedural
step with the International Bureau.

 Filing Application and Procedures for International registration:

An international registration may be obtained only by a natural person or legal entity having a
connection, through establishment, domicile, nationality with a Contracting Party to any of the
three Acts of the Hague system. Over 99 percent of international registrations currently obtained
are governed by either the 1999 or the 1960 Act; hence the application of the 1934 Act has been
frozen since January 1, 2010. Only under the 1999 Act, an international application may be filed
on the basis of habitual residence in a contracting party. An international application must be
filed on the official form and it must contain a reproduction of the industrial design concerned,
together with the designation of the contracting parties in which protection is sought. The
international application may be filed; at the option of the applicant either directly with the
International Bureau or through the Office of the applicant’s contracting party. An international
application is subject to the payment of three types of fees: a basic fee, a publication fee, and
designation fee for each designated country. All the payment to the International Bureau should
be made in Swiss currency.

 E-filing:
WIPO introduced an electronic interface for electronic filing (e-filing) for the online filing of an
international application directly with the International Bureau of WIPO. The electronic filing
system has a number of advantages over filing a paper application, such as: faster delivery of the
application, lower fees when the application contains many reproductions of the industrial
designs to be registered, since reproductions submitted on paper are subject to a fee for each page
beyond the first, automatic checking of much of the information provided, reducing the
likelihood of irregularities. e-filing application also must have all the details of the created design
and the creator like name, address, phone number, e-mail, designation, indication as to
contracting party, identity of the creator and specimens of the design same like the paper form
applications.

 Examination:
Once filed, the application will be examined by the International Bureau of WIPO for formal
requirements, with the applicant being given the opportunity to make corrections. When all
formalities have been met, the application will get recorded in the International Register and
published electronically in the International Designs Bulletin of WIPO. This publication takes
place on WIPO’s website and contains all the relevant data concerning the international
registration, including a reproduction of the industrial designs. The date on which each issue of
the Bulletin is made available on the internet will be communicated electronically by the
International Bureau to the office of each contracting party.

 Grant of protection and the Term of protection:

The Office of a contracting party, if satisfied on substantive examination, can send to the
International Bureau a statement to the effect that protection is granted to the industrial designs
that are the subject of the international registration in the contracting Party concerned. In every
contracting party that does not issue such a refusal, the international registration takes effect and
provides the same protection as if the design(s) had been registered under the domestic law of
that contracting party. The International registration shall be affected for an initial period of five
years and may be renewed for one or more additional terms of five years in accordance with the
procedures and after payment of fees. The maximum duration of protection in each designated
contracting party corresponds to the maximum duration provided for by the domestic laws of that
contracting party. In Europe, Community Designs provide for rights within the European
community that can extend for up to 25 years, subject to payment of renewal fees every five
years.

5-LOCARNO AGREEMENT – INTERNATIONAL CLASSIFICATION

FOR INDUSTRIAL DESIGNS:
The Locarno Agreement spells out how industrial designs are classified and protected around the
world. The agreement was finalized in 1968 and amended on 1979, but is still being ratified.

The Locarno classification gives and international classification system for industrial designs
which established in accordance with the agreement of 1968. It classifies Industrial design
thirtytwo classes and two hundred and nineteen subclasses based on goods or products in an
alphabetical order in which industrial designs are incorporated. Product classes covered in the
Locarno Agreement include foodstuffs, which are further broken down into such items as baked
goods, meat and produce; brush ware, which is further broken down into items such as paint and
tooth brushes and brushing machines; and building and construction elements etc. In total there
are 7,024 indications of different kinds of goods which have been classified and, for searching
purposes; these are provided in a purely alphabetical list as well as alphabetically within each
subclass. In order to keep the Locarno Classification up to date, it is continuously revised and a
new edition is published every five years. The revision is carried out by a Committee of Experts
set under the Locarno Agreement. All States party to the Agreement are members of the
Committee of Experts. At present 49 states were party to the Agreement and they have to adopt
and apply the Locarno classification for industrial designs.

6-CONCLUSION:
The Industrial Design registration helps in safeguarding the ornamental or aesthetic elements of
the article and it gives exclusionary rights to the holder or proprietor of the registered designs
against unauthorized use like replicating or copying by a person without his consent. The
protection to the industrial designs helps the economic development, which promote creativity in
the industrial arena. From the above discussion it is clear that The Hague system for international
registration of designs provides maximum advantages and benefits to the international
merchandisers to acquire registration and get protection within the contracting states through a
single application. It makes the procedure simple and efficient in registering and getting
protection for the designs created by an individual at the international level. However, India is
not a member to the Hague system of international registration of design, it gives wider
protection to the industrial designs under the design’s act of 2000. But it will be better to have
international protection in India to make the protection available in all the contracting parties to
the Hague system and to provide much protection to the international traders in India.