Industrial Design

Meaning

The basic understanding of Design is what is seen by a naked eye, the outlook of anything.
According to Design Act, 2000 design has been defined as,

“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 trademark as defined in clause (v) of sub-section
(1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark
as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as
defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).”

In India, the design law, a type of intellectual property, is governed by the Designs Act, 2000.
In 2000, the old Design Act, 1911 was amended to incorporate the amendments which were
rendered necessary because of the tremendous progress made by India in the field of Science
and Technology. The said Act was amended with a view to provide more protection to
registered designs and to promote design activity in order to promote the design element in an
article of production. The Rules were last amended in the year 2008.

Registration

Chapter II deals with the registration of designs.

Criteria for registration

The pre-requisites for a design to qualify for protection are as follows

● It should be novel and original. “Original” in relation to a design, means originating

from the author of such design and includes the cases which though old in themselves
yet are new in their application1.
● There should be no prior publication or disclosure of the design.

● It should be significantly distinguishable from designs or a combination of designs

that are already registered or pre-existing or disclosed to the public.

● It should not include any scandalous or obscene matter or any feature that is purely
functional in nature.2

In addition to this, the design should not be contrary to public order or morality and it should
never have been registered nor have been already in existence before.3

1
Section 4
2
Section 11
3
(CS (OS) 2802/2015)
A design can also be registered in cases where it is not new provided it is original as has been
held in Bharat Glass Tube Limited v. Gopal Glass Works Ltd. In this case, the issue that
arose was whether the design was not new or original in view of the fact that the
roller bearing the design is published before the date of registration. The court held
that the term original, in relation to a design, means originating from the author or creator of
such design and includes those cases which though old in themselves yet are new in their
application. The Court noted that under Section 2(d) design means the application of shape,
configuration, etc. to any article and since in this case, the respondent had specifically mentioned in the
application form that he was applying the designs only to glass sheets, he would have exclusive rights to
do so despite the fact that the design already existed on the engraved rollers.

Veeplast v. Bonjour
It was stated by the Delhi High Court that the legal proposition therefore was that the two products
need not be placed side by side and the matter has to be examined from the point of view of a
customer with average knowledge and imperfect recollection. The Court further stated that in the
present case even if the two products were kept side by side, it could not be disputed that the primary
design of the jug of Veeplast had been copied by the Defendant. The Court noted that the primary
designs of the two products were identical and the only differences were in the design of the handle
and cap.

Further, it was held that In determining whether two designs are identical or not, it is not necessary
that the two designs should be exactly the same. The main consideration to be applied is whether the
broad features of shape, configuration, pattern, etc. are same and if they are substantially the same
then it will be a case of imitation of the design of one by the other"

Who may apply

Any person claiming to be the “proprietor of any new or original design” can apply for the
registration of the design. The “proprietor of a new or original design”,

(i) where the author of the design, for good consideration, executes the work for some other
person, means the person for whom the design is so executed;

(ii) where any person acquires the design or the right to apply the design to any article, either
exclusively of any other person or otherwise, means, in the respect and to the extent in and to
which the design or right has been so acquired, the person by whom the design or right is so
acquired; and

(iii) in any other case, means the author of the design; and where the property in or the right
to apply, the design has devolved from the original proprietor upon any other person, includes
that other person.4

The process of registration of an industrial design in India can be understood with the help of
following flowchart5:

4
https://www.remfry.com/wp-content/uploads/2020/05/PDF-1.pdf
5
Section 2(j)
Section 9 of the Design Act specifies the grant of certificate of registration to the proprietor
of the design after it is registered.

Effect of registration

The Copyright on a registered design is in total for 15 years. Initially, the Copyright in
Design is registered for 10 years, which can further be extended by 5 years on making an
application for renewal.6 Here, copyright means the exclusive right to apply a design to any
article in any class in which the design is registered.7

If the design is disclosed in such circumstances that would make it contrary to good faith for
the other person to use or publish it and the disclosure of a design in breach of good faith in
any person, other than the proprietor of the design, and the acceptance of first and
confidential order for articles bearing a new or original textile design intended for
registration, shall not be deemed to be a publication of the design sufficient to invalidate the
copyright thereof if registration thereof is obtained subsequently to the disclosure or
acceptance.

Cancellation of design

As per Section 19 of the Designs Act, 2000, at any time during the subsistence of the Design
registration, any person interested can seek cancellation of design registration by filing a
Petition before the Controller, on the following grounds:
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the
date of registration; or
(c) that the design is not a new or original design; or
6
Section 2(c)
7
Section 2(g)
(d) that the design is not registerable under this Act; or
(e) that it is not a design as defined under clause (d) of section 2..."

Further, an appeal against the order of the Controller can be made to the High Court.

Lucky Exports v. The Controller of Patents and Designs and Ors.

The Calcutta High Court in the 2019 judgment dealt with the application for the cancellation
of a design “COASTER BRAKE SUB ASSEMBLY”. The Court in this case set aside an
order rejecting the application for cancellation of a registered design pertaining to Coaster
Brake Hub Sub-Assembly because the Controller had not determined whether the design
possessed aesthetic appeal, and did not consider novelty, originality and prior publication for
determining registrability. The Court stated in the case that the design of a sub-assembly that
forms part of the Coaster Brake Hub can be registered if it is capable of being made and sold
independently. Further, it was held that as long as the article is not merely a functional device
and appealed to the eye the same was capable of design registration if it was original. The
Court ordered the cancellation of the Respondent’s design as he was unable to prove the
originality of the device.
Restoration of lapsed design

Where a design has lapsed due to failure to pay the fee for the extension of copyright
after 10 years, the proprietor of such design or his legal representative and where the
design was held by two or more persons jointly, then, with the leave of the Controller
one or more of them without joining the others, may, within one year from the date on
which the design lapsed, make an application for the restoration of the design in the
prescribed manner on payment of such fee as may be prescribed. An application shall
contain a statement fully setting out the circumstances which led to the failure to pay
the prescribed fee, and if the Controller is satisfied that the failure to pay was
unintentional and the application has been filed without undue delay then he may
restore the registration of the design.

The rights of the registered proprietor in such a case shall be subject to such
provisions as may be prescribed and to such other provisions as the Controller thinks
fit to impose for the protection or compensation of persons who may have begun to
avail themselves of the benefit of applying the design between the date when the
registration of the design ceased to have effect and the date of restoration of the
registration of the design.

Piracy of Registered Designs

Section 22 of the Designs Act lists the different acts that amount to piracy of the registered
design, including

1) any application of the registered design for the purpose of sale during the existence of the
copyright in the design without a license or the express consent of the registered proprietor;
2) the importation for sale without the consent of the registered proprietor and having applied
to it the design or any fraudulent or obvious imitation; or,
3) knowing that the design, or a fraudulent or obvious imitation has been applied to any
article in any class of articles in which the design is registered, published, or exposed for sale,
without the consent of the registered proprietor of such an article.

Any grounds on which the design can be cancelled can also be used as a defense in an
infringement action.that any fraudulent or obvious imitation of a registered design without
the consent of the proprietor is unlawful and also prohibits the import of such material which
closely resembles a registered design.

Remedies

The Designs Act provides for civil remedies in cases of infringement of copyright in a design,
but does not provide for criminal actions. The civil remedies available in such cases are
injunctions, damages, or delivery of the infringing articles8.

In "Micolube India Limited and Others versus Rakesh Kumar and Others" reported as 199 (2013)
DLT 740 the Delhi High Court considered the proposition that "Whether there can be availability of
remedy of passing off in absence of express saving or preservation of common law of Designs Act,
2000 and more so when rights and remedies under the Act are statutory in nature?" It was held that
remedy of passing off in so far as it relates to claim of protection for the shape of articles is not
available for purposes of enforcement of rights and remedies under the Design Act and such remedy
is clearly absent under the Designs Act considering the avowed objective of the Act i.e. to provide
limited protection with no unnecessary extension. However, "If the passing off right is allowed to
subsist irrespective of where the design is registered or expired would mean that Design Act is
rendered otiose". Therefore it was held that the remedy of the passing off would lie in case the
competitor not merely copies the shape of the article existing in the public domain but also copies the
trade dress, get up or any other feature in which case proprietor can take action to the extent there is
confusion as to source as indicated on the packaging of the article.
In Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd. reported as 256 (2019)
DLT 1 it was held that "one composite suit can be filed by a Plaintiff against the Defendant
by joining two causes of action, one of infringement of the registered design of the Plaintiff
and the second of the Defendant passing off its goods as that of the Plaintiff on account of
the goods of the Defendant being fraudulent or obvious imitation i.e. identical or deceptively
similar, to the goods of the Plaintiff."
The Hon'ble Bombay High Court in Cello Household Products and Others versus Modware
India and Others reported as 2017 (72) PTC 367 (Bom) has laid down the foreground for
testing whether an action constitutes 'Passing off' or not. It was observed by the Hon'ble
High Court that "in any Passing off action, the Plaintiff must satisfy all three probanda of so-
called Classical Trinity: (i) reputation and goodwill in goods; (ii) misrepresentation by the
Defendants; and (iii) damage. It is not a requirement of law in infringement or passing off in
relation to a design that every single aspect must be entirely newly concocted and unknown
to history of mankind

In 2017 in Apollo Tyres Ltd v Pioneer Trading Corporation & Anr 9, the court granted the
relief of passing off to the plaintiff holding that “the non-registration of the design contained

8
Section 5 and 6
9
Design Law in India-Everything you must know, Mondaq, Available at-
https://www.mondaq.com/india/patent/655856/designs-law-in-india-everything-you-must-know.
in the tread pattern does not take away the rights of the person – who uses the said design
contained in the tread pattern, as a trademark – to sue for passing off”.10
Crocs U.S.A. Inc. v Action Shoes & Ors.
The Delhi High Court while dealing with infringement and passing off of footwear, discussed
the interplay between trademark and design law, to adjudicate on whether trademark rights
could be claimed over a registered design. Holding to the contrary, the court stated that a
broad claim of passing off under trade dress and overall get up could be made provided that
there existed an additional/extra feature to the registered design, that qualified as subject
matter for trademark protection. If there is a car design that is protected under design law
wherein an additional feature of the car (let us assume an extra tail light) has accrued
significant goodwill and reputation, such that it is only associated with the proprietor, in such
a scenario, an infringer could be restrained from using this additional taillight as a part of its
design by means of the common law remedy of passing off. Additionally, this remedy of
passing off would be available even after the design registration has lapsed.

Design registration vis-a-vis copyright protection

The registration of designs and copyrights cannot exist concurrently due to Section 15(1) of
the Copyright Act, 1957. Also, the copyright in any design, which is capable of being
registered under the Designs Act, but is not, will lose its copyright as soon as the design has
been reproduced 50 times by an industrial process by either the owner of the copyright or his
licensee.

10
Section 22.