IPR-II Module 4

LL.
B- I[2017 Pattern] LO 0609 Intellectual Property Rights-II
Module 04: The Designs Act, 2000
1. Development of Designs Law in India
2. Definitions, Controller of designs, Registration of designs - Essential

requirements, Non-registrable designs, Procedure of registration, Term of
copyright in designs
3. Cancellation of registration, Restoration of lapsed designs
4. Rights of design holders, Assignment and Transmission
5. Piracy (Infringement) of registered designs and Remedies for Infringement
Dr. Pandhare B. D.[LL.M.Ph.D.] Asst. Prof. New Law College, Ahmednagar Page 1
LL.B- I[2017 Pattern] LO 0609 Intellectual Property Rights-II
1. Development of Designs Law in India
The origin of the Design Act in India traces back to the British period. The first Act that
gave privileges and protection to designs was the Patent and Designs Act, 1872. This Act
supplemented the Act of 1859 which was passed by the Governor-General of India to protect
industrial designs and grant privileges to inventors. The Inventions and Designs Act of 1888
repealed this Act of 1872.The Act of 1888 was a reflection of the Designs Act of the United
Kingdom. In the year 1911, the British government enacted a new law in the form of the Patent
and Designs Act repealing all the prior legislations. In 1930, this Act was amended and the
government came up with some changes in the process of registration of designs in which the
concept of new and original design changed to the new or original design. This legislation used
to govern the matters related to both patents as well as designs. In 1970, the Patent Act was
enacted to deal with the matters of patent specifically. All the provisions regarding patents from
this Act were repealed and it continued to deal with Industrial designs till 2000. India became a
member state of the WTO in the year 1995. Consequently, the Patents and Designs Act of 1911
was repealed and a new act called the Designs Act, 2000 was enacted in compliance
with TRIPS (Trade-Related aspects of Intellectual Property Rights) to make design laws for the
country. This new Act was enforced on 11th May 2001.
2. Definitions, Controller of designs, Registration of designs - Essential

requirements, Non-registrable designs, Procedure of registration,
Term of
Design act 2000 definition
“Design” means features of shape, pattern, configuration, ornament or composition of

colors or lines which is applied in three dimensional or two dimensional or in both the forms
using any of the process whether manual, chemical, mechanical, separate or combined which in
the finished article appeal to or judged wholly by the eye.
What it not Design
It does not include any mode of construction or any trademark as defined under clause (v)
of sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958. It does not
include „property mark‟ as defined in section 479 of the Indian Penal Code, 1860. It does not
include any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
What is design
The term „Design‟ under Design Act is defined as :
“Features of shape, any configuration, pattern, ornament or composition of lines or colours

which is applied to Two dimensional or three dimensional or in both the forms using any process
including manual, chemical or mechanical, separate or combined which in the finished article
appeal to or judged solely by the eye.”
It neither includes any mode of construction nor any trademark as defined under clause
(v) of sub-section (1) of section 2 of Trade and Merchandise Marks Act, 1958. It even does not
includes 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.
With reference to the Design Act, 2000 what are articles?
Under the provisions of Design Act, 2000, any manufactured object is known to be “article”. The
object can be of any substance irrespective of artificial or natural. The article must be capable of
being made and sold separately.
CONTROLLER OF DESIGN
A Controller defined under Section 3(1) of the Design Act, 2000, means the Controller
General of Designs, Patents, and Trade Marks. The controller can be interpreted as including a
reference to any officer discharging the functions of Controller in pursuance of Section 3(3)
of the Design Act, 2000.
The Office of the Controller General of Patents, Designs and Trademarks is at Mumbai.
Under Section 3 of the Trademarks Act, 1999, the Government appoints the Controller General
of Patents, Designs and Trademarks. The person so appointed under the Trademarks Act,
1999, is appointed as the Controller of Designs for the purposes of the Designs Act, 2000.
The Central Government can also appoint some other officers who can function, under the
directions and superintendence of the Controller General of Patents, Designs and Trademarks.
The Controller under the Design Act, 2000, can authorize in writing, from time to time by
special or general order. The Controller General of Patents, Designs and Trademarks can
authorize the Deputy Controllers, Assistant Controllers, and Joint Controllers of Patents &
Designs to authorize the functions of Controller General of Design, Patents and Trademarks.
Powers of a Civil Court
As per Section 32 of the Design Act, 2000, in any proceedings before the Controller under the
Design Act, 2000, the Controller has the powers of a civil court for the purpose of:
 receiving of evidence;
 administering oaths;
 administering the attendance of the witnesses;
 proceedings for convincing the discovery and production of the essential documents;
 issuing commissions for the examination of witnesses; and
 awarding costs, such an award will be executable as a decree of a Civil Court.
Power of Awarding costs
As per Section 32 of the Design Act, 2000, read with Rule 43 of the Design Rules, 2001, in all
the civil proceedings before the Controller of Design under the Design Act, 2000, the Controller
can award any such costs as he/she considers reasonable, having in regard all the different
circumstances of the case. However, Controller of Design cannot award the maximum amount of
cost in a civil proceeding to a party, with respect to a matter given in the Fourth Schedule of
the Design Act, 2000. The maximum amount of cost should not exceed the mentioned therein in
the Fourth Schedule.
Power to seek directions of the Central Government
As per Section 34 of the Design Act, 2000, in a case whenever, the Controller of Design has
difficulty or doubt in the administration of any of the provisions provided under the Design Act,
2000, he/she can seek the directions of Central Government in the difficult or doubtful matter.
Powers of Controller of Design to Exercise Discretionary Powers
As per Section 33 of the Design Act, 2000, read with Rule 44 of the Design Rules, 2001, the
discretionary power the Controller can exercise is as follows:
 The Controller should give an opportunity of being heard to the party with at least 10
days‟ prior notice, before acting adverse to any party.
 The Controller of Design should exercise the discretionary powers judiciously with
caution and due care and not in an arbitrary manner.
 Reasons for any adverse decision given by the Controller is required to be recorded in the
file by the Controller of Design.
Power of Controller of Design to correct clerical errors
On a request made by a person in Form-14 along with the prescribed fees, as per Section 29 of
the Design Act, 2000, the Controller of Design is required to correct any clerical error in the
representation of a Design or in the address or name of the owner or proprietor of any Design, or
in any other matter, which has been already entered upon in the Register of Designs at the
Design Office.
Powers of Controller of Design to Require Statements
As per Rule 45 of the Design Rules, 2001, the Controller of Design may require the statements
concerning whether an agent or applicant desires to be heard or not. The Controller of Design
may at any time require the agent or applicant to submit a statement in writing within the
prescribed time period, or to attend before him/her and make explanations with regard to such
matters as the Controller of Design may require him/her to make.
General Power of Amendment
As per Rule 46 of the Design Rules, 2001, the General Power of Amendment the Controller of
Design has is as follows:
 No special provision is made in the Design Act, 2000, regarding any document for its
amendment, can be amended, by the Controller of Design. Any irregularity in procedure
of amendment which, in the opinion of the Controller of Design, may be removed
without damaging the interest of any person. The procedure of amendment can also be
corrected if the Controller of Design thinks fit to do so, and upon such terms as directed
by him/her.
 The applicant is required to file a petition stating the amendment required for the reasons.
The required fee should also be submitted with the petition of the applicant.
 The Controller of Design while considering amendment petitions of an applicant, can
remove only those irregularities which do not damage the interest of the applicant or any
other person.
 Furthermore, only those amendments for which no special provision is provided in
the Design Act, 2000, and which can be made without any damage to the interests of any
person are only allowable by the Controller of Design.
 Generally, a failure to act within the prescribed time period will not be considered as an
irregularity, that is capable of being removed.
 If any amendment is required to be made resulting from certain mistake that is made on
part of the Design Office, no fees should be charged.
General Powers of Controller of Design for extension of time
As per the Rule 46 of the Design Act, 2001, the general power for the extension of time with
the Controller of Design is as follows:
 The time period prescribed by the Design Rules, 2001, for taking any proceeding or
doing any act, for which there is no special provision is made in the Design Act,
2000, can be extended by the Controller of Design, for a time period which should not
exceed 3 months, if he/she thinks fit, and upon such terms and conditions as he/she may
direct.
 The petition filed by the applicant should explain in detail the circumstances that require
the extension of the time period and also the reasons supporting such circumstances.
 Extension of time period should be allowed only in cases where there is no special
provision for extension of time is provided in the Design Rules, 2001. When a time limit
is specifically prescribed in the Design Act, 2000, itself, no extension of time period can
be claimed under this provision.
What are the other Powers of Controller of Design under Design Act, 2000, and the Design
Rules, 2001?
The other Powers of Controller of Design under the Design Act, 2000, and the Design Rules,
2001 are as follows:
 Under Section 45 of the Design Act, 2000, the Controller of Designs is required to
prepare an annual report of the day to day activities of the Designs Wing. The Annual
Report prepared by the Controller of Design is placed by the Central Government before
both the Houses of the Parliament.
The Annual Report of the Design Wing prepared by the Controller comprises information on
the following:
 A brief about the activities during the year;

 Design Applications that are filed and registered;
 The Examination;
 The Cancellations;
 The Restoration;
 The extension of Copyrights;
 The requests for inspection of the registered designs;
 The certified copies;

 The assignments;
 The various Designs in force;
 The total revenue.
The Annual Report submitted by the Controller of Design is required to be uploaded on the
official website (www.ipindia.nic.in) after the same has been placed before both Houses of the
Parliament.
 As per Section 37 of the Design Act, 2000, the Controller of Design can also take
evidence through viva voce, in addition to an affidavit, or can allow the cross-
examination of any party on the contents of his/her affidavit.
 As per Section 9 of the Design Act, 2000, the Controller of Design can furnish one or
more copies of the certificate to the proprietor of Design, in case the original certificate is
lost by the proprietor.
 As per Rule 31 of the Design Rules, 2001, the Controller of Design can require such
proof of alteration so requested as he/she may think fit before acting on the alteration
request.
 Under Section 17 (1) of the Design Act, 2000, the Controller of Design can require the
inspection of Registered Design and also the Register of Designs.
 As per Rule 39 of the Design Rules, 2001, after hearing both the parties, or if neither of
the party‟s desires to be heard, then without a hearing, the Controller of Design should
decide the application for Rectification of Design and issue a speaking order. The
decision of Controller of Design is required to be notified to the parties and should be
published in the Official Journal.
 As per Rule 24 of the Design Rules, 2000, the Controller of Design can pass a speaking
order allowing for the Restoration of Design.
 As per Rule 29 of the Design Rules, 2001, after hearing both the parties, or if neither of
the party‟s desires to be heard, then without a hearing, the Controller of Design should
decide the petition for the Cancellation of Design and issue a speaking order in the same
regard. The decision of Controller of Design should be notified to both the parties and
should be published in the Official Journal.
 As per Section 9 of the Design Act, 2000, the Controller of Design upon registration
should issue a certificate of registration of Design to the proprietor of the Design.
Conclusion
The provisions related to the General Powers of Controller of Design are provided under
the Design Act, 2000, and the Design Rules, 2001. The Controller of Design is the main person
responsible for the administration of the Design system in India. The Controller of Design is
responsible for resolving all the issues related to a specific Design for this reason the Powers of
controller of Design is kept very wide in India. In India nowadays people are more concerned
about preserving their article by having a Registration of a Design for their article
Essential Requirements for registration
Novelty and originality
A design can be considered for registration only if they are unique. A combination of
previously registered design can also be considered only if the combination produces new
visuals. In a case Hello Mineral Water PVT. LTD. v. Thermoking California Pure, a design of
water dispenser having a cylindrical shape was not considered as new on the grounds that mere
shape and form is not sufficient to prove novelty.
Design must be unique, a Prior publication is not acceptable
The design must not be a published one. If the design is already published than the design
is not eligible for the publication. There should not be any tangible copy available already in the
market if you are seeking registration of the design that is in digital format. Displaying of the
design in any fashion show by the creator is the publication of that design. Secret and private use
of the design does not amount to the publication and can be used for the experimental purpose.
It was held in Kemp and company v. Prima Plastics LTD. that disclosure of design by
the proprietor to any third person cannot be claimed as publication provided that the disclosure
must be in good faith.
Making application of design to an Article
The applicability of the design should be to the article itself. It can be informed of a
three-dimensional figure. There are two-dimensional figures also included in this act i.e any
painting or any graffiti on the walls or print on the bedsheets.
The design must not be contrary to the order and morality
The design must be registrable under the Design Act, 2000. It must not be prohibited by
the Government of India or any institution so authorized. The design must be capable of
registering under Section 5 of this act. The design which can cause a breach of peace and may
hurt the sentiments of the people may not be allowed to get register.
What is to be considered to register under this Act?
Looking forward to registering a design under Design Act, 2000, one must ensure following
features in your design which are:
 The work must be capable of selling and made separately.
 It must be original and new to the market. The plagiarised design will not be
considered under this act.
 It should be purely distinguishable from other designs.
 It must not relate to obscenity or any material which is inappropriate.
Who is entitled to seek Registration?
As per the provisions of Design Act, 2000 any proprietor who is seeking registration of a
design which is original and unpublished previously in any country which does not seems to be
contrary to any law and order of that country can file an application for registration. A proprietor
as per Section 2(j) includes that person who
1. is the author of that design
2. acquired design for a valid consideration and
3. Any person to whom the design has been devolved from the original proprietor.
In case there is more than one author than the design must be applied by the joint authors only.
Locarno classification
Locarno agreement is an agreement as per which the designs are registered under the Act.
It classifies goods for the purpose of registering them which helps in Design searches. It divides
designs into different classes which are mainly function-oriented.
Procedure for registration of design in India
Chapter 2 of the Design Act deals with the registration of designs and the procedure to be
followed for the same. The following steps must be followed:
 An application for the registration shall be made in the patent office in the prescribed
form along with the prescribed fee. The class in which the design is to be registered
must be specified in the application and the article(s) to which it is to be applied.
There are separate applications which need to be filed for each class of article.
 The controller will give the application for examining it so as to check whether the
design is capable of being registered or not. If everything seems perfect then the
controller will accept the application and proceed further.
 If there is any objection, then the applicant or his agent will be asked to make
necessary amendments so as to register the design and nullify the objection.
 If the objection does not get removed within three months after the hearing, the
application will be withdrawn and it must be noted that
Application for registration of designs
The application for registration of designs is given under Section 5 of the Design Act,
2000.
 The controller registers a design under this Act after verifying that the design of any
person, claiming to be the proprietor, is the new or original design not previously
published anywhere and is not against any public policy or morality. Provided that
such a design should be capable of being registered under this Act.
 The applications under the Act shall be filed in the Patent Office in the prescribed
manner along with the prescribed fee for filling the form.
 The design should be registered in a specific class and not in more than one class. In
case of any doubt regarding the class in which the design should be registered, the
Controller will decide the matter.
 The controller may even reject any design and not register it. In such a case, the
person aggrieved may file an appeal before the High Court.
 If any application is not complete within the prescribed time limit owing to the fault of
the applicant then it shall be abandoned.
 A design when registered shall be registered as of the date of the application for
registration.
A wide variety of items that can be registered under the Act include cutlery, dresses, etc.
Items that cannot be registered as a design under the Act
 Signs, emblems or flags of any country.
 Size of any article, if changed.
 Structures and buildings.
 Integrated circuits‟ layout designs.
 Trade variations.
 Any principle or mode of construction of any article such as labels, tokens, cartoons,
cards, etc.
 Books, calendars, certificates, jackets, forms-and other documents, greeting cards,

maps and plan cards, postcards, leaflets, stamps, medals, dressmaking patterns.
 A mechanical contrivance.
 Workshop alterations of components of an assembly.
 Parts of any article which is not manufactured and sold separately.
Duration of the registration of a design
The total time for which a design can be registered is 15 years. Initially, it was 10 years,
which could be extended for another 5 years by paying a fee of Rs. 2000 to the Controller but it
should be done before the expiry of that 10 years period. The proprietor of any design may even
file an application as soon as the design gets registered for such an extension.
Entitlement of registration under design act 2000
According to the Design Act of 2000, a proprietor who wants to get his design registered
and it is original and is not published previously anywhere in any country and the one which
does not seem to be clashing to any law and order of that country, can file an application for
getting the design registered. A proprietor includes the persons who:
 Is the author of the design;
 Has acquired the design for a valid consideration and
 Anyone to whom that design has been devolved from the original titleholder.
In case if there is more than one author of the design, then the design must be applied by the joint
authors.
Copyright in registered designs
After the registration of a design, the proprietor shall have the copyright of the design for
10 years from the date of registration.
If you want to extend the copyright period for the second period of 5 years then before the expiry
of the original said ten years an application must be filed in the Controller‟s office along with the
prescribed fee.
Register of designs
A book named „Register of Designs‟ shall be kept at the Patent Office which contains all
the details regarding the registered designs such as names, addresses of proprietors of registered
designs, notifications and transmissions of designs and other important information. Such
register must be maintained wholly or partly on computer diskettes or floppies as may be
prescribed.
Importance of Design
A design reflects someone‟s intellect and creativity which afterward becomes a product. The
design of any product makes a long-lasting effect on the consumers‟ minds. A design helps the
consumers to recognize any product. If a design is attractive then it adds value to the business of
that product. Thus, in order to protect a design from infringement, it is necessary to get it
registered under the Designs Act, 2000. A mechanism has been pre-determined by the
government to fulfill this purpose.
It adds value to the product and helps in gaining fair returns on investment. It gives you fair
competition in the market.
Conclusion
Design Act, 2000 brings about many changes which are observed in the features. When a
developer develop something for example If an architect develops the structure of a building
there is an expectation that my structure will not be infringed. Many designs are capable of
providing the author with copyrights also.
In that case infringement of both cannot be claimed separately. The owner must have to
choose which is more beneficial. High intellects are involved in making a design look good and
have an everlasting impact. Government come up with a great policy of protecting designs.
Moreover, these designs can also have a negative impact on the value of the business if
infringed. A good design is always remembered.
3. Cancellation of registration, Restoration of lapsed designs
Cancellation of the registration of a design
The registration of any design can be canceled any time after it gets registered by filing a
petition for such cancellation in Form 8 along with a fee of Rs. 1,500 to the Controller.
The grounds for such cancellation are as follows:
 The design has been already registered in India previously.
 It has been published in India or somewhere else before the date of registration.
 The design is not original or new.
 It is not registrable under the Act.

Renewal of Design
As per Section 11 of the Design Act, 2000, whenever a Design is registered under
the Design Act, 2000, the registered proprietor has a Copyright in the Design for a time period of
10 years from the date of Design registration. Under Section 11 (2) of the Design Act, 2000, the
provisions related to Renewal or extension of Copyright of Design are provided. The Renewal or
extension of a copyright of a registered Design can be extended for a time period of 5 years. The
Renewal can only be done after the expiration of the original time period of 10 years of the
Registration of Design. The Controller does the Renewal of Design after the registered proprietor
fulfills all the requirements.
Restoration of Lapsed Design
In a case when Copyright of a registered Design ceases to have an effect due to non-payment of
fees for the Renewal of Copyright, within the prescribed time period, the registered proprietor
can go for Restoration of Lapsed Design in India. The proprietor of registered Design can file an
application for Restoration of Lapsed Design as per Section 12 of the Design Act, 2000. The
application for Restoration of Lapsed Design should be filed within 12 months from the date on
which the registered Design ceases to have effect.
What are the essential requirements for the Renewal and Restoration of Design in India?
The essential requirements for Renewal and Restoration of Design in India are as follows:
Renewal of Design in India
The essential requirements for Renewal or extension of Design in India are as follows:
 An application for Renewal or extension of copyright of Design should be filed before

the expiry of the original time period of 10 years.
 The Designs Wing is required to complete the proceedings of Renewal or extension of
Copyright of Designs, within one week from the date of receipt of Form-3.
 The fact of Renewal or extension of copyright in a registered Design is required to be
entered in the Register of Designs.
 The fact of Renewal or extension of Design should be published in the Journal of Patent
Office by the Design Wing.
Restoration of Lapsed Design in India
The essential requirements for Restoration of Lapsed Design in India are as follows:
 The registered proprietor or his legal representative can apply for Restoration of Lapsed
Design.
 In a case, if two or more persons hold the registered Design, then, with the leave of the
Controller, one or more of these persons without joining the others can apply for
Restoration of Lapsed Design.
 In case the application for Restoration of Lapsed Design is filed by any other person
claiming to be the proprietor of the registered Design, then, such an application should be
accompanied by Form-11, for affecting a change or alteration in name or proprietorship
in the Register of Designs. The application for Restoration of Lapsed Design should have
proceeded only after the change or alteration in name or proprietorship is affected as per
provisions provided in the Design Act, 2000. Though, in a case where change or
alteration in name or proprietorship happened after the registered Design ceased to have
effect, then such an application for Restoration from the latter alleged proprietor of
Design will not be entertained by the Design Wing.
 In case the registered proprietor of Design fails to register a change or alteration of a
name before or after the termination, he/she should first apply for such an alteration of
name in the Register of Design. The application for Restoration of Lapsed Design should
proceed only after change or alteration in name has been affected in the Register of
Designs.
What is the Procedure for Renewal and Restoration of Design in India
Procedure for Renewal of Design
The procedure for Renewal or extension of Design in India is as follows:
 The applicant is required to file for an application of Renewal or extension of Design

with the Design Wing.
 The application of Renewal or extension of Design should be filed in Form-3 as
prescribed under Rule 23 of the Design Rules, 2001.
 After receiving the application of the Renewal or extension of Design, the Design Wing
will check for the date on which the application is filed and will scrutinize whether the
applicant has filed the application within the prescribed time period or not.
 The Design Wing, when it is satisfied that the application is filed in the time limit
prescribed, will approve the application for Renewal or extension of Design. The Design
Wing should complete the proceedings for Renewal or extension of Design within one
week from the date of receipt of the Form-3.
 After allowing the Renewal or extension of Design, the Design Wing should enter in the
Register of Design the fact of Renewal or extension of Design. The Design Wing should
also publish the fact of Renewal or extension of Design in the Journal of Patent Office in
India.
Procedure for Restoration of Lapsed Design
The procedure for Restoration of Lapsed Design in India is as follows:
 The application for Restoration of Lapsed Design should be filed with the Controller
in Form-4 as prescribed under Rule 24 of the Design Rules, 2001. The application of
Restoration of Lapsed Design should include a statement setting out the true
circumstances that led to failure in payment of the fee for the Renewal or extension of
Design.
 The application for Restoration of Lapsed Design should include the supporting
evidences for the delay in payment of fees by the registered proprietor. The evidence
should support the claim of the registered proprietor that the failure in payment of fees
was unintentional, and there has been no undue delay in applying for Restoration of
Lapsed Design from the part of the registered proprietor.
 The Controller may require some evidences in support of the statement made by the
registered proprietor.
 Once the Controller is satisfied that the failure in payment of the fee for Renewal or
extension of Copyright of a registered Design was unintentional and also there was no
undue delay in making the Restoration of Lapsed Design application by the registered
proprietor, the Controller can give an order for Restoration of the registration of a Lapsed
Design.
 In case if the Controller is of the opinion that there is a prima facie case for not permitting
the application for Restoration of Lapsed Design, the registered proprietor of the Design
should be intimated accordingly. In such a case, the registered proprietor of the Design
may request the Controller for a hearing in the matter within one month from the date of
receipt of such intimation from the Controller. Unless the registered proprietor makes
such a request for hearing, the application for Restoration of Lapsed Design should be
refused or rejected by the Controller.
 The registered proprietor if requests for hearing within the time period allowed and the
Controller, after such a hearing, is satisfied that the failure for payment of the fee for the
Renewal or extension of Copyright of Design is unintentional and there was no undue
delay in the making the application for Restoration of Lapsed Design, the application for
Restoration of Lapsed Design should be allowed by the Controller.
 The fact that a registered Design is restored should be published in Official Journal by the
Controller.
What basic requirements should be fulfilled after the Restoration of Lapsed Design?
As per Rule 25 of the Design Rules, 2001, after the application for Restoration of Lapsed Design
is allowed by the Controller, the registered proprietor of Design is required to pay the unpaid
fees for Renewal or extension of Copyright of a registered Design. The unpaid fees for the
Renewal or extension of copyright should be paid along with the additional fee that is prescribed
in the First Schedule of the Design Rules, 2001. The fees should be paid within one month from
the date of the order of Restoration of Lapsed Design by the Controller to the registered
proprietor, allowing the proprietor for the Restoration of Lapsed Design in India. The Controller
is required to advertise in the Official Gazette his/her decision on the application for Restoration
of a Lapsed Design.
Conclusion
The Renewal and Restoration of Design in India are provided for securing the exclusive rights of
the registered proprietor of a Design. The proprietor is given the opportunity to save the rights
associated with his/her Design and protect the Design from Infringement. The Renewal and
Restoration of Design in India procedures are provided in the Design Act, 2000, and Design
Rules, 2001. The procedure of the Renewal and Restoration of Design in India is time-taking and
long-lasting.
4. Rights of design holders, Assignment and Transmission
Rights of design holders
When a proprietor applies for the registration of the design he shall automatically get
„copyrights in design‟ for the period of 10 years from the date of registration. This period can be
extended if the proprietor wants to continue with the design. The Design Act should not be
confused with the Copyrights act because there are many products which can be registered under
both the acts but their remedies cannot be sought in both the acts individually.
Rights granted: The proprietor of a registered design shall have the exclusive right to
apply a design to any article in any class in which it is registered. This is called copyright, which
is deferred from copyright under the Copyright Act, 2000. When a design is registered, the
registered proprietor of the design shall, subject to the provisions of this Act, have copyright in
the design during five years from the date of registration. [12] The object of design registration is
to see that the originator of a profitable design is not deprived of his reward by others applying it
to their goods without permission. Subsection 2 and 3 of the section 47 states that this period of
five years is extendable for further terms of five years and thereafter for another five years by
filing application before the expiration of the said period. Such application must be made to the
Registrar in the prescribed manner and filed with proper fees. So, the design can get protection
for 15 years in total. A copyright granted to a design will become a public property after period
of its expiration.
The rights conferred by section 47 is subjected to the following two restriction-
That the Registrar may erase the name of the proprietor of a registered design, if the exact
specimens or representations are not furnished before the delivery on sale of any article to which
the design has been applied. Therefore, he will lose his rights over the design.
The article to which the design is to be applied must be marked with the prescribed mark, words
or figures (e.g. Registered, Regd, RD). If he fails to do so, he will not be able to recover any
damages or penalty in case of infringement.
Section 51B states that, registered design will bind the Government as like as any individual and
the provisions of section 21 regarding the assignment or license patent will be applicable in case
of a registered design.
The proprietor of a design is transferable. The owner can transfer it as his motion with or without
reward.
Assignment and Transmission
In our daily lives, we come across a variety of things and are fascinated by looking at their
appearance or design. People‟s attention is drawn to artistically crafted products the moment they
see them. These designs can take the form of Art, Drawing‟s graphics, etc. Engineered plans or
architectural blueprints for any house, interior designs, and so on can be produced by
experts. India has always believed in the protection of Intellectual Property and design has been
seen as an emerging part of this family. The Designs Act, 2000, presently regulates design
registration and infringement problems in India and preserves the rights of the original
proprietor.
Intellectual Properties such as Patents, Copyrights, Trademark, or industrial and design are well
protected under the judicial and administrative framework in India. The Assignment Agreements
are important aspects of Intellectual Property Rights. Assignment Agreements govern the
possession and disposal of intellectual property rights, as well as control over the use or excess
of intellectual property.
ASSIGNMENT AGREEMENTS
Assignment arrangements govern the transition of intellectual property rights from one
individual or entity to another. An Intellectual Property Assignment Arrangement is a signed and
enforceable contract that completes and formalizes a purchasing and sale deal for intellectual
property rights between two parties. Copyrights, trademarks, patents, etc are examples of
intellectual property that can be acquired.
An assignment may involve a complete and exclusive sale of the copyright, granting the assignee
complete control of the intellectual property rights to use in whatever manner, shape, or form it
finds necessary, subject to any limits specified in the agreement. Partial selling of rights are also
allowed, which is provided by Section 18 of Indian Copyright Act
REQUIREMENTS OF AN ASSIGNMENT AGREEMENT
Indian Contract Act, 1872
An assignment arrangement must meet the conditions of the Indian Contract Act, 1872, which
means it must comply with Section 10 of the Indian Contract Act, 1872.
The Indian Contract Act does not contain any specific provision related to the assignment of IPR,
but it indirectly has any provision which deals with the assignment, but it does not define
whether when the assignment is good in law or not. (Hasina v Abdul, 146 IC 554)
The courts have however made certain guidelines regarding the same.
1. A contract is enforceable by and against the parties and their legal successors and legal
agents, including assignees and transferees, in the event of a contrary intention, explicit
or implied (Ram Baran v Ram Mohit, AIR 1967 SC 744)
2. According to Section 40 of the Indian Contract Act of 1872, a contract where the
promisor is supposed to execute directly is not capable of assignment (Toomey v Ram
Sahai, ILR 17 Mad).
3. As Assignment Agreements forms a contract, so a suit for damages can be filed under
Section 73 of the Indian Contract Act.
Indian Stamp Act, 1899
The Indian Stamp Act protects the revenue of states on classes of instruments. As per Section
2(14) of the Indian Stamp Act, 1899,-“ Instrument- includes every document by which any right
or liability is, or purports to be, created, transferred, limited, extended, extinguished or record” ].
Since we know that an assignment arrangement entails the transfer of intellectual property rights,
it will come under the scope of the word “instrument” as defined by the Act. The Act imposes
different stamp duties on the instrument according to which types it pertains, it can be
„conveyance‟, „transfer‟, or „transfer of lease‟ but section 23 of the Act exempts an assignment of
conveyance from the Stamp Duty. As a result, when assigning copyright alongside other rights,
such as trademarks, it is best to specify in the Deed of Assignment that what portion of the
consideration is for the assignment of copyright and what for others, so that relief from stamp
duty can be executed.
Registered Copyright
Following the transfer of Intellectual Property, the assignee shall make an application for
registration of alteration in the particulars of the copyright entered in the Registry of Copyrights
in Form V, which must be submitted by hand or register mail, according to Rule 16 of the
Copyright Rules, 1958. Attested copies of assignment deeds shall be enclosed with the
submission.
ASSIGNMENT OF DESIGNS
Copyright protection on a design can either be protected under the Copyright Act, 1957 or
Designs Act, 2000. The design‟s copyright is only protected if it is statutorily recognized under
the terms of the Designs Act, 2000. According to Section 15 of the Copyright Act, if a does not
register under the copyright act, then it ceases the protection the of Copyright Act after 50
copies of the same have been produced by an industrial process.
As per Section 2(d) of the Designs Act, 2000 „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 mode or principle of
construction or anything which is in substance a mere mechanical device”. Designs under the
Design Act, 2000 protects copyright for a period of 10 years which can be extended to 15 years.
(Section 11 of Design Act, 2000
The assignment of designs is dealt with under Section 30 of the Design Act along with the Rules
of Design Rules,2001 (Rules 32-35).
Third-party rights gained by assignments are only valid in compliance with the terms of the Act
and the Rules framed thereunder.
PROCESS OF ASSIGNMENT UNDER DESIGNS ACT,2000
 When a design is registered, then on the subsequent assignment of the rights, an

application of ownership under Rule 33 of Design Rules,2001 has to be submitted to the
Controller for the registration of title in the name of the new owner.
 Rule 37 of the Design rules clearly state that an instrument of assignment has to be
presented in original condition.
 The agreement of assignment must be written, and all the concerns of the parties should
be presented in the form of the instrument containing all the terms and conditions. Any
contravention will make the deed void.
 After the execution of all the formalities and registration under the register of designs, the
assignment of rights will be enforceable from that date.
 A submission for title registration must be submitted within six months of the
instrument‟s implementation date. This term can be extended for six months.
CONCLUSION
The Design Act, 2000 and Copyright Act 1957 protects the right of the original proprietor of
designs and also deals with the assignment of rights to the subsequent owner. The Assignment
Agreement helps two parties to transfer the intellectual property rights to another for the
development of the product and also for the commercial purpose. The Assignment Agreement of
Designs
is dealt with by Section 30 of the Design Act with Rules 32-35 of Design Rules,2001.
5. Piracy (Infringement) of registered designs and Remedies for

Infringement
What is a design infringement?
The owner of a registered design right may exclusively work the registered design or any
design similar to it. If a third party manufactures or sells, etc., the registered design or any
similar design for commercial purposes (meaning that private or domestic use is excluded) and if
the third party is not licensed to do so by the owner of the registered design right, such activity
constitutes a design right infringement.
The details of a registered design right are specified in the request submitted in the
application for design registration and the attached drawings. However, because the scope of a
design right extends to the registered design and any similar design, the design‟s similarity
(whether it is similar or not) is an issue for the determination of design infringement.
In making an actual judgment regarding similarity, it is common for two designs to be

deemed similar after comparing the two designs and identifying resemblance:
1. the overall dominant constitution and the specific constitution of both designs;
2. the feature (characteristic creation, the outstanding part when the article is being used,
etc.) of the designs;
3. a common dominant constitution in both designs;
4. Only a slightly different dominant constitution in both designs or the difference is not
notable (i.e., the difference is a well-known constitution).
As per the Design Act, 2000, the piracy of registered design falls under the encroachment
of design. Section 22 of the Designs Act, 2000, mentioned that any fraudulent or obvious
copying of a design that has already been registered without the consent of the registered owner
or proprietor of the registered design is unlawful. The particular section also prohibits importing
any substance or material, which is in close resemblance to a design already registered.
An infringement is said to be if any person, without proceeding with the consent of the absolute
owner of the design, tends to import or even publish the design already been registered for any
fraudulent or imitation purpose.
The court works in a mechanism wherein they do not check the articles but uphold the
decision through an average person‟s perspective. The court finds a need where the article can be
distinguished without any obvious confusion in the consumers‟ minds.
Infringement of design
Just like any other Intellectual Property, the designs are also prone to infringement and
they can also be copied by the competitors or some other person. If a design has been copied
then the owner of that design can claim damages and can also apply for an injunction so that the
design cannot be used further.
If there arises any question regarding the ascertainment of infringement then the Court
will directly look for the design from the point of view of an average customer. In other words,
the Court will consider whether there is any confusion which is obvious or some material facts in
the minds of the customers regarding the two articles.
Industrial design infringement cases
In Disney Enterprises Inc. v. Prime Housewares Ltd., the international registration of

industrial designs became a matter of conflict in India. A Mumbai based company Prime
Housewares used to manufacture characters like Mickey Mouse, Donald Duck, etc. a suit was
filed by the Disney enterprises for the infringement of their international registered designs.
The court held that the plaintiff‟s trademark is protected but not the designs under the
Indian law. An order was passed by the court for the infringement of the trademark of the
enterprises. The Indian company was asked to deliver all the infringing material to the
enterprises so that it could not be used further.
Piracy of registered designs
Section 22 of Designs Act, 2000 deals with piracy of registered designs. According to
this section, any obvious or fraudulent imitation of a design which is already registered without
the consent of its proprietor is unlawful. It also prohibits the import of any material which
closely resembles a registered design.
This section also provides that in case if a civil suit is brought against any piracy of a
design, then the compensation shall not exceed Rs. 50,000 for the infringement of one registered
design. The compensation is statutorily fixed so it serves a good ground for an interim injunction
even before the trial commencement.
In the case of Bharat Glass Tube Limited v. Gopal Gas Works Ltd., the respondents
(Gopal Glass Works) had registered their design for diamond-shaped glass sheets and had a
certificate of the same. The appellants started using this design for marketing. These designs
were made in collaboration with a German company.
After knowing that the appellants are using their design, they moved to the Court. The
appellants contended that the respondents‟ designs were not new since the German company had
been using it since 1992 and it was already published in the U.K. Patent Office so it lost its
originality. When the matter went to the High Court on appeal then it restored the designs to the
respondents. When the matter reached the Supreme Court, it upheld the decision of the Calcutta
High Court.
Remedies for design infringement
As per the Design Act of 2000, the liabilities of the one who infringes the design is
mentioned under Section 22(2) of the Act. It is the same section that provides the remedies to the
registered owner of the Design. Therefore, the liability of the infringing party as per Section
22(2) of the aforesaid Act is as follows:
 Under Section 22(2)(a) of the Design Act, the one who infringes shall pay a sum (not
exceeding) Rs. 25,000/ (Rupees Twenty-five thousand only) for every breach
contravened. The total amount shall sum up to (not exceeding) Rs. 50,000 (Rupees
Fifty thousand only). The above amount is for the recovery of the Infringement.
 Under Section 22(2)(b), it is mentioned that the owner of the registered Design is
vested with certain rights wherein it can call for recovery of damages and make the
infringing party liable.
In Whirlpool of India Ltd. v. Videocon Industries, the Bombay High Court arrived at a
judgment as to the plan of Section 22 of the Designs Act, which allows for actions against “any
person” in this section. A registered design can be eliminated, or registration placed aside, or a
registered owner can be restrained by order of injunction from practicing the use of such design
either by controller following Section 19 of Act or following Section 22 of Act by High Court
under the conditions in a case. Suppose a certified proprietor does not apply his design to an item
for sale or connected with the before-mentioned sale. In that case, another registered proprietor
cannot have recourse to section 22 of the Act.
Therefore, the remedy under Section 22 of the Act was only available to use impugned
Design. On an unadorned reading of Section 22 of Act and sub-sections (1) to (3) in distinct, it is
indicated that the suit for infringement of a registered design extends against any person that
would incorporate a registered proprietor. Therefore, a registered proprietor of a design can,
under Section 22 of the Act, file a suit for infringement against a registered proprietor of a
design. The reason behind forcing liability upon the infringers is to cover for the loss that the
registered owner suffers. The registered owner also holds the responsibility to mark all the
articles under registered design to take the necessary steps in the further process of infringement.
 Section 55 of the Copyright Act of 1957 provides the scope of civil remedies available
on the proprietor‟s registered work. It helps to seek remedies, claim damages or file a
suit for injunction against anyone who infringes the registered article under the Act.
 The claimant also enjoys the entitlement along with profits gained by the infringing
party upon the infringed design.
If in any circumstance, the registered proprietor establishes a prima facie case under the
head “Balance of Convenience” in its favor, then it can seek an interlocutory injunction
under Order 39, Rules 1 and 2 of CPC.
 As per the remedies provided under Section 53 of the Copyright Act of 1957, the
person in charge of the registered design can stop importing the products and
confiscate any such product that holds the power to infringe the rights of the
registered person.
 The criminal remedies are provided under Section 63 of the Copyright Act of 1957. It
can be availed that the registered person‟s work if infringed with due intention, then
the seeker shall be punished with imprisonment for a minimum of six months
extended up to three years. (along with fine ranging from 50,000 INR to 2,00,000
INR)
 Section 63A of the Copyright Act, 1957 lays out punishment on second and
subsequent crime wherein the registered proprietor can avail criminal remedies. The
punishment shall hold the wrongdoer guilty and liable for imprisonment for a
minimum of one year which can be further extended to three years with a fine ranging
from 1,00,000 INR to 2,00,000 INR.
Who can claim the remedy for design infringement?
Section 55 of the Copyright Act of 1957 provides the scope of civil remedies available on
the proprietor‟s registered work. It helps to seek remedies, claim damages or file a suit for
injunction against anyone who infringes the registered article under the Act. The claimant also
enjoys the entitlement along with profits gained by the infringing party upon the infringed
design. Any of the following amongst, proprietors of a registered design, legal heirs, or joint
proprietor can see remedy under design infringement.
Therefore, in the case of Carlsberg Breweries v Som Distilleries and Breweries Ltd, in
a judgment dated 14 December 2018, the Delhi High Court upheld the maintainability of a
composite suit for design infringement and passing off. A plaintiff can join two causes of action:
 infringement by the defendant of the plaintiff‟s design; and
 passing off by the defendant of the larger trade dress of the plaintiff‟s goods or
articles.
The judgment has affirmed that a remedy for passing off can be directed if the said design
is not working as a trademark and if the remedy of passing off is demanded, the larger trade
dress infringement or any other similar infringement. The court also noted that when the claim
for design infringement is prima facie weak, the court can grant aid to the plaintiff in the manner
of passing-off action.
Conclusion
Design Act, 2000 brings about many changes which are observed in the features. When a
developer develop something for example, if an architect develops the structure of a building
there is an expectation that my structure will not be infringed. Many designs are capable of
providing the author with copyrights also. In that case infringement of both cannot be claimed
separately. The owner must have to choose which is more beneficial. High intellects are involved
in making a design look good and have an everlasting impact. Governments come up with a
great policy of protecting designs. Moreover, these designs can also have a negative impact on
the value of the business if infringed. A good design is always remembered.

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B- I[2017 Pattern] LO 0609 Intellectual Property Rights-II

Module 04: The Designs Act, 2000

1. Development of Designs Law in India

2. Definitions, Controller of designs, Registration of designs - Essential

3. Cancellation of registration, Restoration of lapsed designs

4. Rights of design holders, Assignment and Transmission

5. Piracy (Infringement) of registered designs and Remedies for Infringement

1. Development of Designs Law in India

2. Definitions, Controller of designs, Registration of designs - Essential

Design act 2000 definition

“Design” means features of shape, pattern, configuration, ornament or composition of

What it not Design

The term „Design‟ under Design Act is defined as :

“Features of shape, any configuration, pattern, ornament or composition of lines or colours

With reference to the Design Act, 2000 what are articles?

Powers of a Civil Court

Power of Awarding costs

Power to seek directions of the Central Government

Powers of Controller of Design to Exercise Discretionary Powers

Power of Controller of Design to correct clerical errors

Powers of Controller of Design to Require Statements

General Power of Amendment

General Powers of Controller of Design for extension of time

 A brief about the activities during the year;

 The certified copies;

Essential Requirements for registration

Novelty and originality

Design must be unique, a Prior publication is not acceptable

Making application of design to an Article

The design must not be contrary to the order and morality

What is to be considered to register under this Act?

 The work must be capable of selling and made separately.

 It should be purely distinguishable from other designs.

 It must not relate to obscenity or any material which is inappropriate.

Who is entitled to seek Registration?

1. is the author of that design

2. acquired design for a valid consideration and

Procedure for registration of design in India

Application for registration of designs

Items that cannot be registered as a design under the Act

 Signs, emblems or flags of any country.

 Size of any article, if changed.

 Structures and buildings.

 Integrated circuits‟ layout designs.

 Books, calendars, certificates, jackets, forms-and other documents, greeting cards,

 Workshop alterations of components of an assembly.

 Parts of any article which is not manufactured and sold separately.

Duration of the registration of a design

Entitlement of registration under design act 2000

 Is the author of the design;

 Has acquired the design for a valid consideration and

Copyright in registered designs

3. Cancellation of registration, Restoration of lapsed designs

Cancellation of the registration of a design

The grounds for such cancellation are as follows:

 The design has been already registered in India previously.

 The design is not original or new.

 It is not registrable under the Act.

Restoration of Lapsed Design

Renewal of Design in India

 An application for Renewal or extension of copyright of Design should be filed before

Restoration of Lapsed Design in India

What is the Procedure for Renewal and Restoration of Design in India