The Designs Act,2000

Those who wish to purchase an article for use are often influenced in their choice not only by practically efficiency but the appearance.Common experience shows that not all are influenced in the same way.Some look for artistic merit.some are attracted by a design which is stranger or bizarre.Many simply choose the article which cathes their eye.Whatever the reason may beone article with a particular design may sell better than one without it;then it is profitable to use the design.And much thought,time and expense may have been incurred in finding a design that will increase sales - Lord Reid in Amp.v Utilux (1972) RPC 103 The purpose of the Designs Act is to protect novel designs devised to be applied to (or to govern the shape and configuration of ) particular articles to be manufactured and marketed commercially. It is not to protect principles of operation or invention nor is it to prevent the copying of the direct product of original artistic effort in producing a drawing.The emphasis is upon the visual image conveyed by the manufactured article. - Interlego v Tyco (1988) RPC 343 If a design is registered under the Designs Act 2000,it is not eligible for protection under the Copyright act -S 15(1) of Copyright Act 1957 Plastells v Controller of Patents (1989) IPLR 202 In case of a design capable of being registered under the Designs Act,but not so registered,Copyright will subsist under the Copyright Act,but it will cease to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of Copyright or with his licence by any other person - S 15(2) of Copyright Act 1957

Designs as such were never protected by the common law which was basically concerned with the protection of literary copyright - Niky Tasha v Faridabad Gas (1984) IPLR 59 Registrable Design: A design in order to be registrable under the Designs Act,2000 must come within the definition of a design & must not be prohibited under s4 & 5. S.2(d) Design means 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 ,sepearte 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 devise,and does not include any Trade mark,or property mark or any artistic work. The Designs Act,2000 does not extend to all designs but only to such as are applicable to some article of manufacture.This Act does not apply to the things to which a design is applied;the Act only applies to the design applied on them. A registered design for a shape can only be applied to a thing is infringed if that thing is made in the shape shown by the registered design - Rollasons Designs (18970 14 RPC 909

What design are not registrable,ss.4 & 5 ; The following designs are prohibited from registration1. A design which is not new or original 2. A design ,which has been disclosed , to the public anywhere in the world prior to the filing date or the priority date of application. 3. A design , which is not significantly distinguishable from known designs or combinations of known designs. 4. A design which comprises or contains scandalous or obscene matter, And 5. A design which is contrary to public order and morality

An applicant for registration of a design has to produce a pictorial illustration of the idea or suggestion which he has to establish as new or original The Act does not stipulatethat in order to get protection a design should possess any artistic merit - Clarkes Design (1896) 13 RPC 351, Amp v Utilux (1972) RPC 103

A design is entitled to protection under the Act only if it appeals to and is judged solely by the eye.Therefore, a design which is purely functional and has no appeal to the eye cannot be protected as a design under the Act. - Amp v Utilux (1972) RPC 103 The design must be new or original with reference to the kind of article for which it is registered,meaning by kin of an article,not the class of article mentioned in Rules,but the kind of article having regard to the general charcter and use.

A design for a shade of electric lamp can be hardly new if it was old for an oil lamp - Clarkes Design (1896) 13 RPC 351

S 5 (1) : An application for registration of a design should be for a new or original design not previously published in any country - Mere receipt of brochures from foreign countries relating to design does not amount to publication of design in India- Texla Metals & Plastics (P) Ltd v A.k. Bhasin (2001)PTC 148 Del Who may apply : S 2(j) j) 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. S 5(1) Any person claiming to be the proprietor of any new or original design not previously published in any country may apply for the registration Employee or partner: Any invention made in the course of employment of the employee in doing that which he was engaged & instructed to do during time of his employment & during working hours& using materials of his employer should be the property of the employers and not the employee - Fine Industrial Commodities v powling (1954071 RPC

Classification : For the purpose of application for registration the goods were classified into 32 classes(Schedule Third of Rules) An application should be confined to one class only. Where registration is required in more than one class separate application should be filed for each class. Acceptance, registration or refusal : - S5 & r.17 1.On receipt of the application it will be examined by an examiner to see whether the design is registrable under the Act and rules framed therein and submit a report to the examine. 2.If the application is in order & satisfies the requirement of the Act and Rules the Controller will accept the application and register it 3. The design when registered will be registered as of date of the application for registration. 4. The Controller will issue a Certificate of registeration of the design. 5.If on consideration of application any objection appear to the Controller, a statement of objections will be sent to the applicant or his agent in writing 6. Unless within prescribed time the applicant removes the objection or applies for hearing,the applicant will be deemed to have abandoned his application S 5(3) & R18 7.Decision of controller after hearing will be communicated in writing to the applicant 8.The applicant within prescribed time may apply to the Controller for the grounds of his decision for purpose of appeal 9.In case of refusal,any aggrieved person may appeal to the High Court,s 5(4) rr 19-20 10.If applicant does not comply with the requirements of Controlleras regards to representation the Controller has powers to refuse the application. R18(5) 11.Under the Emblems and Names (Prevention of Improper use) Act 1950a design which is similar or is colourable imitation of official seal or emblem cannot be registerd.

Term: Registration of design will in the first instance be for a period of 10 years from the date of registration which is the date of filing of application. This period can be extended by 5 years.

S19 Cancellation of registeration At any time after the registration of the design,any person interested may make a petition to the Controller for cancellation on following grounds; 1. That the design has been previously registered in India 2. that it has been published in India or any country prior to registerationdate 3. that the design is not new or original 4.that the design is not registrable under yhje Act 5. that it is not a design as defined under S 2(d) An appeal from the decision will lie to the High Court. Civil Remedies 1.An Injunction 2. Damages or Compensation. Injunction may be temporary or permanent. Interlocutory InjunctionThe principles applicable to the grant of Interlocutory Injunction in case of design are the same as applicable in case of a Patent. 1.Plantiff should make out a prima facie case and show that balance of convenience is in his favour 2. Interlocutory Injunction may not be granted when Plantiffs can be monetarily compensated in event of success of his action

3. Interlocutory Injunction will not be granted if there are substantial grounds for attacking the validity of registration 4. Interlocutory Injunction will not be granted if defendant gives an undertaking to keep account if he is person of substance and the undertaking will give the relief which the plantiff requires.

The registration of design is not prima facie evidence of its validity.Hence if defendents counterclaim for cancellation of design on the ground it is not new or original Interlocutory Injunction may not be granted. Ex parte injunction may not be granted in respect of disputed registered design Damages or Compensation : Where Interlocutory Injunction is refused the court may order the defendant to keep accounts and submit them to courtat periodic intervals& ask for undertaking that they will pay damages to the plantiffs should their suit succeed subsequently.

Whrer a person commits infringement as in S22,he will be liable for every contravention to pay to the registered proprietor of design a sum not exceeding 25000/- which is recoverable as a contract debt. The tortal sum recoverable in respect of any one design will not exceed 50,000/-

Defence available : Every ground on which the registeration of a design may be cancelled under s.19 will be available as a ground of defence 1.Denial of Infringement or intention to infringe 2.Invalidity of registeration- not a design under the Act - not new nor original 3. Plantiff is not registered proprietor or is not not entitled to sue 4.Acquiescence and laches