Introduction

Logos, Designs which have unique colour combination or shapes usually attract people’s attention towards the product. Designs are usually one of the marketing techniques used by successful entrepreneurs to seek recognition and for the popularity of the brand. A Design of the product has a huge impact on customers which makes the people identify the brand name associated with it. So this calls for the protection of industrial design from being used by others. Industrial Design is an intellectual property right which was governed by Industrial design rights 1911. However in accordance with the TRIPS Agreement for this act was replaced by the Industrial Design Act 2000.

What is an Industrial Design

An industrial design relates to the appearance of an article that relates to a specific colour, pattern, or ornamentation of an article. 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, separate or combined, which in the finished article appeal to and are judged solely by the eye.

However, the following are not design under Section 2(d) of the Industrial Design Act:

Any mode or principle of construction or anything which is in substance a mere mechanical device.
Any trademark as defined in clause (v) of sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958
Property mark as defined in Section 479 of the Indian Penal Code

Any artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957.

Laws governing Industrial Design

In India the industrial Designs are protected by Design Act 2000. Design Act 1911 was repealed and Design Act 2000 came into effect from May 11 2001. India enacted Design Act 2000 to enact the guidelines laid in Article 24 & 25 of the TRIPS Agreement. The primary motive of the act is to protect industrial designs which are in the form of two dimensional or three-dimensional shapes or figures which has commercial value is protected and gives the exclusive rights to the owner who registers the design under the act and protects the same from piracy and misusage of the design.

Requisite of Valid industrial Design

There are certain conditions in which design should qualify in order to be registered under the Design Act 2000. The essential conditions which design should qualify are

1) The Design should be applicable to Articles

It is essential that a particular design should be imparted in an article. The design can be in a three dimensional figure like a unique shape to a flower vase, water bottle, etc. The design which is in the form of two dimensional figures like paintings, embroidery can be applied on curtains, bedsheets, etc. A design should not itself be the end product which is sold to the customer, the design which is applied to an article which is sold to a customer can only be registered under this act.

2) Appeal to the Eye

A design that is applied to an article should make the article appealing to the eye. The design which is imparted on the article should be visible and distinctively recognised to the eye. The design which is applied to the article should be an eye of appeal to the customer which would significantly affect the choice of the customer. In the case of Amp v. Utilux[i], the court held that an electric connector which was a mere functional component of the washing machine though visible distinctly did not give an appeal which could probably influence the customer

3) Novelty and originality.

The design needs to be new and original. Combinations of already existing design should create a new unique article as a whole to satisfy the test of novelty. The design should not have existed or registered already.

4) No prior publication

The public in their ordinary knowledge should not have known about the design. The design of the article should not be a published one. The court in the case of Wimco v. Meena Match[ii] Industries held that disclosure of information to even one person will constitute a publication. The publication has to be in a tangible form like pamphlets, books, journals, newspapers to constitute a prior publication. In the case of Gopal Glass Works Limited v. Assistant Controller of Patents& Designs & Ors[iii] that while assessing the prior publication requirement one has to give due diligence to the visual effect of the design for approval and the design which is claimed to be already published. If the visual effect of the shape, colours, or combination of designs used is not clear then it can be inferred that the novelty of the design in the article is not yet destroyed. A mere trade variant without having any significant change or difference from the common course cannot claim novelty.[iv]

Procedure for registration

Section 3 of Design Act, 2000 empowers The Controller General of Patents, Designs, and Trade Marks to register an application for industrial design. Before the registration of design it is first verified whether similar designs have been already registered. An application is made to the controller specifying the details such as the class under which the design falls and any dispute with regards to the class will be decided by the controller. The application is examined and if any objections are communicated the same should be rectified within a reasonable time failing which the application is abandoned under Section 5(5).

The objections can be contested and in refusal of the application for registration the applicant has the right to appeal to the High Court under Section 5(4). The application for registration will be assessed based on the test of novelty, uniqueness, and prior publication under Section 6(3). On the satisfaction of all the procedures of registration and conditions for registration the controller of patents accepts the application and makes an entry in the register of designs. The register of designs is the record which is maintained by the controller which records the details of the proprietor and the registered design. After the entry is made the controller grants a certificate of registration to the applicant under Section 9(1).

Extension of validity of a registration

Initially the validity of the registration of the industrial design under the Design Act 2000 is 10 years. On application for the prior date, the validity is 10 years from the prior date. However, the validity can be extended to 5 years by an application under Form 3 accompanied by the payment of a prescribed fee or by making an application as soon as the design is registered.

Cancellation of registration

Registration can be canceled at any time after the registration of a design by any person under Section 19(1) by making an application under Form 8 on the following grounds:

The design has been previously registered in India
There have been the prior publication of design in India or in any other Country
It is not a design under Section 2(d) or if the design does not satisfy the condition of originality or novelty.

Benefits of Registration

The benefits of registering a design under Design Act 2000 as follows:

1) Return on Investment

Every company would have invested to make their product look unique to attract customers. So registering the unique design secures the return on investment and it prevents other competitors from using this design which would increase the sales of the owner of the design.

2) Exclusive rights

Intellectual property is a statutory right which implies one could avail the benefit of exclusive usage of the design only if one registers under the act. The act provides protection for 10years and prevents the commercial exploitation of the design.

3) Strengthen brands.

In this era of aggressive marketing people tend to associate the brand logos or design of the product to the brand or company name. So the design plays a very important role to strengthen the brand name which in turn creates a positive image on the brand since the registration proves the authenticity of the product and also helps in protecting the brand name from misuse.

4) Opportunity to license and sell

If a design is registered it gives the rights to the owner to sell or license the design to earn money in the form of Royalty.

Thus it is beneficial to register a design as it protects, preserves and generates revenue which causes

Remedies Available for Breach of Industrial Design

Piracy of a design means the application of a design or its imitation to any article belonging to the class of articles in which the design has been registered for the purpose of sale or importation of such articles without the written consent of the registered proprietor. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.

Following acts would be considered piracy of registered design under Section 22 of Indian Design Act:

For the purpose of sale to apply or cause to be applied, to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, or to do anything with a view to enable the design to be so applied;
To import such article for the purposes of sale
To publish or expose or cause to be published or exposed for sale, that article.

If anyone contravenes the copyright in a design he is liable for

Every offence to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design.
The registered proprietor may bring a suit before the district judge for the recovery of the damages for any such contravention and for an injunction against the repetition of the same. According to Section 22(2)(a) total sum recoverable shall not exceed Rs. 50,000/-as contract debt.

In the case of Troikaa v. Pro Labs[v] the defendant was restrained given injunction prohibiting to manufacture, market tablets that were similar in shape and colour that has been registered under the Design Act.

Conclusion

Industrial design is thus a reward given to the creator to protect and encourage creativity. Industrial design rights give an absolute right to the owner and helps to protect the unique design which would have a high impact on the customers. Development of effective prior art search mechanisms, development of e-filing portals, and strict novelty examination is the need of the hour. Effective deterrent punishment for piracy should be provided to protect the registered designs. Thus for effective implementation and to secure the object of the act it is very important that adequate awareness should be spread to all people to register their design for enhancing their brand name and protection from piracy.

References

[i] Amp v. Utilux, [1972] RPC 103

[ii] Wimco v. Meena Match, 1983 RLR 631

[iii] Gopal Glass Works Limited v. Assistant Controller of Patents& Designs & Ors, 2006 (33) PTC 434 Cal

[iv] Anuradha Doval vs. the Controller of Patents and Ors, 2017(71) PTC 288 (Cal)

Industrial Design