Design Act, 2000

Customer’s attraction towards a product is guided by multiple factors. One of the factors
which influence a customer’s decision is the appearance of the article. The appearance of an
article plays a pivotal role in affecting the sale of the product. It is for the same reason that
the sellers invest a good deal of time and money to create a design for their product which is
distinct from the other designs in order to increase the sale of the same and earn profit.

Here, it is important to note that a design is something that is either intrinsically or

The purpose of the Designs Act, 2000

The Designs Act, 2000 came into force in India from 11th May 2001. The new Act contains
provisions relating to the TRIPS Agreement and other international conventions. It is
necessary to note that the substantive law of Designs Act, 2000 has to be read along with the
provisions of its subordinate legislation i.e., the Designs Rules, 2001, which is a procedural
overview.

Definition of Design- Section 2(d) of the Designs Act, 2000 provides that “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.”

Designs that can be Registered

1. The design should be new or original, not previously published or used in any country
before the date of application for registration.
2. The design should relate to features of shape, configuration, pattern or ornamentation
applied to an article. Thus, designs of industrial plans, layouts and installations are not
registrable under the Act.
3. The design should be applied or applicable to any article by any industrial process.
Normally, designs of artistic nature like painting, sculptures and the like which are not
produced in bulk by any industrial process are excluded from registration under the
Act.
4. The features of the design in the finished article should appeal to and are judged
solely by the eye. This implies that the design must appear and should be visible on
the finished article, for which it is meant. Thus, any design in the inside arrangement
of a box, money purse or almirah may not be considered for showing such articles in
the open state, as those articles are generally put in the market in the closed state.
Items ranging from cutlery to dress can be registered as a design in India provided its original
and not be a mere mechanical contraption.
Items that Cannot be Registered as a Design
The following are excluded from the meaning of ‘design’ under Section 2(d)--
Any mode or principle of construction
Anything which is in substance a mere mechanical device.
Any trademark as defined under the Trade and Merchandise Marks Act, 1958.
Property mark as defined in Section 479 of the Indian Penal Code, 1860.
Any artistic work as defined under Section 2(c) of the Copyright Act, 1957.
Books, calendars, certificates, forms, greeting cards, maps, postcards, stamps, medals.
Labels, tokens, cartoons
Buildings and structures
Parts of articles not manufactured and sold separately.
Variations commonly used in the trade.
Mere workshop alterations of components of an assembly.
Mere change in size of article.
Flags, emblems or signs of any country.
Layout designs of integrated circuits.

Prerequisites for the registration of a design-

The Designs Act, 2000 incorporates the concept of ‘absolute novelty’. Absolute novelty
means that an invention is new if it has not been used or published anywhere in the world.
The concept of absolute novelty aids in judging a novelty on the basis of prior publications of
any article.
Section 4- the design if lacked novelty cannot be registered.

Section 16- a mere disclosure of design shall not be deemed to be the publication of Design if
the purpose of the design is disclosed in good faith to a person who has breached the good
faith.

Section 21- the disclosure of Designs for the purpose of exhibition cannot invalidate or
prevent it from registration.

The Design must be original and for the purpose of originality it is defined under Section
2(g) which states original means “originating from the author of such design and includes the
cases which the old in themselves yet are new in their application”.

As “Hello Mineral Water Private Limited v. Thermo King California Pure, 1999” it was
held that mere shape and form is not sufficient to prove novelty. The Court observed that
Novelty also involved the presence of some new element or Innovative position of an old
element if it is in combination with which is different from anything found in any prior
structure.

Design must have not published anywhere and there should not be any tangible copy
available already in the market if the registration of design is short in digital format. At the
same time secret and private use of any design will not amount to the publication as it is only
for experimental purposes.
The Court in the case of “Kemp and Company v. Prima plastics Ltd.1998,” observed that the
discussion of design by the proprietor to any third person cannot be claimed as publication as
the disclosure was in good faith and in conformation to Section 16 of the Designs Act 2000.

Piracy of Registered Designs–

As per Section 22, any obvious fraudulent imitation of a registered design without the
proprietors concerned is considered unlawful. Section 22 also prohibits such closely
resembling design. It provides for a compensation which shall not exceed Rupees 50000 in
such case of infringement.

In the case of “Bharat glass tube Limited v. Gopal glass Works Ltd. 2008,” the design was
registered by the respondent company in collaboration with German company. The appellant
started using the design for their marketing which resulted in an infringement suit filed by the
respondents who moved to the court. The appellants contended that the respondent’s Design
were not Novel as the German company has already been using it since 1992 and it was
already published in United Kingdom Patent Office and it has lost its originality. Rejecting
all such of the arguments of the appellants the High Court on its appeal restored the Designs
to the respondents which was later upheld by the Supreme Court of India.

Procedure for Registration of a Design-

Chapter 2 provided for the Procedure for the Registration of Design in India for which an
application of registration shall be made in the patent office to the Controller into the
prescribed form along with the prescribed fee. The controller after the receiving of
application under this Act can verify if it is novel or original if the design and has not
previously published anywhere and not against public policy or morality can register it.

Who are entitled for the registration under Design Act 2000?

As per the Designs Act of 2000, a proprietor whose design has fulfilled all the prerequisites
for registration can be entitled of registration. As per Section 2(j), a proprietor includes the
author of the design, or one who has acquired design for valid consideration, or a person to
whom the design is devolved from the title holder.

Important features of Designs Act 2000

 Sec 11- “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 ten years
from the date of registration.
 If, before the expiration of the said ten years, application for the extension of the
period of copyright is made to the Controller. The Controller shall, on payment of the
prescribed fee, extend the period of copyright for a second period of five years from
the expiration of the original period of ten years”.
 The Act provides for the jurisdiction of High courts to entertain the transferred cases
from district court provided the person is challenging the validity of any
registration. (Sec 36)
 This act prohibits and punishes infringement of registered layout design with
imprisonment of up to three years or fine of Rupees 50,000 approximately to
maximum of Rupees 10 lacs approximately. Sec 22(2)
 The interface of design with copyright
The copyright and design are exclusive for legal purposes in accordance to Section 15(2).
Under Section 15, a copyright in any design which is capable of being registered if not
registered shall cease if any other article is registered with design and if more than 50 times
the designed article is been produced by the owner of the copyright. In the case of “Mattel
incorporation v. Jayant Agarwal 2008” the Mattel lost it copyright in design which could
have been registered if it is not registered and has already produced the article for more than
50 times. In an infringement suit mettal could not restore its copyright for it’s Scrabble
board.

Landmark Judgments Relating Designs Act, 2000

“Microfibers Incorporation v. Giri and Co & ANR 2009”

The Delhi High Court suggested a distinction between copyright and design and it observed
that copyright protection ipso facto will not merit a design and a design registration is
concerned with the class of goods. It also suggested the view of copyright as a ‘work of art’
and design as a ‘work of Commerce’. If the work of art is applied commercially due to its
industrial utility it ceases for the protection of copyright and only entitled to the protection of
design.

M/S. Whirlpool of India Ltd. v. M/S Videocon Industries Ltd. 2015.

In this case the Whirlpool got designs registered. Videocon also got a design registered which
covers the same features of shapes and configuration and that was evident at its first look to
be its replication. The Videocon contended that it has already got the design registered and
therefore it is not liable for the infringement or passing off. The Court rejected the contention
of the Videocon and held that there are similarities between the plaintiff and the defendant
and therefore Videocon was held liable for the infringement and for the passing of the
plaintiff design.