LAW OF INDUSTRIAL Introduction

DESIGNS
WHAT IS INDUSTRIAL DESIGN
Dictionary meaning: the art or process of designing manufactured products.
Industrial design is a process of design applied to physical products that are to be
manufactured by mass production.
It is the creative act of determining and defining a product's form and features, which
takes place in advance of the manufacture or production of the product.
In a legal sense, an industrial design constitutes the ornamental aspect of an
article.
An industrial design may consist of three dimensional features, such as the shape of
an article, or two dimensional features, such as patterns, lines or color.
FEATURES
In order to catch the attention of the buyers, an article should be visually attractive.
Visual attraction enhances the marketability of the articles.
In order to be protected, the design of an article must appeal to the eye.
Design is primarily of an aesthetic nature.
Although the design of a product may also have technical or functional features, the
industrial design refers only to aesthetic nature of a finished product, and is distinct
from any technical or functional features.
Thus, an industrial design only refers to the ornamental or aesthetic aspects of a
product.
RATIONALE FOR PROTECTION
OF INDUSTRIAL DESIGN
It encourages creativity in the industrial and manufacturing sectors.
Helps in the economic development of the nation.
It adds commercial value to the product by making it attractive.
The manufacturers, therefore, pay adequate attention to the designs of the article
they produce. They invest substantial capital and carry out research.
Legal protection, therefore becomes necessary for the creation of new designs and
their application to articles, as it ensures a fair return on investment.
An effective system of protection promotes fair competition and honest trade
practices, encourages creativity, and promotes more aesthetically attractive products.
HISTORICAL BACKGROUND
The first design legislation enacted in India was the Patterns and Designs
Protection Act 1872.
The Act provided the inventions of new patterns and designs in India, the exclusive
privilege of making, selling and using the invention in India or authorising others to
do so for a shorter duration of time.
The Act of 1872 was followed by the Inventions and Designs Act 1888 which
consolidated and amended the law relating to the protection of invention and designs
and contained provisions relating to designs in a separate parts.
The Act of 1888 was replaced by the British Patents and Designs Act 1907 which
became the basis of the Indian Patents and Designs Act 1911.
CONTINUED…
Meanwhile, India had made tremendous progress in the field of science and
technology. There had been a considerable change in the registration of Designs.
To provide more efficient protection to registered designs and to promote design
activity in order to promote design elements in an article of production, it had
become necessary to make a legal system of providing protections to industrial
designs more efficient.
To achieve these objectives and in order to repeal the Designs Act 1911, the Designs
Act 2000 was passed.
This new Act has come into force from 11.05.2001.
The Design office is located at Kolkata.
SALIENT FEATURES OF
DESIGNS ACT, 2000
This Act has a total of 48 Sections that deal with the various definitions, registration of
designs, copyright in registered designs, exhibition of designs at Industrial and Industrial
exhibitions, and powers and duties of the Controller & the Central Government.
To achieve these purposes, the Bill incorporate inter alia, the following, namely :
(a) it enlarges the scope of definition of "article" and "design" and introduces definition of
"original";
(b) it amplifies the scope of 'prior publication’;
(c) it incorporates the provisions for delegation of powers of the Controller to other officers
and duties of examiners ;
(d) it contains provisions for identification of non-registerable designs;
(e) it contains provision for substitution of application before registration of a design;
(f) it introduces internationally followed system of classification in the place of
Indian classification;
(g) it contains provision for maintaining the Register of design on computer;
(h) it contains provision for restoration of lapsed designs;
(i) it contains provision for appeal against order of the Controller before the High
Court instead of Central Government as existing;
(o) it enhances initial period of registration from 5 to 10 years, to be followed by a
further extension of a period of five years;
(p) it contains provisions for allowing of priority to other convention countries and
countries belonging to the group of countries or inter-governmental organizations
apart from united Kingdom and other Commonwealth countries;
(q) it contains provisions for avoidance of certain by restrictive conditions for the
control of anticompetitive practices in contractual licences;
(r) it contains specific provisions to protect the security of India.
MEANING OF DESIGN
Section 2(d) of the Act deals with "design". It 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; 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 trade mark as defined in clause (v) of sub-section
(1) of section 2 of the Trade and Merchandise Marks Act, 1958 or 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.
The definition makes it clear that design means the features of shape, configuration,
pattern, ornament or composition of lines or colours applied to an article.
2(a) “article” means any article of manufacture and any substance, artificial, or
partly artificial and partly natural; and includes any part of an article capable of
being made and sold separately;
The definition of 'design' is applicable to an article in either two dimensional or three
dimensional form or in both the forms. Thus, as a general rule, a design consists of:
(i) `three-dimensional features, such as the shape of a product;
(ii) two-dimensional features, such as ornamentation, patterns, lines or color of a
product; or
(iii) a combination of one or more such features.
by any industrial process or means, whether manual, mechanical or chemical
separate or combined
The design must be such that in the finished article the features of it 'appeal to and
are judged solely by the eye’.
A good subject of design must be visually appealing, though it need not be an artistic
work or possess artistic merit.
The followings are excluded from the definition of design:
(i) any mode or principle of construction;
(ii) anything which is in substance a mere mechanical device,
(iii) any trade mark
(iv) property mark as defined in section 479 of the Indian Penal Code
(v) any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
In Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) the Supreme Court held
that "Design" means that a feature or a pattern which is registered with the
registering authority for being produced on a particular article by any industrial
process whether manual, mechanical or chemical or by any other means which
appears in a finished article and which can be judged solely by eye appeal.
In Dover v. Nurnberger Celluloid Waren Fabrik Gebruder Wolff, (1910) 27 RPC
498, Buckley LJ said: "Design" means, therefore, a conception or suggestion or idea
of a shape or of a picture or of a device or of some arrangement which can be
applied to an article by some manual, mechanical or chemical means. It is a
conception, suggestion, or idea, and not an article, which is the thing capable of
being registered. It is a suggestion of form or ornament to be applied to a physical
body.
TRADEMARK AND DESIGN
OVERLAP
The overlap between the two is created by their respective definitions under the law.
A trade mark has been defined under Section 2(1)(z)b of the Trade Marks Act 1999,
as :
“trade mark means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others
and may include shape of goods, their packaging and combination of colours;”
The Designs Act 2000 defines a design under section 2(1)(d) as :
“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….”
Since a three-dimensional shape can be protected under both regimes, there are
several issues with which a proprietor is routinely confronted:
Issue 1 – Whether the article should be protected as a design, or as a trademark.
Issue 2 – If protected as a design, can one assert trademark rights and common law
rights of passing off over the shape of the product?
Issue 3 – Upon expiration or cancelation of the design registration, can one enforce
rights and common law remedies of passing off on the product as a trademark?
DESIGN OR TRADEMARK?
Trademark Designs

Purpose: ‘identifying a source’ enhance the visual

Duration: 10 + Renew 10 + 5
Condition: distinctive new, novel and not prior
published in designs
Registration Not mandatory Mandatory
Examination Strict (go through sec 9 Not that strict
& 11)
COMMON LAW RIGHTS OF PASSING
OFF OVER THE SHAPE OF THE
PRODUCT?
If the 3D shape design has been registered as a trademark, then in the event of an
infringement of the design, the owner can file a suit for infringement and passing off,
for infringement of all aspects of the design ranging from the three-dimensional
shape to the color combination and trade dress.
However, this does not apply to piracy of design registrations. The primary rationale
behind the same is that only those design elements that are not used as a trademark
are registrable under the Designs Act. While contesting the suit for piracy of design,
the contrary contestation will lead to invalidation of the design.
However, in 2018, the Delhi High Court relieved this criterion in the case of
Carlsberg Breweries vs. Som Distilleries and held that a single suit could invoke
claims for piracy of design and passing off. A critical point to note here is that the
plaintiff must avoid using the design components as a trademark or as a larger trade
dress, get-up, or product presentation.
This decision was in the lines of Mohan Lal and Ors. V. Sona Paint & Hardware and
Ors. (2013) the Delhi High Court has held that where a Design starts functioning as
a Trade Mark, then the common law remedy of ‘Passing off’ is available, provided
the mark has attained secondary meaning. This action of passing off is maintainable
during the subsistence of a design registration as well as post its expiry.
SUBSEQUENT REGISTRATION
AS A TRADEMARK?
15-year lapsed – design protection is over
Until quite recently, it was a commonly held view that a design, once registered,
cannot be pressed as a trademark, and that one cannot engage in “backdoor
evergreening.” In other words, once a monopoly over the shape of an article,
conferred through a design registration, expires, then no further statutory or common
law rights can be pressed on it as a trademark. This view was also supported by
judicial precedent of the Delhi High Court in cases such as Crocs Inc USA v. Bata
India and a host of connected cases initiated by Crocs Inc.
However, this Single Judge’s judgment was overturned on appeal, by the Division
Bench of the Delhi High Court.
A recent judgment Super Smelters Limited v SRMB Srijan Private Limited of the
High Court of Calcutta addresses this conundrum quite well, and it emphatically
states that a design, once expired, can certainly be protected as a trademark, if it
enjoys goodwill and the consuming public associates the product with its proprietor.
the court established the principle:
A registered design, after its expiry, may not lose its distinctiveness and end up
fulfilling all the requirements of a trademark. In that scenario, not recognizing that
mark as a trademark because that would extend the design monopoly would be to
conflate two things that exist completely independent of each other.
Therefore, The subsequent registration as a trademark is only conceivable after the
3D design has achieved substantial goodwill and recognition, and the public
associates the product solely and directly with its proprietor.
For example – the 3D shape of the Coca-Cola bottle has gained secondary
significance and popularity amongst its customers. People associate the shape of the
bottle solely and directly with Coca-Cola. Even the need for distinguishing
trademark stickers is negated, and only the shape of the bottle acts as an indicator of
the source.
DESIGN VIS-A VIS OTHER IPR
Patents Designs
A patent protects a device’s function, method, or A design protects its appearance
method of operation.
patents protect ideas and concepts registered designs protect the look of a certain
product or item