Unit 3

The Designs Act, 2000

Registration of a Design Under the Design Act: The word design can have different meanings in
different contexts. Even in the singular and specific context of intellectual Registration of a
Design Under the Design Act: The word design can have different meanings in
different contexts.

Even in the singular and specific context of intellectual property law, the word design
has multiple sub-contextual meanings.

If you use the word design in the sub-context of a trademark, it could mean the
design of the logo of a brand. If you use it in the sub-context of a copyright it can
refer to visual art. And when it comes to patents, the word design can refer to a
drawing of a working prototype of an invention.
In fact, for a very long time, there was no separate law for the
protection of designs.

All residual matters pertaining to design that do not fall into the
other three categories were dealt with under the Patents and
Designs Act, 1911.

But with the boom in the advertising and marketing industries

after the second world war, aesthetic design of a product began to
play a critical role in the success of a product.

So it became necessary to take the new utility of design in

commerce into account when it came to protection of intellectual
property.

With that in mind the Designs Act, 2000 was passed, repealing the
Patent and Design Act, 1911 completely, given that parts of it had
already been repealed by the enactment of the Patents Act, 1970.
What Is a Design as Per the Designs Act?

The term design has been defined for the purpose of this act in section
2(d) in the first chapter of the Act. The section states that:

‘“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,

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, 1860 or any
artistic work as defined in clause (c) of section 2 of the Copyright Act,
1957.’
Let us break down this definition for a better understanding.

The usage of the words ‘only features of shape, configuration, pattern, ornament or
composition of lines or colors applied to any article’ for defining a design indicates that
the design must have a purely aesthetic function.

This is further clarified by the exclusive definition of the design which states that a
design ‘does not include any mode or principle of construction or anything which is in
substance a merely mechanical device.’

You can also see the residual nature of the definition of design under this act as it states
that under this act design “does not include any trade mark as defined in the Trade and
Merchandise Marks Act, property mark as defined in section 479 of the Indian Penal
Code, or any artistic work as defined in the Copyright Act.
. Registration of a Design Under the Designs Act.

The registration aspect of the design is detailed in Chapter II of the Designs Act, titled
‘Registration Of Designs’. Sections 3-7 of the Act deal with the registration process. Let
us take a look at these various sections.
. Section 3 – Controller and other officers

The intellectual property law protects intellectual property rights. But the law
cannot protect these rights all by itself. It can only declare the illegality of
infringing such rights and empowers the authorities to take action against such
infringement. It is the authorities that have to uphold the law and execute its
provisions. The presiding officer when it comes to the registration of a design is
called a Controller.

‘The Controller General of Patents, Designs, and Trade Marks appointed under
sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958 shall be
the Controller of Designs for the purposes of this Act.’

Basically, the power of the controller for patents, designs, and trademarks is to
be rested in one office.

The section also states that ‘the Central Government may appoint as many
examiners and other officers and with such designations, as it thinks fit in sub-
section (2) of this section. It says that the controller is the ultimate authority and
the allocation or withdrawal of any work assigned to the officers is only at the
discretion of the controller.
Section 4 – Prohibition of registration of certain designs

This section declares that any design that has been registered, used, or
published before or bears a close resemblance to a design that has already
been registered, used, or published before will not be protected and the owner
of the already registered, used or published design can sue the design
submitted for registration if used.
It also states that any design that ‘comprises or contains scandalous or obscene
matter shall not be registered’
Essential Requirement of Registration

 Novelty and Originality

 No Prior Publication of design
 Application of Design to Article
 Not Contrary to Public order and morality
Design which are not registrable

 Not New and Original

 Prior Publication
 Not Distinguishable
 Design containing scandalous or obscene matter
Who is entitled to seek Registration
Sec 5
 It states that ‘the Controller may, on the application of any person claiming to
be the proprietor of any new or original design not previously published in any
country and which is not contrary to public order or morality, register the design
under this Act.’
 Acc to sec 2(j)
 (a) author of the design
 (b) any person who has obtained a design from author for good consideration and
 ( C ) any person on whom the design has devolved from the original proprietor
 Where a creation of design involves more than one person , the joint authorship
can also be claimed
Procedure for registration of Design
Sections 5 to 10
 1. Application for registration
 2. Contents of application :
 a. four copies of the “design” to be protected ,duly signed by applicant
 b. Class of design ( as in the act there are 31 classes + one misc class )
 c. Statement of Novelty
 d. Acceptance / Objections
 e. Decision of the Controller
 f. Appeal to central Government in case refusal by controller
 g. Registration and publication of particulars of design
Effect of Registration

 A. The right to exclusive use of the design

 B. The right to protect the design from piracy
 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.
 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.
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 the Designs Act, 2000 deals with the 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.
 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.