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The Design Must Apply to a Particular Article: A Discussion with Focus on The Design Act, 2000


Written by Architi Batra.

Fourth Year, B.A. LLB. Vivekananda Institute of Professional Studies (affiliated with GGSIPU) New Delhi.


Disclaimer: Please note that the views expressed below represent the opinions of the article's author. The following does not necessarily represent the views of Law & Order.



Abstract


The purpose of this article is to pivot our attention to The Designs Act 2000 with an emphasis on understanding why ample focus is given not just on design, but on the application of that design on a particular article. Also, as to the essentials covered under the Act which every design needs to fulfill to get the desired protection of the law. The article concludes to establish that registration of design helps in the safeguarding of ornamental or the aesthetic elements of an article and to benefit from that protection, it is necessary to fulfill the essentials under Section 4 of the Act.


Keywords: Industrial designs; Protection; Intellectual property



Introduction


What Is A Design?


Design as an Intellectual property holds immense value under the umbrella of intellectual property rights. A ‘design’ is the aspect of or the attributes applied to an article or product and it’s not the article or product in itself. [1] Under intellectual property law, the word ‘design’ encompasses a restricted meaning that is outlined underneath the provisions of the Design Act, 2000.

The nature and scope of design are referred to and explained in the case of Amp INC vs Utilux PYT LTD. [2]


Lord Reid summed up the nature of the designs to be: “Those who wish to purchase an article for use are often influenced in their choice not only by practical efficiency but by 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 strange or bizarre. Many simply choose the article which catches their eye. Whatever the reason may be one 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 which will increase sales. The appearance of the article influences the consumers much. The design of the articles increases profits. The law should protect those who spend time, labor, and intellect. The object of the law is to encourage and protect those who produce new and original designs and to increase industrial development and competitive progress.”


Thus, designs within the view of Intellectual Property law are focussed entirely on visuals and as such regarded by the characteristics of a physical substance which, by means of lines, images, configurations, and the like, taken as unabridged, manage to make an impression, through the eyes, upon the mind of the observer. [3]

As quoted in an English case,"The eye alone is the judge of the identity of the two things." [4] The essence of design resides not within the individuality of the elements nor in their methodology of arrangements, but in the impression, there’s connected in the mind of the observer, to the article in observance, a sense of uniqueness and individualism. [5] This is the characteristic of the design.

Designs are those that are original and relate to aspects of the form or configuration or shape of an article. It must be applied to a product by any industrial process. Furthermore, it’s a conception, suggestion, or scheme of the shape and not an article in itself. If it has already been foreseen, it’s not new or original because novelty is the requirement of design. Therefore, it is well established that the design is the outer outlook of an article that an unadorned eye will see.


Lord Morris asserted that “the words of description or inclusion proceed as follows. There must be certain ‘features’. They must be features either of shape or of configuration or of pattern or of ornament. Those features must be ‘applied to’ an article. They must be applied to it by some industrial process or means. There must be such that in the finished article they appeal to and are judged solely by the eye. It follows that in the finished article they must at least be noticeable.”


According to Section 2(d) of the Designs Act, 2000:


“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 trademark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)."


This long and comprehensive definition can be understood by understanding the following characteristics:


  • It should have the features of shape, configuration, pattern, or ornament.

  • It must be new or original and not identical to a design previously made available to the public.

  • It should not contain scandalous or obscene matters.

  • It should have the requirement of eye appeal.

  • Further, it should not include any trademark, property mark, or any artistic work covered by Trade and Merchandise Marks Act, 1958, Indian Penal Code, 1860, and Copyright Act, 1957 respectively.

  • It should not include any modus operandi or principle of construction.

  • It should be applied to an article.


Design rights shield a product’s appearance. If for instance, the design has a technical operation or the looks of it come naturally as a result of the operation that it performs, then a design right might not be appropriate. A registered design protects the visual look of a product or item and provides you the exclusive rights for that look to the extent that, if necessary, there is a legal right to prevent any unauthorized party from manufacturing or victimization of your design. [6]


Scheme of the Design Act, 2000


The act relies wholly on the primary filing of your design, i.e. the first to file, first to get the system, which implies that the inventor or discoverer or creator of design ought to file the application for registration within the earliest attainable time so as to forestall different persons from claiming rights over that exact design. The fundamental objective of the Designs Act 2000 was mentioned by the Supreme Court in the case of Bharat Glass Tube Limited v. Gopal Gas Works [7]: the object of the act is to protect the IPR of the original design with the aim to reward the innovator for research and labor applied to evolve a new and original design. The Court further emphasized that the protection given with respect to designs is primarily to advance industries and to keep them at a high level of competitive progress.’


The Designs Act, 2000 was passed to amalgamate and amend the laws relating to the protection of such designs. The object of the Act is to encourage competition and industrial progress. Further, the act aims to advocate Indian designs via a well-defined and managed regulatory mechanism, promotional, and institutional framework. Under this act, an action plan for implementation of the policy was additionally adopted for building a platform for innovation in artistic designs, propagation of Indian styles, and innovations within the international arena and for world positioning and stigmatization of Indian designs. Afterward, in 2009 the Central Government composed the India Design Council under the Department of Industrial Policy and Promotion (DIPP). The council is meant to act as the national strategic body for multi-disciplinary designs and to actively get involved in the promotion of design with the concluding vision to make the Indian Industry a design enabled industry. [8]


Application Of A Design: Must Be Applied To A Particular Article


The term ‘Article’ is defined under Section 2(a) as ‘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.


It includes any part of an article that is competent enough to be created and sold several. We must bear in mind that design is something that is applied to an article and not the finished article in itself. Thus, an article to which the design is to be applied should be something that could be delivered to the buyer in the form of a finished product. The design should be incorporated in that article itself. Maybe in this case in the form of a shape or configuration which could be 3D for e.g. the shape of a bottle or flower vase or in the case of a design which is 2D to be a design on a bed sheet or a wallpaper which serves the purpose of decoration. It should be original and it should be tangible in kind that is recorded in a design document (alternatively an article must have been created to the design).

The necessities or essentials of a valid design specifically place stress on the fact that a design is admissible if only it is incorporated in an article in reckoning to the fact that the design must relate to features of form, shape, configuration, ornamentation or pattern which is applied or could be applicable to an article. The design ought to be new or original and not antecedently printed or published or used in any country before the date of application for registration. The novelty might reside within the application of a known form or pattern to the new subject material.


If we keep in mind the known shape of “Qutub Minar” and its hypothetical application to a cigarette holder, the same could be registered. However, if the design for which the application is created doesn’t involve any real mental activity for conception, the registration might not be thought-about. Usually, designs of artistic or inventive nature like painting, sculptures, and the like which doesn’t seem to be made in bulk by any industrial process are excluded from registration under the Act.


The features of the design within the finished article ought to visually attractive as it is judged solely by the eye. This suggests that the design must appear and should be visible on the final article, for which it is meant. Thus, any design which is not visible per se or is inside the arrangement of a box, money wallet, or cupboard, etc might not be considered for showing such articles in its open state, as those articles are usually placed in the market in the closed state. Further, any mode or principle of construction or operation or something which is in substance a mere mechanical device, wouldn’t be a register-able design.[9] For example, a key having its novelty only within the shape of its corrugation or bend at the portion which is supposed to engage with levers inside the lock associated with it can't be registered as a design under this Act. However, once any design proposes any mode or a principle of construction or mechanical or alternative action of a mechanism, an acceptable disclaimer in respect thereof is needed to be inserted on its portrayal, provided there are alternative register-able features in the design.[10]


The Delhi HC explained in the case of Microfibres Inc. vs Girdhar Co. & Another, [11]‘that the artistic works which are excluded from design protection are the piece of art by itself in the form of painting. The court further observed that ‘the artistic work with an object to put them into industrial use is not excluded from the Section 2(d) of the designs act and thus they need to be registered to get protection.’

Further, the International registration of industrial designs came into conflict in India for the first time in Disney Enterprises Inc. vs. Prime Houseware Ltd.[12] before the Delhi HC. In this case, the Disney characters such as Mickey Mouse, Minnie Mouse, and Donald Duck were manufactured by a Mumbai based Prime housewares Ltd. Disney filed a trademark infringement suit with the main contention on the international registration of their designs and the court observed that the plaintiff’s trademark is protected under the Indian law, but not the designs even though subjected to a particular article. The court passed the order on a trademark infringement suit in favor of Disney. The court also directed the Indian company to deliver all the infringing material in their possession to Disney so that it could be destroyed.


Necessary Essentials To Get A Design Registered


Under Section 4, the design is fit for registration only if it fulfills the following essentials:


1. The design must be new or original

2. The design must be applied to a particular article

3. It must have a visual appeal

4. It should not have been published/ Should not have been disclosed to the public

5. The design must be significantly distinguishable from known designs

6. It should not include any scandalous or obscene matter use of which would be opposing to the public order or morality

7. It should not include a trademark or a property mark or any artistic work

8. It should comply with the provisions of registration from Section 3 to Section 10 of the Designs Act 2000 to get protection for a design.

9. A design must not include any mode or principle of construction which is in the substance merely a mechanical device.


Conclusion


The registration of a design aids in safeguarding the ornamental or aesthetic components of the article and it provides exclusionary rights to the holder or owner of the registered designs against unauthorized use which could be the replication or repetition or copying by someone without consent.


Safeguarding of such industrial designs helps in the economic development that promotes creativity in the industrial space. It is evident that the Design Act comprehends aesthetic sense more than sweat and labor.

In other words, the aesthetic sense becomes active whenever it comes to grant the protection to design and the application of the design on an article to make it look good to the eyes. Further, for registration of an Article under the Design Act, 2000 it is necessary for all the requirements necessary for a design to be fulfilled. The absence of any of the essentials could be a hindrance to the registration of the design. In terms of effectiveness, this act alongside other connected rules efficiently controls the matters associated with the Industrial Designs in India.



[1] Clarke’s Design – (1876) 13 RPC 351

[2] 1972 RPC 103

[3] Savale, Sagar, Intellectual Property Rights/Design (2018).10.20959/wjpps 20166-7102.

[4] Holdsworth v. McCrea, 2 A.C., (H.L.), 388 (U.K.)

[5] https://www.wipo.int/designs/en/

[6] Prof. A. Chandrasakeran, ‘Intellectual Property Law’, C. Sitaraman & Co. Pvt. Ltd., 2004 (1st Edition), Pg. 267-270

[7] (2008) SC 3185 (India)

[8] Balaji P Nadar , Evolution of Designs Act in India and Protection of Industrial Design under International IPR regime , https://www.scribd.com/doc/53318556/Evolution-of-Designs-Act-in-India-Protection-of-Industrial-Designs-under-International-IPR-Regime (Last visited on March 25, 2020)

[9] http://www.legalservicesindia.com/article/1348/Registration-of-shape-of-goods-as-Design.html

[10] https://www.mondaq.com/india/patent/678706/analysis-of-law-on-functional-designs

[11] 2009(40)PTC 519 (Del)

[12] CS(OS) 1451 of 2011

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