One of the important but neglected intellectual property rights are Design rights. Designs are protected under The Designs Act, 2000. Protecting designs is extremely important as it gives the owner an economical edge against competitors.
A design protects only the appearance of the article and not the mechanical function.
A design can be defined as:
i) the features of shape, configuration, pattern, ornament or composition of lines or colours
ii) which should be applied to an article (whether in two dimensional or three dimensional or in both forms),
iii) by any industrial process or means, (manual, mechanical and/or chemical), which in the finished article appeal to and are judged solely by the eye.
Design 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 (defined under the Trade Marks Act) or property mark (defined in section 479 of the Indian Penal Code) or any artistic work as defined in the Copyright Act.
Artistic works such as pieces of art and paintings are excluded from protection under the Designs Act but not artistic works used in industry. (Section 2(d))
An Article could be 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.
A design, to be registrable, should be new and original. If it lacks novelty and originality it cannot be registered. Novelty would be lost if it has been disclosed to the public anywhere in India or in any other country.
Validity of Registration
As per Section 11 of the act, once the design is registered, the proprietor gets copyright in the said design for a period of 10 years from the date of registration. This period is extended by another 5 years if the design is renewed before the expiry of the 10 year period. If the design is not renewed it shall lapse.
Restoration of Lapsed Designs
Section 12 of the Act permits restoration of a lapsed design if the necessary application is filed within 1 year from the date on which it lapsed, subject to the applicant fulfilling certain conditions. After hearing the applicant, the Controller may restore the registration of the design.
It is possible that once the design lapses, others may have applied the same design to articles of their manufacture. Section 14 (2) of the Act, protects such persons. In cases where the design is restored, no suit or other proceedings can be filed in respect of piracy of the registered design or infringement of copyright in the design committed between the date on which the registered design ceased to have effect and the date of restoration of the design.
Cancellation of registration
There are no provisions for filing any Opposition to a pending application for registration of a design. Hence, a person who is aggrieved may challenge the registration after the same has come to be registered and it is advertised in the Journal.
A Cancellation Petition can be filed before the Controller on any of the following grounds:
- The design has been previously registered in India
- It has been published in India or any other country prior to the date of registration
- The design is not new or original
- The design is not registrable
- It is not a design as defined under the Act
Piracy of Registered Design
A registered owner of the design acquires the exclusive right to apply the design in respect the article/s for which it is registered. While the registration of the design is in force, the registered owner has the right to exclusive use of the said design. Section 22 provides that it shall not be lawful for any person, for the purpose of sale, to apply or cause to be applied, to any article in any class for which the design is registered, the said design or any fraudulent or obvious imitation thereof without the license or written consent of the registered proprietor. Similar restriction is imposed on import of articles for sale if the registered design or any fraudulent or obvious imitation is applied to it and also in respect of persons who knowingly publishes or expose or cause to be published or exposed for sale such article. The section also provides for imposition of damages and injunctive relief against the person contravening the above provisions. The proprietor of the design may file a suit and seek interlocutory injunction under Order 39 of the Code of Civil Procedure, 1908.
The Designs Act prevents others from copying the shape and configuration i.e. the visual aspect, of the article but not the mode of constructing the article. A person may use the same method or principle of making the article provided the final product does not have the same shape and configuration as the original design of the proprietor.
Proceedings for infringement and damages cannot be instituted in any court below the court of District Judge. As far as Mumbai is concerned, the Bombay High Court is deemed to be the District Court and such proceedings can be filed directly in the Bombay High Court.
The Section also provides that every ground on which the registration of a design may be cancelled shall be available as a ground of defense.
In cases where the validity of registration is challenged under section 19, the suit shall be transferred from the District Court to the High Court having jurisdiction.