INTRODUCTION

The law protecting designs is governed by Designs Act, 2000. This act has replaced
the Designs Act , 1911.

Design is defined under the act as only meaning 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. Definition of design does not include any
trade mark or property mark as defined in section 479 of the Indian Penal Code or
any artistic work .

A design to be registrable must be new or original.

original, in relation to a design, means originating from the author of such design
and includes the cases which though old in themselves yet are new in their
application.

It should not previously published in India or anywhere in the world. It should be

significantly distinguishable from known designs or combination of known designs
and should not comprise or contain scandalous or obscene matter. It should also be
not contrary to public order or morality.

A design can be registered in respect of any or all of the articles comprised in a

prescribed class of articles. Article under the act is defined 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.

Controllers determination on the class to which any particular article falls shall be
final. On the design being registered, the Controller shall grant a certificate of
registration to the Proprietor.

When a design is registered, the registered proprietor of the design shall have
copyright in the design. Copyright under the act means the exclusive right to apply
a design to any article in any class in which the design is registered.

Duration

Proprietor of the design shall have copyright in the design during ten years from the
date of registration. Provision for the extension of the of the period of the copyright
for another 5 years is also provided under the act.
Effect of disclosure on copyright.-The disclosure of a design by the proprietor to any
other person, in such circumstances as would make it contrary to good faith for that
other person to use or publish the design, and the disclosure of a design in breach
of good faith by any person, other than the proprietor of the design, and the
acceptance of a first and confidential order for articles bearing a new or original
textile design intended for registration, shall not be deemed to be a publication of
the design sufficient to invalidate the copyright thereof if registration thereof is
obtained subsequently to the disclosure or acceptance.

A registered design shall have to all intents the like effect as against the
Government as it has against any person. The designs act uses the term piracy of
registered designs instead of term infringement.

The act forbids any person for the purpose of sale to apply or cause to be applied to
any article in any class of articles in which the design is registered, the design or
any fraudulent or obvious imitation thereof, except with the license or written
consent of the registered proprietor, or to do anything with a view to enable the
design to be so applied; or to import for the purposes of sale, without the consent of
the registered proprietor, any article belonging to the class in which the design has
been registered, and having applied to it the design or any fraudulent or obvious
imitation thereof. It even forbids one knowlingly to publish or expose or cause to be
published or exposed for sale such article.

Any suit regarding contravention under the act will not be instituted in a court below
the court of District Judge. The wrongdoer shall be liable to pay to the registered
proprietor of the design a sum not exceeding twenty-five thousand rupees
recoverable as a contract debt, or if the proprietor elects to bring a suit for the
recovery of damages for any such contravention, and for an injunction against the
repetition thereof, to pay such damages as may be awarded and to be restrained by
injunction accordingly.

The provisions of the Patents Act, 1970 with regard to certificates of the validity of a
patent, and to the remedy in case of groundless threats of legal proceedings by a
patentee shall apply in the case of registered designs in like manner as they apply
in the case of patents, with the substitution of references to the copyright in a
design for reference to a patent, and of references to the proprietor of a design for
references to patentee, and of references to the design for references to the
invention.

Any design registered under the act is not eligible for protection under the
Copyright Act.
 Salient Features Of The Design
Act, 2000.

The Designs Act, 2000 which came into effect from May 11, 2001 replacing the
earlier Designs Act, 1911. The salient features of the new Design Law are
enumerated below:

1. A provision claiming priority from a Design application filed in any Convention

country has been introduced. India is a member of WTO, Paris convention and has
also signed Patent Co-operation Treaty. As a result members to these conventions
can claim priority rights.

2. International classification based upon Locarno classification has been adopted

wherein the classification is based on articles -the subject matter of design. Under
the previous law a 'Design' was classified on the basis of the material of which the
article was made.

3. Under new law, a Design registration can now be obtained for new or original
features of shape, configuration pattern, ornamentation or composition of lines or
colours as applied to an article, whether in 2 or 3 dimensions or both.

4. A concept of "absolute novelty" has been introduced whereby a 'novelty' would

now be judged based on prior publication of an article not only in India but also in
other countries. Under the previous law, the position was ambiguous.

5. A Design registration has been brought within the domain of the public records
right from the date it is physically placed on the Register. Any member of public can
take inspection of the records and obtain a certified copy of the entry. In the
previous Act, there was a 2-year confidential period -post registration -which
prohibited taking inspection/certified copy of any entry in the records.

6. A Design registration would be valid for 10 years (from the date of registration
which is also the date of application) renewable for a further period of 5 years.
Under the previous law the validation period was 5 years which was extendable for
2 terms of 5 years each.

7. A Design registration can be restored within a year from its last date of expiry.
Under the previous law, no provision relating to restoration upon expiration of the
Design registration was provided.

8. Cancellation of a Design registration under the new law is possible only before
the Controller and there are a couple of additional grounds which have been
recognized:-

(a) The subject matter of Design not registerable under the Act

b) The subject matter does not qualify as a 'Design' under the Act.

Under the previous Act, the cancellation was provided for before the Controller
within 12 months from registration on limited grounds and in the High Court within
12 months or thereafter.

9. Under the new Act, a District Court has been given power to transfer a case to
the High Court -having jurisdiction -in the event the Defendant challenges the
validity of Design registration.

10. As regards assignment of Design registration under the new law, it has been
made mandatory to have the same registered with the Authorities within six months
from the date of execution or within an extended time period of six months.

Piracy of registered
designs
Designs have always played a major role in the global dynamic market. The
essential purpose of design law is to promote and protect the design element of
industrial production. A design is, in laymans language, the plan or scheme for the
appearance of an article (or a part of an article). It primarily concerns with what an
article looks like or is intended to look like. Section 2 (d) of the Designs Act 2000
defines design to mean 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 processes or
means, which in the finished article appeal to, and are judged solely by the eye. The
registration of a design confers upon the registered proprietor Copyright in the
design for the period of registration.

Eligibility Criteria for the Design Registration

A design qualifies for protection only if-

(i) it is new or original;

(ii) it has not been previously registered in India; and

(iii) it has not been previously published in India.

The rationale behind the protection of design is the role played by it in promoting
and maintaining a competitive market economy. The notion of protection of design
is the result because of its adaptation in the minds of the users and the socio-
economic framework, which sustains it. The manifestation of design in various
product markets poses a problem for the registration of a design in intellectual
property. In this article, an attempt is made to describe briefly about a major threat
faced in the field of intellectual property i.e. Piracy of the Registered Design so
that those reading it will get an insight of the importance of designs in this modern
consumerist market.

Piracy being a violation of copyright law; it involves the unauthorized acquisition,

reproduction, distribution, or performance of a creative work. To constitute
infringement of a registered design, it is therefore, necessary that the copy must be
fraudulent or obvious imitation. The word imitation does not mean exact replica.
The court is to see in particular as to whether the essential part of the base of the
applicants claim for novelty in the design form part of the infringing design.

Section 22 of the Designs Act, 2000, lays down that the following acts amount to
piracy: -

To publish or to have it published or expose for sale any article of the class in
question on which either the design or any fraudulent or obvious imitation has been
applied.

To either apply or cause to apply the design that is registered to any class of goods
covered by the registration, the design or any imitation of it.
To import for the purpose of sale any article belonging to the class in which the
design has been registered and to which the design or a fraudulent or obvious
imitation thereof has been applied.

Damages

According to Section 22(2) (b) of the Designs Act, 2000 the proprietor of a design
has the right to bring a suit for recovery of damages. A practical method of
assessing damages is to assess them on the basis of a reasonable royalty upon all
infringing articles made and sold by the defendant. Alternatively damages may be
assessed to compensate plaintiff for the loss of sales suffered by him on account of
the sale of the infringing articles by the defendant, or other damage caused to him
thereby, e.g. reduction in price. However, the plaintiff cannot recover damages or
penalty for infringement if he has failed to mark his articles in the prescribed
manner denoting that the design was registered, unless he shows that he took all
steps to ensure the marking of the article.

NEED FOR PROTECTION OF

DESIGNS

Industrial Design protection is provided for a shape, configuration, surface pattern,

colour, or line (or a combination of these), which, when applied to a functional
article, produces or increases aesthetics, and improves the visual appearance of the
design, be it a two-dimensional or a three-dimensional article. As per Indian Law,
under the Design Act of 2000, Industrial Design protection is a type of intellectual
property right that gives the exclusive right to make, sell, and use articles that
embody the protected design, to selected people only. Protection rights are provided
for a period of 10 years. They can then be renewed once for an additional period of
5 years. Design protection provides geographical rights, like Patents and
Trademarks do. To obtain Design Protection in India, the same has to be registered
in India.

The pre-requisites for a design to qualify for protection are as follows:

It should be novel and original

It should be applicable to a functional article

It should be visible on a finished article

It should be non-obvious

There should be no prior publication or disclosure of the design.

How to obtain Industrial Design protection in India?

The application procedure for Design protection is fairly simple. The Design office
provides a paper filing option as well as an online filing option. All designs are
categorized as per the Locarno Classification for Industrial Designs, and filing is
done as per the class that pertains to the design in question. An application is to be
submitted to the design office with the desired designs, with a classification code
and a description of the design. The application then goes through an examination
process, after which the applicant receives a communication from the Design office
regarding any objections, if present. After rectifying the application based on the
objections and responding to the Design Office, the application will be granted if all
the requirements are met. Once granted, and if there is no objection from any third
party sources, the design is exclusive to the owner for the time period mentioned
above.

Difference between Patent Protection and Industrial Design Protection

In some cases, a question may arise as to which type of protection to opt for; it is
ambiguous as to whether industrial design protection, patent protection or
copyright protection would be more relevant. For this reason, here is a detailed
difference between patents, industrial designs, and copyrights, in order to give you
a basic understanding of the main aspects of each.

IDP

Why should one look into filing for Industrial Design?

The outer appearance of a product makes it visually more appealing and attractive.
This acts as a value-adding aspect, which in turn increases the marketability of the
product. This leads to the need to protect your creation from third parties use, in
order to prevent them from taking advantage of your rights in this world of
competition. In many cases, the design itself becomes the identity of a brand. Some
of the most famous examples are Coca Colas contour bottle, the contours of the
iPhone/iPad/iPod, and the shape of the Volkswagen Beetle and the Mini Cooper.

When a products design is protected, it stops illegitimate products from destroying

the brands efficacy and safety. Protection of industrial designs also encourages
creativity in the manufacturing and industrial sectors, which leads to an expansion
in commercial activities.

The old saying goes the first impression is the best impression. In the case of a
product, the first impression is inadvertently made by the appearance of the
product, before the user even explores its functionality. In this era of creativity,
aesthetics and presentation, the overall design and visual appeal of any product is
very significant. Hence, the ability to design a creative appearance is a marketable
talent in itself. So why not protect your creativity and efforts, without allowing
others to use your novel creations? Think beyond just functionality, and look into
eye appeal too!

Conclusion

In a world where simultaneous copying rages and piracy has become a business
model, legislation addressing innovators' rights is a necessary addition to
intellectual property law and a fair complement to anti-counterfeiting measures.

Design denotes those which are protected by the design system of our country, i.e.,
Designs Act, 2000. But it should also be remembered that design act prohibits
registration of those which lack novelty or originality and also those designs which
have been disclosed to the public domain in a tangible form or in any other way
prior to the filing date or, which is not significantly distinguishable from non designs
or combination of non-designs or comprises or contains scandalous or obscene
matter. This act has been enacted, taking into consideration the international
standard that has been kept for design protection. It also states that the design
must have an eye appeal, which means that it should attract people towards the
article. It should also be noted that the design must possess some features beyond
those necessary to enable the article to fulfill its particular purpose.

A rationale basis for the protection of designs is to reward the designers creativity
and to provide incentives for future contributions, however a balance must be
maintained between such reward and the long term goal of promoting competition
within a market based economy. The owner of the registered design right will be in a
position to oppose infringement in relation to goods in respect of which the design
has been registered. Designs which appeal to the eye can be of a tremendous
commercial value. So there is a real need to register the design as a registered
design. It is the only way to prevent piracy of designs and to encourage the origin of
new and original ones. The Designs Act 2000 to a great extent serves as an
umbrella protection for Industrial Designs.