DESIGN

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Design Protection in India: A Critique
by Virendra Kumar Ahuja†

Cite as : (1994) 2 SCC (Jour) 11

Introduction

In order to catch the attention of buyers, an article must be visually attractive. Visual attraction thus enhances its marketability. A bad appearance of an article may have an adverse impact on its marketability. In ancient times also, the craftsmen and artisans chose a shape or pattern to make the articles attractive to the eye of the buyers by employing their personal skill.

After the industrial revolution, it became possible to give mass articles a unique shape by industrial process. Today, manufacturers are paying adequate attention to the designs of the articles they produce. For this purpose they invest substantial capital and carry out research. Legal protection becomes necessary for the creation of new designs and their application to articles. The protection now afforded to designs in India by Design Protection Act, 1911 has proved to be inadequate and obsolete.

The first designs legislation enacted in India was the Patterns and Designs Protection Act, 1872 which extended to the inventors of new patterns and designs in British India the exclusive privilege of making, selling and using the invention in India or authorising others to do so for a very much short duration of time. Later the Invention and Designs Act, 1888 was enacted to consolidate and amend the law relating to the protection of inventions and designs.1

In the United Kingdom the Patents and Designs Act was enacted in 1907. It became the basis of the Indian Patents and Designs Act, 1911. Later in 1970 the Patents Act repealing provisions relating to patents in the Indian Patents and Designs Act, 1911 was enacted by the Parliament. The provisions relating to designs in the Indian Patents and Designs Act, 1911, were allowed to continue under the new title Designs Act, 1911 with some consequential amendments. There is no post-independence Designs Act to protect new designs.

Meaning and Definition of Design under the Designs Act, 1911

The Act defines2 "design" to mean only the features of shape, configuration, pattern or ornament applied to any article 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. It is clear from the definition that design means the features of shape, configuration, pattern or ornament applied to an article and not the article itself. The design makes the article attractive for sale and is part and parcel of the article3 itself. 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.4

The following items such as a mode of construction, mechanical device or property mark are not covered by the definition of design in the Act5:

(i) A mode or principle of construction cannot be registered as a design. The reason for excluding the mode or principle of construction from the scope of the definition of design is that one cannot claim monopoly merely for a method or principle of construction by the purported registration of a design;

(ii) a mechanical device or in other words a functional design is not capable of registration.6

(iii) any trade mark as defined in Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958.

(iv) a property mark as defined in the Section 479 of the Indian Penal Code, 1860.

Obviously these excluded items do not get the protection afforded by the Act.

Nature of Copyright protection in Designs

On the registration of a design under the Act the proprietor of the design acquires the following rights7:

(i) The exclusive right to apply the design to any article in any class in which the design is registered;

(ii) the exclusive right to publish or expose, or cause to be published or exposed, any article in any class of goods in which the design is registered to which such design is applied; and

(iii) the exclusive right to import for the purposes of sale any article belonging to the class in which the design is registered and having applied to it that design.

When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design for five years from the date of registration. If an application is made to the controller and the prescribed fee is paid, the term of protection may be extended for five years and further for five more years on the fulfilment of same formalities. The protection of design cannot be obtained for more than fifteen years by registration under the Act.8

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.9

(i) New or Original Design

Earlier the test was 'new and original' but by an amendment (Act 7 of 1930), the test was changed to 'new or original' and it has now become easier to register a design under the Act.10

The word 'new' in relation to a design means a design which is completely new in the sense that it is invented or created for the first time and was hitherto unknown. The word 'original' in relation to a design may mean a new application of an existing or known design to a new subject-matter, provided that the same design has not been applied to an article in the same class or to an article in the different class which is similar in character or purposes.11

In Gammeter v. Controller of Patents and Designs12 the Calcutta High Court ruled that the test of novelty was the eye of the judge who must place the two designs side by side and see whether the one for which novelty was claimed was in fact new. It further observed that it was a matter of first impression.

In the case of Haji Sayed Sikander Shah Sayed Habib Shah v. Mian Rahim Bakhsh Mian Fakir Mohd.13, the Peshawar Court cancelled the registration of the design of a cap on the ground that it was used long before the registration for such caps, though it was applied in a new manner. It was apparently cancelled as there was no significant difference between the former design and the new design of the cap.

(ii) Prior Registration

A design is not registrable, if the same design or a substantially similar design has been previously registered in India. But a registered proprietor may apply for the registration of that design in any other class or classes. Thus, where a design has been registered in one or more classes of goods, the application of the proprietor of the design to register it in some one or more other classes shall not be refused, nor shall the registration thereof be invalidated-

(a) On the ground of the design not being a new or original one, by reason only that it was so previously registered; or

(b) On the ground of the design having been previously published in India, by reason only that it has been applied to goods of any class in which it was so previously registered.14

(iii) Prior Publication

A priori prior publication of a design in India bars its subsequent registration. The words 'in India' was not originally there but were subsequently inserted by Act 32 of 1950 and have created some confusion.15 There are two views on the import of the words 'in India'.16 According to the first view the expression 'new or original' is not qualified by the words 'in India' and if a foreign product is sought to be copied and registered in India, the design is not valid since it is not new or original. According to second view, there is no reason to invalidate the registration of a design which has published outside India. On this view, it is perfectly legitimate to import an article and register it in India.

The courts in India have adopted the former view while granting injunctions in a number of cases. But Professor K. Ponnuswami who is an expert on intellectual property argues that publication of the design outside India does not bar its subsequent registration in India.17

Generally, for the purposes of Section 44 a design is said to be published if it is disclosed to the public and consequently it is within the knowledge of the public and is no longer a secret. But there are two conditions under the Designs Act under which the prior publication will neither prevent the design from being registered nor invalidate the registration thereof. Those conditions are as follows:

(1) Confidential Disclosures of Design.- Section 49 of the Designs Act provides that (i) 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 (ii) the acceptance of a first and confidential order for goods 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.

(2) Display of Design in Exhibition.- Designs Act provides for special provision regarding the display of design in exhibition. Section 52 provides that the exhibition of a design, or of any article to which a design is applied, at an industrial or other exhibition, of the publication of a description of the design, during the period of the holding of the exhibition, or the exhibition of the design or the article or the publication of a description of the design by any person elsewhere during or after the period of the holding of the exhibition, without the privity or consent of the proprietor, shall not prevent the design from being registered or invalidate the registration thereof. There are however three conditions which are to be fulfilled in order to avail the benefits enumerated in Section 52. These are: -

(i) the provisions of Section 52 have been extended to such exhibition by the Central Government by notification in the Official Gazette;

(ii) the exhibitor exhibiting the design or article, or publishing a description of the design must give to the controller previous notice in the prescribed form; and

(iii) the application for registration of design must be made within a period of six months from the date of first exhibiting the design or article or publishing a description of the design.

Piracy of registered design or infringement of copyright in registered designs

Section 53(1) of the Designs Act lays down that the following three acts committed by a person other than the registered proprietor of that design amounts to piracy. These are:

(i) for the purpose of sale to apply or cause to be applied to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

(ii) 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; or

(iii) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of goods in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

The provisions of this section will only be applicable during the existence of copyright in design. It is necessary that the acts constituting piracy have been done for the purpose of sale and not merely for private or personal use. It is further required that the forbidden acts have been done in relation to any article in any class of goods in which the design is registered and not in relation to other class of goods.

Remedies against the piracy of registered design

Two alternative remedies are available against the piracy of registered design under Section 53(2)(a) and Section 53(2)(b). The proprietor has to elect one of these two remedies.

Section 53(2)(a) provides that if any person acts in contravention of Section 53, he shall be liable to pay the registered proprietor of the design a sum not exceeding Rs 500 for every contravention recoverable as a contract debt. But the total sum recoverable in respect of any one design shall not exceed Rs 1000.

Section 53(2)(b) provides that the proprietor may bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof. In case he succeeds, he will be entitled to recover such damages as may be awarded by the court and restrain the defendant in terms of the injunction granted by the court.

As mentioned earlier, a plaintiff cannot avail both the remedies. He has to choose one. The Bombay High Court in Calico Printers Association Ltd. v. Gosho Kabushiki Kaisha Ltd.18 ruled that the defendant has a right to ask the plaintiff to elect between the remedies available to him under Sections 53(2)(a) and 53(2)(b) at an early stage of the trial.

A plaintiff cannot have an account of the profits made by the defendant in lieu of a claim for the payment of Rs 1000 or for a claim of damages.

In a suit for infringement the defendant can take following defences : (a) he can deny that there was any infringement as alleged, or (b) contend that the design applied by him was materially different from the registered design, or (c) that he applied the design with the consent of the registered proprietor of the design, or (d) that the plaintiff is not the proprietor of the design, or (e) that the registration of the design is invalid as in fact there was no design as claimed within the definition under Section 2(5), or (f) the design was not new or original or had been previously registered or published in India.

In the case of Mohammed Abdul Kareem v. Mohammed Yasin19 the Allahabad High Court held that entry of a person's name in the register as the proprietor did not conclusively make him the registered proprietor. This can be rebutted by adducing evidence to the contrary. This principle was confirmed in Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd.20 In this case the Delhi High Court rejected the argument of plaintiff that it was not open to the defendant to attack the validity of the registration which could be done only in a separate action for cancellation of the registration.

Interlocutory injunction under Civil Procedure Code

In addition to remedies provided in Sections 53(2)(a) and 53(2)(b), the plaintiff may seek interlocutory injunction pendente lite under CPC, Order 39 Rules 1 and 2. The principles applicable to the grant of interlocutory injunction in the case of a design are the same as are applicable in the case of a patent.21

The plaintiff must make out a prima facie case and show that the balance of convenience is in his favour. An interlocutory injunction will not normally be granted where damages will provide an adequate remedy, should the plaintiff's claim succeed. The Delhi High Court in Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd.20 held that the court will not grant an interlocutory injunction unless satisfied that there is a real probability of the plaintiff succeeding on conclusion of the trial of the suit. Interlocutory injunction will not be granted if there are substantial grounds for attacking the validity of the registration.

Interlocutory injunction will also be denied if the defendant gives an undertaking to keep an account if he is a person of substance and the undertaking will give the relief which the plaintiff requires.

In Bansal Plastic Industries v. Neeraj Toys Industries22 the court stated that granting a temporary injunction is in the discretion of the court which is to be exercised in accordance with reason and sound principles.

Conclusions

Design protection law contained in the Designs Act, 1911 is in fact the leftover part of Patents and Designs Act, 1911. The patent provisions which were repealed from the Patents and Designs Act, 1911 were incorporated in the Patent Act, 1970 after a thorough revision on the basis of expert committee report and legislative debates. But unfortunately no such exercise was undertaken in respect of design law.

The Designs Act, 1911 is outdated in many respects and inadequate to meet the growing demands for design protection in India. The main deficiencies of the existing legislation which require immediate attention are outlined below.

The definition of design under the Designs Act, 1911 is inadequate. Functional designs should also be included in the definition to make it effective. One can claim better rights under copyright law in functional or mechanical design but not under the Designs Act.23

Registration of design is allowed to class to which goods belong and not to particular goods, while in the United Kingdom, registrations are given in respect of particular goods. Remedies under the Designs Act are neither adequate nor effective. Under Section 53(2)(a) of the Act, the infringer is liable to pay the proprietor a sum, not exceeding Rs 1000 in the aggregate as a contract debt which in fact is inadequate. It is felt that no sum need be fixed in the Act and damages should be granted on the basis of the nature of infringement.

Unlike patent annual report, there is no provision for annual report on designs.

Finally, serious attention should be given to secure international protection for the proprietors of Indian design. At present as we are not parties to the Paris Convention for the Protection of Industrial Property, such international protection can only be secured by bilateral arrangements such as we have with U.K. and others as commonwealth States. With the globalisation of our economy and with increased international trade and investment, it will be necessary to secure for our designs protection in the industrialised nations, and designs are very important aspect of competitiveness.

† B.Com. (Hons.), LL.M., M.Phil. (Int. Legal Studies) Return to Text

1. 1 Prof. Krishana Swami Ponnuswami, "Design Protection in India: The Designs Act, 1911", Paper presented at WIPO National Workshop on Intellectual Property Teaching, University of Delhi, 1991, p. 3 Return to Text
2. Section 2(5) of the Designs Act, 1911 defines designs as follows: "Design" means only the features of shape, configuration, pattern or ornament applied to any article 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. Return to Text
3. See Section 2(2) of the Designs Act. The term 'article' is defined to mean "any article of manufacture and any substance, artificial or natural, or partly artificial and partly natural". Return to Text
4. Ponnuswami, n. 1, p. 4 Return to Text
5. See Section 2(5) of the Designs Act Return to Text
6. However, it is seen that the design office usually permits registration of functional designs. See Pravin Anand, "India's Experience of Industrial Designs - Legal and Economic Aspects", European Intellectual Property Reports, (1990) at 460. Return to Text
7. Ponnuswami, n. 1, p. 5 Return to Text
8. Section 47 of the Designs Act Return to Text
9. Section 43(1) of the Designs Act Return to Text
10. Pravin Anand, n. 6, p. 460 Return to Text
11. Ponnuswami, n. 1, p. 6 Return to Text
12. AIR 1919 Cal 887 Return to Text
13. AIR 1940 Pesh 38 Return to Text
14. Section 44 of the Designs Act Return to Text
15. Pravin Anand, n. 6, p. 460 Return to Text
16. Id. Return to Text
17. 1Ponnuswami, n. 1, p. 7 Return to Text
18. AIR 1936 Bom 408 Return to Text
19. AIR 1934 All 798 Return to Text
20. AIR 1985 Del 136 Return to Text
21. P. Narayanan, Intellectual Property Law (Calcutta : Eastern Law House Private Ltd.) 1990, p. 123 Return to Text
22. 14 IPLR 75 (Del., 1989) Return to Text
23. John Richard Brady v. Chemical Process Equipment (P) Ltd., AIR 1987 Del 372 Return to Text