Introduction
While buying a product, what is the main feature that catches our eye, apart from the brand? For me and many others, price matters the most. This mindset is known to most businesses and companies thus, making their marketing strategies and products suitable 'to the eye'. Thanks to technology and an increase in competition, businesses can offer the same or similar products by simply making minimalistic changes to either the name or packaging features, design etc. The result is we end up buying copies of the original products without realizing it, due to such small changes in design. Intelligent marketing some might say!
We have witnessed a boom in small businesses, eager to expand, create something new, and make a name in the national and international markets, however, most might not be aware of the need to register their unique designs for copyright to avoid future complications. Several laws offer the creators protection to prevent piracy of their designs and the right to sue for any breach, like
1. Copyrights (artistic work)
2. Trademarks
3. Patents
4. Designs (industrial or product design)
5. Geographical indications of goods
This article will throw light on the Designs Act, 2000 ("Act") that regulates the external aspects of the article and not the functional or technical part of the design of the product, as an Intellectual Property Right.
Brief history
In the 18th century, the Patents and Design Protection Act, 1872 was the first legislation to deal with designs and gave inventors the exclusive right of making, selling the designs for a short duration. This was followed by the Inventions and Designs Act, 1888 and then the Patents and Designs Act, 1907.
However, a separate law was created altogether for Patents and the Patent Act, 1970 was passed. Up until 2000, industrial designs were protected under the Designs Act, 1911. The 1911 Act had a definition of the term 'design' that excluded trademark or property mark from being included by way of interpretation of the term ‘design'. This statute provided certain guidelines to get a design registered in India, along with fee extensions and period of expiry etc.
Finally, the Designs Act, 2000 was enacted along with the Design Rules, 2001 as amended by the Designs (Amendment) Rules, 2014 ("Rules"), to comply with the TRIPS agreement (Trade-Related Aspects of Intellectual Property Rights) to which India was a signatory.
An interesting fact - India also adopted the system of "first to file, first to get" meaning, the inventor of a design must be the early bird in applying for its registration to prevent others from claiming that design.
Section 2(d) of the Act defines 'Design' as "Features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article in two or three- dimensional form, or both, 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."
A significant aspect of this definition is the exclusion of certain works from its ambit like "artistic work" as defined under Section 2(c) of the Copyright Act, 1957. The reason for such exclusion was that such exclusions are in themselves a piece of art mainly paintings as explained by the Delhi High Court in Microfibers Inc. v. Girdhar Co. & Anr. The reason being to mainly incentivize inventors for their hard work and labour in creating such unique and original designs.
International Regime
On an international level, four main agreements have improved the scope and standard of security for the protection of industrial designs namely,
(I) The first and significant international agreement is the Paris Convention (Paris Union) for the Protection of Industrial Property, 1883
(II) The second agreement was the Hague Agreement Concerning the International Registration of Industrial Designs, 1925. (India is not a signatory to this agreement)
(III) The Locarno Agreement Establishing an International Classification for Industrial Designs, 1968
(IV) The Agreement on Trade-Related Aspects of Intellectual Property Rights, 1995 ("TRIPS").
The Objective of the Design Act-
The Supreme Court in the chase of Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008, defined the purpose of the Act as under:
“The object of the act is to protect the Intellectual Property Rights (IPRs) 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 in a high level of competitive progress. One interesting feature of industrial design is that, unlike patents, it does not have high social costs as it does not offer someone the status of an absolute monopolist in the relevant market”.
Essential features -
(a) Design must be original- as per the Act only work that is original, has new application, new visuals are applicable for registration. A mixture of old designs is permitted provided the manufactured product is unique.
(b) Design must be applied to an article - A design capable of registration must be applied to any article, either two dimensional (2-D) or three dimensional (3-D)
(c) Prior publication is not acceptable- For a design to qualify for registration, a design should not be disclosed to the public in any tangible form, anywhere in India or any other country. This means designs applied for registration under the Act should not be published or made available on any platform neither should the copy of the design be disclosed to the public. However, personal and experimental use is permitted.
(d) Design should have visual or aesthetic appeal and must attract the eye hence, be judged solely by the eye.
Registration Procedure
Chapter II Sections 5 to 10 of the Act along with Rules 11 to 25 of the Rules deal with the procedure for registration of designs. The following steps ought to be followed while registering a design:
(i) Application submission- The first step is the submission of application for registering a design, before the Controller General at the Patents Office at Kolkata or New Delhi or Chennai or Mumbai, along with the prescribed fee as under Section 5(2) of the Act. The application must be accompanied by 4 copies of similar drawings, photographs or other documents signed by the applicant and must also state the class of goods in which the design is to be registered.
(ii) Examination of application- The examiner on receiving the registration applications will verify whether the provisions of the Act and Rules have been complied with while filing such application.
(iii) Acceptance, Amendment or Rejection of application- The Controller on receiving the report from the examiner can either accept the application for registration finding no lawful objection; can reject it for not being per the statute, or can ask the application to be amended.
(iv) Hearing of objections- if any objection is found adverse to the applicant or requires amendment, the Controller sends the objection to the applicant or the agent in writing. The applicant must file a reply to the objections within 3-6 months from the date of applying else the application is deemed to be withdrawn. On receiving a reply, the Controller fixes the date of hearing by giving a 10 days’ notice and accordingly passes appropriate orders.
(v) Publication of particulars of registered designs- On acceptance of the application, the Controller directs the design to be registered. All particulars related to the design like the Registered Design number (RD No.) date of filing etc., are published in the Official Journal of Patents by the Patents Office, which is published weekly every Friday.
(vi) Issuance of certificate of registration – The final stage in the process is the issuance of the certificate in the prescribed format to the proprietor of the design by the Controller.
Validity- Designs are valid for 10 years from the date of registration as per Section 11 of the Act. An extension of 5 years is granted upon the payment of the renewal fee. Hence a design is valid for a total period of 15 years.
Conclusion
The Design Act 2000 plays an important role in protecting the designs of articles and products due to the rapid change in trends and tastes. This gives rise to numerous copycats that intend to make a quick buck by simply stealing the designs and claiming them to be their own making minor changes along the way. The Act is a wholesome statute that prescribes an easy and clear procedure for registering one’s design to prevent infringement at a very low cost with fast-paced remedies are available in case of infringement. However, it is not without flaw and it is seen that the protection period of 15 years acts as a disadvantage with people opting for trademark or copyright instead. Furthermore, the downside is a person can get protection by making slight changes to the original design. A major problem is the lack of awareness about the provisions and the option of online registration. The registration process can be much faster if the formalities are reduced keeping in mind the demand and market regulation. Furthermore, the enforceability is weak compared to other IPRs and most times the infringements go unnoticed and unacknowledged. The need of the hour is a robust framework with sufficient awareness and proper policies and rules to effectively and efficiently enforce the provisions of the Act in the fast-developing economy.
References
1. Rachit Garg, “A Critical Analysis of Design Protection Laws in India - IPleaders” (iPleadersAugust 28, 2020) <https://blog.ipleaders.in/a-critical-analysis-of-design-protection-in-india/#Advantages_and_disadvantages_of_the_Act>
2. STA Law Firm, “An Analysis of Design Rights in India” (Mondaq.com May 20, 2020) <https://www.mondaq.com/india/trademark/936940/an-analysis-of-design-rights-in-india>
3. IJALR, “Industrial Design Protection Act/ Designs Act, 2000: An Analysis” (Ijalr.in2020) <https://www.ijalr.in/2020/12/industrial-design-protection-act.html>
4. Rohit, “Designs Act, 2000 - Summary and Notes | Law Column” (Law column June 22, 2020) <https://www.lawcolumn.in/designs-act-2000-summary-and-notes/>