DESIGNS ACT – AN OVERVIEW

DESIGNS ACT – AN OVERVIEW

Are Designs (which is the brainchild of its author) is capable of being registered as such ( as an idea, which obviously is the Intellectual property of the maker / author thereof) , under the Law existing in India ? Or what is registrable and protect able is the impact which it produces in the minds of the consumers on its being transformed into a sellable commodity ? is the design after coming into existence in the form of being engraved, printed, made-out and the like on a commodity being capable of registrable or protectable for all the commodities, as in any case it is the brain child of its author and has traveled the journey from the imagination to reality ? Or even in such cases it is capable of being protected only in respect of the commodity, in which has transformed itself form the imagination to reality.

Designs – Meaning thereof

What is a Design ? Does the imagination in the mind of the author of a particular idea / design can be recognized as a Design in the eyes of law? Or it gets its recognisaiton only on being transformed on the piece of paper.

The Word “design” is defined u/s 2 (d) of the Designs Act, 2000 as under:-

" (d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines of 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, 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 (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 ) of section 2 of the Copyright Act, 1957 (14 of 1957);"

The Important characteristics of Designs as made out of the definition are :-

It has to be applied to any article either in two dimensional or Three dimensional from or both.

Such an application ought to be by an industrial process.

The impact of Design ought to be such that it is capable of being judged solely by the eyes.

It is worth mentioning here that the basic difference between the Trade Mark and a design is that design forms an integral part of the product itself whereas in not necessarily part and parcel of the product itself.

It is also not out of context to mention here that by minor modification of the existing design, no new design comes into existence. But where the modification of an existing design is of such a magnitude that the basic characteristics of the existing design is lost ( though the new design may contain some portion of the existing design) and the outcome is a design which is capable of being markedly distinguishable, a new design is said to be created.

Designs – Whose Property ?

Whose property is the design ? is it the property of the person who has conceived the idea and penned it down or is it the property of the person who has commercially exploited the same with the consent of the author. This question seeks significance as the commercial benefit goes to the person who is the owner of the same.

The Word “ Proprietor” of Design has been defined under the Act as under :-

" Section 2 (J) "proprietor of a new or original design".-

(i) where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed;

(ii) where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and

(iii) in any other case, means the author of the design; and where the property in or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person."

The Act thereby confreres the proprietorship or ownership status not only on the person who has conceived the idea of the design but also on the person who has been using it with the approval or consent of the owner / author thereof. More importantly, the act confers the power of ownership to the person, who though has not conceived the idea but was the employer by whatsoever named called, of the author and the author for consideration has executed the design in the favour of his employer. By the said definition the legislature has tried to cut short the controversy generally raised by the employees after leaving the employment that though they are the proprietor of the design made by them during their service tenure for their employer. Thus the act has recognized both the person who has conceived the idea and developed the design and also the person who has commercially exploited the same, subject to the explanations given above.

Commercial Impact of Designs & Need for protection thereof.

Designs , a neglect portion of commercial law, is slowly gaining importance and momentum but still we lack far behind in this branch of law as compared to the developed world where this branch of law together with other Intellectual property has gained much significance and importance.

In today’s commercial world the importance and impact of Designs cannot be overruled. Design are those integral part of the product which forms part of the product itself in comparison to the trade mark which does not necessarily constitute the products part itself. Designs make the manufacturer’s product distinguishable from other competitive products. Design, at several times, influence the consumer’s determination and desire to buy or not to buy the particular product. Consumers who wish to purchase an article for use are often influenced in their choice not only by practical efficiency but the 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 a stranger or bizarre. Many simply choose the article which catches their eye. Researches shows that designs do certainly influence the sale. And therefore there is a desire in the corporate world to find out and constantly improve its existing design so as to push up the sales figure upwards. It is worth mentioning here that generally, an advertisement only draws the consumer to the product whereas the design and its outlook plays an important role in converting the desire of the consumer into the demand and consequent sale thereof.

It can be said that though there may be different reasons for engraving a design on a product but 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.

Keeping this commercial importance of the Designs the Designs Act was enacted to protect novel designs devised to be applied to articles to be manufactured and marketed commercially. Designs Act is distinguished from the Patent Act which Protects invention. It is also different from the copyright act which aims to protect the copying of the original artistic effort in producing a work which is copyright protected. The primary concern of the Design Act is what the finished article is to look like and to prevent the manufacture and sale of article of a design not substantially different from the registered design. The emphasis therefore is upon the visual image conveyed by the manufactured article.

Designs Act- the Basic Framework

The Basic Purpose of the Act , as stated above is protect novel designs devised to be applied to articles to be manufactured and marketed commercially, so as to prevent the manufacture and sale of article of a design not substantially different from the registered design.

With this objective the act provides for the registration of the designs, conferring the rights to the proprietor(s) to exclusively manufacture the goods with the designs, procedure of cancellation of registration on the happening of certain events, and also prohibition of registration of certain designs.

Registration Provisions

Section 5 deals with the application for registration of designs. Section 6 deals with the registration to be in respect of particular article. Section 7 deals with publication of particulars of registered designs. Section 9 deals with the certificate of registration which reads as under :

" 9. Certificate of registration.-

(1) The Controller shall grant a certificate of registration to the proprietor of the design when registered.

(2) The Controller may, in case of loss of the original certificate, or in any other case in which he deems it expedient, furnish one or more copies of the certificate."

Section 10 imposes a statutory duty on the Patent officer to maintain the Register of Design in the prescribed form and further provides that the register of designs shall be prima facie evidence of any matter by this Act directed or authorized to be entered therein.

Section 11 deals with copyright on registration which reads as under :

" 11. Copyright on registration. -- (1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.

(2) If, before the expiration of the said ten years, application for extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years."

Section 12 deals with restoration of lapsed designs and provides that the lapsed designs can be restored within 1 year from the date on which the design ceased to have effect.

Prohibition / Cancellation of Registration

To ensure that the provisions of the act is not misused the act contains specific provisions for the prohibition of the registration of certain designs and also for cancellation of the designs already granted. Section 4 of the act contains provisions in respect of the prohibition of registration of certain designs as follows :-

" 4. Prohibition of registration of certain designs.- A design which-

(a) is not new or original; or

(b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or

(c) is not significantly distinguishable from known designs or combination of known designs; or

(d) comprises or contains scandalous or obscene matter, shall not be registered."

The detail discussion of the provision of Section 4 of the Act are being contained in the forthcoming paragraphs and hence the same is not being discussed here.

Section 19 of the Act deals with cancellation of registration which reads as under:

" 19. Cancellation of registration.- (1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-

(a) that the design has been previously registered in India; or

(b) that it has been published in India or in any other country prior to the date of registration; or

(c) that the design is not a new or original design; or

(d) that the design is not registerable under this Act; or

(e) that it is not a design as defined under clause (d) of section 2.

(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred."

Designs Rule, 2001 – Rule 29 deals with the procedure how the cancellation of the registration can be made and a detailed provision has been made in the Rules for implementation of Rule 29 of the Rules of 2001.

WHAT IS REGISTRABLE – THE DESIGN ITSELF OR ITS USE IN RESPECT OF A COMMODITY ?

The Moot Question is Are Designs (which is the brainchild of its author) is capable of being registered as such ( as an idea, which obviously is the Intellectual property of the maker / author thereof) , under the Law existing in India ? Or what is registrable and protect able is the impact which it produces in the minds of the consumers on its being transformed into a sellable commodity ? Or the Design is capable of being protected only in respect of the commodity, which is registered and is being commercially utilized ?

The Above Issue has been discussed at length by the Hon’ble Supreme Court of India in the matter of “Bharat Glass Tube Limited Vs. Gopal Glass Works Limited” by a Judgment dated 01/05/2008 by a bench consisting of Hon’ble Justice A.K.Mathur & Altamas Kabir JJ., wherein the Lordships were pleased to lay down the law on the aspect as follows:-

· The sole purpose of the Design Act is protection of the intellectual property right of the original design for a period of ten years or whatever further period extendable. The object behind this enactment is to benefit the person for his research and labour put in by him to evolve the new and original design. This is the sole aim of enacting this Act.

· if design is not new or original or published previously then such design should not be registered. It further lays down that if it has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration then such design will not be registered or if it is found that it is not significantly distinguishable from known designs or combination of known designs, then such designs shall not be registered.

· The Act also also provides that registration can be cancelled under section 19 of the Act if proper application is filed before the competent authority i.e. the Controller that the design has been previously registered in India or published in India or in any other country prior to the date of registration, or that the design is not a new or original design or that the design is not registerable under this Act or that it is not a design as defined in clause (d) of section 2.

· The new and original design when registered is for a period of ten years. Such original design which is new and which has not been available in the country or has not been previously registered or has not been published in India or in any other country prior to the date of registration shall be protected for a period of ten years.

· The burden of Proof lies on the on the complainant ( who claims that the registration of deigns ought to be cancelled ) to show that the design was not original or new.

· A conjoined reading of these the provisions makes it clear that a particular shape or a particular configuration is to be registered which is sought to be produced on any article which will have visual appeal. Such design once it is registered then it cannot be pirated by any other person.

· The expression ' new or original' in this context has to be construed that whether this design has ever been reproduced by any other company on the glass sheet or not ( article or not).

· This proprietorship of this design was acquired by this respondent from the German company and there is no evidence on record to show that these rollers were used for designing them on the glass sheets in Germany or in India or in United Kingdom. What is required to be registered is a design which is sought to be reproduced on an article.

· That Application From shows that shows that for name of the article on which the design is sought to be transcripted has to be mentioned at the time of registration.

· The concept of design is that a particular figure conceived by its designer in his mind and it is reproduced in some identifiable manner and it is sought to be applied to an article. Therefore, whenever registration is required then those configuration has to be chosen for registration to be reproduced in any article.

· The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together, i.e. the design and the design which is to be applied to an article.

· In the present case, the design has been reproduced in the article like glass which is registered. This could have been registered with rexin or leather. Therefore, for registration of a particular configuration or particular shape of thing which is sought to be reproduced on a particular article has to be applied.

· One has to be very cautious unless two articles are simultaneously produced the Court then alone the Court will be able to appreciate.

· Even if the design is proved to be registered in a Foreign Country but its use to the article specific is not proved then the same will not be a ground for the cancellation of designs registration in India.

Thus we can conclude that the it is the use of the design for a particular article which is registrable and not the deigns in isolation itself and the burden of proof always lies on the party who is seeking the cancellation and not on the party in whose favour the registration is granted.