Author Name:   Akash Shah

Design under the new Act has been widened. Under the previous law, the Design registration was granted only for the visual appearance of an article which included shape, configuration pattern, and ornamentation whether in two or three dimensions...

Registration of shape of goods as Design

Introduction And Research Methodology
“Design,” is defined in Section 2 (d) of the Designs Act 2000 (the Designs Act) as follows:

Design means 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 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 trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or the property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

The definition is exclusive and only those which satisfy the following conditions can be brought under the purview of design:
1. Design primarily represents features of shapes, configuration, pattern, ornament, color or composition of lines.

2. Such shape, configuration, pattern, ornament, color, or composition of lines should be applied to any article.

3. Such article may be two dimensional or three dimensional or both.

4. Any of these features may be one that is applied by any Industrial process or means which may be manual, mechanical, chemical, separate or combined.

5. And such an application of the aforesaid features in the finished article shall appeal to and judged solely by the eye.

6. It does not include any mode or principle of construction or anything which is in substance a mere mechanical device.

7. It 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 the property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

The definition of Design under the new Act has been widened. Under the previous law, the Design registration was granted only for the visual appearance of an article which included shape, configuration pattern, and ornamentation whether in two or three dimensions. Under, the Designs Act 2000, 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 two or three dimensions or both. A Design is something which determines the appearance of an article, or some part of an article. Designs are applied to an article with the objective of ornamenting and beautifying the article. If a particular feature is so applied on an article that it does not appeal to the eye at all and is incapable of attracting a prospective consumer in any manner for the purchase thereof, then such feature will not fall within the scope of a design. A visual characterization of an article which influences a person to purchase an article in preference to other articles which are identical in function but differ in appearance, such characterization would also meet the criteria of a design. A design must be applied in the article itself as in the case of a shape or configuration which is three-dimensional, e.g., shape of a bottle or flower vase or the case of design which is two dimensional, e.g., design on a sari, bed sheet, wallpaper which serves the purpose of ornamentation.It should be one which catches the eye of the purchaser.In Delhi Metro Plastic Industries v. Galaxy Footwear case, it was held the definitions of "design" in Section 2(5) of the 1911 Act and Section 2(d) of the 2000 Act were slightly different and the present definition had certain additional features. The legislation has amplified the definitions of article and design to confirm them with international accepted definitions for providing wider protection. The definition of article has been broadened to include parts of articles sold separately within its scope. The definition of Design has also been amplified to incorporate the composition of lines and colors to avoid overlapping with Copyright Act, 1957 regarding the definition of design with respect to artistic work.

1.2 Statement Of Problem / Research Question
In India, previously the law of designs was governed by the Designs Act 1911.Since the enactment of the Design Act, 1911 considerable progress has been made in the field of science and technology. Hence the legal system for the protection of industrial design required to be made more efficient in order to ensure effective protection to registered designs. It was also essential to promote design activity in order to promote the design element in an article of production. The Designs Act, 2000, repealed the Act of 1911 and it aims at protecting the designs in India and bringing the Indian law at par with International law.

1.3 Objective
The objective of this project is:
To know the importance of Design
To know it value (Brand) of the same

1.4 Hypothesis
The researcher has made certain assumption in the beginning of the research project which are going to be tested during the project, they are the following.

Shape of goods can only be considered under design
Design once registered cannot be used by other with different name.

1.5 Scope Of The Study
The research is a doctrinal research. The researcher here would like to study though the judicial viewpoints by its decision given in various cases. The researcher has tried to analysis the topic by studying various authors, experts, cases of The Indian Apex Court and High courts, articles, etc. The researcher has strictly followed the boundary and has studied only with reference to Indian authors, experts, cases, etc.

1.6 Methodology
The present research study is mainly a doctrinal and analytical. Keeping this in view, the researcher has gone through different books, journals, Web references, E-journal, reports etc.
The relevant material is collected from the secondary sources. Materials and information are collected both legal sources like books.

Design Protection In India
“A thing of beauty is a joy forever”, these golden words have a very great significance in today’s materialistic world, where the appearance of an article counts more than its utility or quality. Many people blindly choose an article, which catches their eye by the beauty in its design. The concepts of globalization & liberalization have flooded the Indian markets with large variety of products. The consumers are provided with numerous alternatives for any single product. This has made the Indian consumers more selective. Nowadays the producers have to not only prove their product’s reliability but they also have to satisfy the aesthetic appetite of the consumers. The producers spend huge capital in developing innovative designs for catching the recognition of consumers by enhancing the appearance of their products. There are professional designers who put great intellectual effort in creating new & attractive designs. The rationale for design protection is clear from US Supreme court’s decision in the case, Gorhan Mfg .Co .v. White, in which the court stipulated that the essential rationale for design Law are that the design right may enhance the design’s “saleable value”, “may enlarge the demand for it” and may be a “meritorious service to the public”. Design protection will play an important role in the product market, increasing the competitiveness of the manufacturer or vendor of the product, and enhancing quality of societal life. Hence it is necessary to protect designs so as to reward the designer’s creativity and to encourage future contributions. To this end, industrial designs are protected by legislations.

2.2 Design Protection In India.
In India, previously the law of designs was governed by the Designs Act 1911.Since the enactment of the Design Act, 1911 considerable progress has been made in the field of science and technology. Hence the legal system for the protection of industrial design required to be made more efficient in order to ensure effective protection to registered designs. It was also essential to promote design activity in order to promote the design element in an article of production. The Designs Act, 2000, repealed the Act of 1911 and it aims at protecting the designs in India and bringing the Indian law at par with International law. . India's Design Act, 2000 complies with the articles 25 and 26 of TRIPS agreement which stresses on designs protection.

The new Act has come into existence on 25.05.2000 and the new Act is a consolidating and amending Act relating to the protection of design. From the Statement of Objects and Reasons of the new Act, it appears that the framers of the law became aware of the considerable progress in the field of science and technology which has taken place since the enactment of the old Act in 1911. As such, one of the objects of the new Act was to ensure effective protection to the registered designs. One of the objects was also to ensure that law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity and to remove impediment to the free use of available design.The important purpose of design registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.

2.3 Industrial Design: Meaning.
Industrial design protection is provided only for the aesthetic feature of a product, not for its functional design. Industrial design laws generally protect designs applied on industrial products which are aesthetic and non functional. Such designs merely enhance the aesthetic appeal of industrial products. Typically industrial designs are applied on products like furniture, packaging, watches, textiles and handicrafts. The economic value of these products lies in enhancing their aesthetic appeal to consumers. Designs which are functional are not registrable under the Designs Act, thus if a designer makes an article in a certain shape not to make it appeal to the eye of a consumer but solely to make the article perform a function ,then it does not become registrable.

Requirement for registration of design and its benefits

3.1 Requirements For Registration Of Designs
Design Must Be Applied To Articles.
A Design is something which is applied to an article and not the article itself. A design must be incorporated in the article itself as in the case of a shape or configuration which is three-dimensional, e.g., shape of a bottle or flower vase or the case of design which is two dimensional, e.g., design on a bed sheet, wallpaper which serves the purpose of decoration. An article to which the design is to be applied must be something which is to be delivered to the purchaser as a finished article.

Appeal To The Eye.
The design must be capable of being applied to an article in such a way that the article to which it is applied will appeal to and judged solely by the eye. The particular shape, configuration, pattern or ornamentation must have a visual appeal. Feature to be registered must “appeal to the eye” and be “judged by the eye. In Amp v. Utilux, (1972),it was held that ,

(a) to have eye appeal, the features must be externally visible.
(b) The feature must appeal to the customer’s eye.
(c) The eye appeal need be neither artistic nor aesthetic, provided that some appeal is created by distinctiveness of shape, pattern, or ornamentation calculated to influence the consumer’s choice.

The shape adopted in Amp v. Utilux found no “eye appeal”, because the part (electrical connector which was an internal component of a washing machine) although visibly distinctive was entirely functional and would not affect the consumer’s choice. A different approach was taken in the case, Interlego v.Tyco, (1988), where the toy brick’s shape, though functional, did have a visual appeal which would affect the buyer’s choice.

Novelty Or Originality.
A design can be registered only when it is new or original and not previously published in India.A design would be registrable if the pattern though already known is applied to new article. For example, the shape of an apple if applied to school bag would be registrable.It was held in Pilot Pen Co. v. Gujarat Ind. P. Ltd, that registration could not be deemed to be effective unless the design, which sought to be protected, was new and original and not of a pre-existing common type. Also if it comprises or contains scandalous or obscene matter, shall not be registered under the Act. In Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh,it was held that, the test for novelty and originality is dependent on determining the type of mental activity involved in conceiving the design in question. If the design is a mere trade variation of a previous design then the designer could be said to have kept an existing design in view and made some changes. There should be some original mental application involved when conceiving a new design. The novelty or originality of a particular part of the article may be sufficient to import the character of novelty and originality to the whole.A combination of previously known designs can be registered if the visual impact of the combination as a whole is new.

No Prior Publication
A design can be registered only when it is not previously published in India. In the case of Wimco Ltd. v. Meena Match Industries, the Court held that publication means the opposite of being kept secret. The disclosure even to one person is sufficient to constitute publication. The design cannot be registered under Design Act if it is not significantly distinguishable from known designs or combination of known designs. To constitute publication a design must be available to the public and it has been ceased to be a secret. For e.g.:-the display of a design on a saree in a fashion show is a publication of that design.

3.2 Who Can Apply For Registration Of A Design?
As per Section 5 of Design Act, 2000, any person who claims to be the proprietor of any new or original design can apply for the registration of the design. A foreigner can also apply for the registration of the design. However, the convention followed is that if a country does not offer the identical registration right to Indian citizen for their designs in their country, its citizen would not be eligible to apply for registration of design in India. In the Vredenburgs Registered Designs case ,it was held that if there are two persons each of whom has produced a similar design and communicated the fact of such authorship to the other, neither of them alone is the proprietor of a new or original design. There is joint authorship of the design.

3.3 Procedure For Registration
The application under Section 5 shall be accompanied by four copies of representation of the design and the application shall state the class in which the design is to be registered. In India, we follow Locarno Classification for registration of design comprising 32 classes, numbered 1 to 31 and an additional Class 99 to include articles not falling under the aforesaid 31 classes. Briefly the procedure is as follows:

Submission of application
The proprietor of the design shall submit the application for registration in the patent office. The application shall be in the prescribed form and shall be accompanied by the prescribed fees. According to section 5(1), the controller may on application made by any person claiming to be the proprietor of any new or original design not previously published in any country and which is not contrary to public order and morality, register the design under the Act. The application is to be accompanied by the prescribed fee and in prescribed Form and in prescribed manner. The application shall state the class in which the design is to be registered.

Acceptance /Refusal
Before registration the Controller shall refer the application to an examiner appointed under this Act, to determine whether the design is capable of registration under this Act. The Controller shall consider the report of the examiner and if satisfied that the design complies with all requirements for registration under this Act shall register it. The Controller may if he thinks fit refuse to register the design. The aggrieved by such refusal may appeal to the High Court .The Controller may refuse to register a design, the use of which would be contrary to public order or morality.

Objection/Removal of Objection/Appeal to Central Government
If on consideration of the application any objections appear to the Controller, a statement of these objections shall be sent to the applicant or his agent. The applicant has to remove the objection within one month of communication of the objections to him failing which the application shall be deemed to have been withdrawn. He may also apply to the Controller for being heard on the matter. When the Controller refuses the application after the submission, he may directly appeal to the Central Government whose decision is final.

Decision of Central Government
The decision of the Central Government on the registrability of the design is final.

Registration of the design
As soon as the design is registered the Controller shall direct the publication of the particulars of the design and thereafter it becomes open to public inspection. As per section 10, a book called Register of designs shall be kept in the patent office. The register shall contain particulars such as the names and addresses of the proprietors of registered designs, notifications of assignments and other prescribed particulars. On the completion of the above procedure, the Controller shall grant a certificate of registration to the proprietor of the design.

Copyright for a registered design
Copyright in an industrial design is governed by the Designs Act 2000. If a design is registered under that Act, it is not eligible for protection under the Copyright Act. In the case of a design which is capable of being registered under the Designs Act, but not so registered, copyright will subsist under the Copyright Act, but it will cease to exists as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the Copyright or with his license by any other person. It would, therefore, follow that those industrial designs which are not registrable under the Designs Act get protection under the Copyright Act provided it comes within the scope of section 13 of the Act as original Artistic works. According to Section 11 of Designs Act 2000, when a design is registered the proprietor of the design shall have copyright in the design during ten years from the date of registration which can be extended to five more years.

3.4 Piracy Of A Registered Design
Infringement of a copyright in design is termed as "Piracy of a registered Design". It is not lawful for any person during the existence of copyright to do the following acts without the consent or license of the registered proprietor of the design. Section 22 of the Designs Act, 2000, lays down that the following acts amount to piracy:

(1) 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.
(2) 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.
(3) 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.

In fact any unauthorized application of the registered design or a fraudulent or obvious imitation thereof to any article covered by the registration for trade purpose or the import of such articles for sale is a piracy or infringement of the copyright in the design.

3.5 Meaning Of Fraudulent Or Obvious Imitation
A distinction is made between fraudulent and obvious imitation. The crux of both is that there is imitation. Thus even in the case of fraudulent imitation the design applied must be an imitation of the registered design. In a fraud the imitation has been made with the intention to deceive another person with the knowledge that what is being done is a violation of the other person’s right. There must be an exact imitation of the registered design. In Western Engineering Company v. Paul Engineering Co, it was held that features of shape, configuration, pattern etc, of the two designs must be same for determining whether there was infringement or not .The sameness in feature shall be determined by the eye .The design need not be identical on all points and differ on no points.

Cases on shape of goods as protected under design
Dabur India Ltd. v. Amit Jain
This was a case filed by the plaintiff seeking injunction restraining the respondent from using the registered design of plaintiff. The plaintiff Dabur Amla Hair oil marketed in plastic bottles shaped with semicircular shoulder with curvaceous back and front panel tapering into each other, thereby providing a novel and original overall appearance. The plaintiff alleged that the bottles and caps were used by the respondent and produced deceptively similar to that of the plaintiff.

The court held that the design which was part of compromise order in the earlier suit cannot be dilated or ignored. Mere fact that there may have been a registration in the U.S. in respect of similar bottles and caps cannot come in the way of the plaintiff’s seeking an order restraining the respondents from infringing its registered design the court granted interim injunction.

Ampro Food Products v. Ashoka Biscuit works
In this case the appellants and respondents manufactured biscuits. The appellant’s design was registered. The respondent’s biscuits also had an identical design embossed on them except that instead of letter “AP” letters “AB” appeared on the respondent’s biscuits. The appellants filed a suit for injunction claiming that the respondent had committed piracy of his design. Pending in disposal of the suit, they sought temporary injunction.

The court held that, for an injunction based on registered design, the defense that the appellant’s design was not new or original was not open to the respondent since he had not taken any steps for cancellation of the registration of design.

The court issued temporary injunction restraining the respondent from using the appellant’s registered design and from selling biscuits bearing that design.

Jg Vacuun flask Ltd v. Eagle Flask (p) Ltd
This was a petition for cancellation of registration of the respondent. In present case before Delhi HC the petitioner sought cancellation of registration of design in favour of respondent on the ground of prior publication of design of flask in India. Consequently, the registration of the respondent was cancelled.

Western Engineering Co. v. Paul Engineering Co.
It was held that the features of shape, configuration, pattern, etc. of the two designs must be same. For determining whether there was infringement or not, the sameness of feature is to be determined by the eye. The designs need not be identical on all points and differ on no point.

Wells v. Attache Case Mfg. co.
The registration of a design in respect of a sleeper bag was obtained. The plaintiff commenced an action to restrain the defendants from selling or offering for sale an alleged infringement of the design.

The defendant at the trail put the validity of registration of the design in issue. It was held that the plaintiff’s design passed the criteria of novelty and originality and it was declared valid. It was further held that the alleged infringement of design was not identical with the registered design but it differed materially there from and that it was not an infringement of registered design.

Smith Kline Beechan v. Hindustan Lever Ltd
In this case appelant asked for the intrim injunction. The “S” shaped neck was their it form the function and it has industrial use so in para 9, 15 and 16 court clearly said that functional aspect cannot be protected under the design act. By helding this the petition was dismissed by the court.

Conclusion
To conclude following salient features of Designs Act 2000 may be traced out:
The definition of Design under the new Act has been widened. Under the previous law, the Design registration was granted only for the visual appearance of an article which included shape, configuration pattern, and ornamentation whether in 2 or 3 dimensions. 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 colors as applied to an article, whether in 2 or 3 dimensions or both.

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.

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.

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.

As soon as a Design is registered and is entered in the register, it is to be disclosed to the public. 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.

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, period was 5 years which was extendable for 2 terms of 5 years each.

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.

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

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.

It has increased the quantum of penalty imposed for infringement of a registered design.

A rationale basis for the protection of designs is to reward the designer’s 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.
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# Designs Act 1911
# 2000PTC 920 (Del)
# 81U.S. (14 WALL.)511(S.Ct.,1872)
# IAG Company Ltd. v. Triveni Glass Ltd. 2005 (30) PTC 143
# http://ipindia.nic.in/ipr/design/designs.htm
# Catherine Colston, Principles of Intellectual Property Law, Cavendish Publishing Limited, London.
# AIR 1967 Mad 215
# 2002 (24) PTC 449 [Del]
# (1935) 52 RPC
# www.wipo.int/freepublications/en/general/catalog/wipo_pub_catalog_032007.pdf
# Section 35, Design Act 2000
# Section 7, Designs Act 2000.
# Section 15(1), Copyright Act 1957
# Section 15(2), Copyright Act 1957.
# 2009 (39) PTC 104 Del
# AIR 1973 AP 17
# 1996 PTR 214
# AIR 1968 Cal 109
# 49 RPC 113
# 2001 IPRL 1 Del HC
# Evident from definition of Design under Section 2(d), Designs Act 2000
# Section 44,Designs Act 2000
# Section 7, Designs Act 2000
# Section 11, Designs Act 2000
# Section 47, Designs Act 1911
# Uma Suthersenan ,Design Law :Creativity And Competition.,Intellectual Property Rights A Global Vision,ILI,at 41

The  author can be reached at: akashshah@legalserviceindia.com

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