Industrial Designs are one of the intellectual property rights just like copyright, trademark, patents and geographical indications. We remember things by the way of how they look, the shape or the pattern imprinted on it. Industrial design protection exactly does the same. It protects the aesthetic value of the product and does not deal with the functional aspect of the product. If what we see pleases us, we usually buy it and that is where designs become important to the businesses and creators. Sometimes the aesthetics of the product becomes the only reason for buying it like decoration items or dresses. The value addition which designs create is in the impact it has on the minds of the consumers. who in turn associate with that businesses’ product. The same if not protected can be duplicated in the market and the deceived customers can lead to profits and loyalty going to another man’s business in the name of the former.
Designs under the Indian law had been governed initially by The Patents & Designs Protection Act, 1872 which provided protection to new and original designs. With the development of time, Patents got separately legislated and when India joined the WTO, it enacted the Design Act, 2000 and the subsequent rules thereunder in order to comply with the TRIPs. With the international developments, the principles encompassed in the Act is that of reciprocity and priority claims. This means that if a person has filed an application in a member country, he can claim priority over other applicants and the date would be same as that of date in the member country.[i] The term of protection for designs is 10 years which is extendable up to 5 more years by making the payment. In India, like many other jurisdictions, classification of designs is based on the Locarno Classification with 32 classes and applications have to be made under these classes separately.
CONCEPT OF DESIGNS UNDER THE ACT
The objective behind bringing in the 2000 Act was to consolidate the laws on design into a single code and protect the creators of original designs from suffering losses through copying. The act works on the foundation of first come first get which means that the person who makes the application first is supposed to be assumed as the right holder. The rights under this act are available only for registered designs and no statutory right or remedy can be claimed in cases of unregistered designs.
The definition section 2 of the act enlists certain important definitions for better implementation. Section 2(d) defines “designs” as “only 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.”[ii] The sub-section also gives a basic about what cannot be considered as designs; any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark[iii], or property mark[iv] or any artistic work[v].
The essentials of designs are that it has to be original or new and no prior publication has happened. The term ‘original’ has been defined under section 2(g) which in relation to designs along with being originated from the author, allows originality in application of old cases. It has to be established that the design has not been in use or published in the public domain. This feature does not only limit publication to be in India but also it should not be in any other country. To claim originality or novelty, the creator has to show that he is the person who has come up with the design which is visually unique.
Another important essential is that, it should be applied on an article. Article under the act is also defined under S.2(a) which includes “any part of an article capable of being made and sold separately.”[vi] This basically means that the design and article must be integrally connected and the article must not only just be a carrier for the design but also have other functions. In Re Littlewoods Pools Ltd Application[vii] beautifully encapsulates the concept where it held that paper as a coupon with some patterns on it cannot be an considered as an article “as the function of the paper was ―solely to carry the imprint of the design.” It went to explain with example that where paper like wallpaper which is used as an enhancer of décor can be considered an article.
Moving on to the next essential is that of judged solely by the eye. As we can understand from the purpose of protecting designs, it is necessary that the design must be visible and noticeable in the article. It has to be judged from the perspective of a common man and the action of infringement of designs is generally due to this reason. Designs are meant to distinguish the creator’s product from that of other available products in the market in terms of how they look. Since visual appeal attracts customers, people try to copy the designs of established companies in order to create a deception in the minds of the people that product belongs to the established companies and pass off their products in this disguise.
INFRINGEMENT OF DESIGNS
In the fast-growing world, everything anywhere can be copied without coming into the knowledge of the original creator. Especially when it comes to designs, they are just a combination of lines or patterns which create the most distinct factor thus can be easily duplicated with slight variations which can go unnoticed by the people causing loss to the proprietor. The registration of design by the first creator therefore gives him a right to stop others from using, selling or publishing the same design without authority.
Since the essentials of a design are very subjective, the rights given to the registered creator/author of the designs can be challenged by a person on the grounds of lack of appeal to the eye or novelty or prior publication. While determining any infringement of designs, the court compares the similarity and differences between the designs. The design can be a duplicate, similar or identical design used unauthorisedly for creating the impression of association with the former company. In the case of Castrol India Limited v. Tide Water Oil Co.(I) Limited [viii] the court led down that, the similarity or difference has to be judged by eye alone, the eye of the purchaser. When the products are seen and it looks like the essential features of both the designs on the products are substantially similar, it does not necessarily have to be identical to be an imitation.
In the recent case of Relaxo Footwears Ltd v Aqualite Industries Ovt. Ltd [ix] the Delhi HC held that the defendants were restrained from using the registered designs of the plaintiff as the designs were deceptively similar which was established by comparing the designs of the both the footwear on the basis of how they looked. Since the plaintiff was a prior user of the distinct designs and had established a prima facie case, the balance of convenience was given to the plaintiff.
The awareness of the protection of designs is growing with time as it is gaining popularity. Fashion designers like Sabyasachi Mukherjee has also filed cases and received favourable remedies for the infringement of lehenga designs which had been registered. Had there been no remedy for imitating the designs of other companies, there would have been nothing to stop the customers from being cheated with a lower quality design being priced at par with the best quality design. The companies have given importance to the aesthetic design of the product before releasing it in the market because the first thing that attracts a purchaser is an appeal to the eye. Where two products are functionally same and priced in a similar manner, the better-looking product will be preferred as the first choice. The Design Protection Act and the rules have clearly defined the scope and advantages and disadvantages which come with the choice of registering a design under the act. The statutory protection is provided to registered proprietors and thus they gain a competitive edge in the market. It is yet to be seen how designs develop alongside other IP rights.
[i] Designs Act 2000, s.44
[ii] Designs Act 2000 S.2(d)
[iii] Trade Marks Act,1999, s.2(zb)
[iv] Indian Penal Code, 1860, s.479
[v] Copyright Act, 1957, s.2(c)
[vi] Designs Act 2000, s.2(a)
[vii] (1949) 66 RPC 309
[ix] 285 (2021) DLT 308
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