Intellectual Property Rights Assignment session 2016-17

DR. SHAKUNTALA MISRA NATIONAL REHABILITATION

UNIVERISTY

LUCKNOW

ASSIGNMENT ON

ANALYSIS OF DESIGNS ACT, 2000

(UNDER THE SUPERVISION OF SHAIL SHAKYA)

ASSIGNMENT ON ANALYSIS OF DESIGNS ACT, 2000

SUBMITTED TO: : SUBMITTED BY

SHAIL SHAKYA SHIVAM TIWARI

ASSISTANT PROFESSOR, ROLL NO. 38

FACULTY OF LAW B.COM.LLB (HONS.)

DSMNRU, LUCKNOW 5TH SEMESTER.

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 Intellectual Property Rights Assignment session 2016-17

Acknowledgement
I would like to express my deepest appreciation to all those who provided me the possibility
to complete this project. A special gratitude I give to our teacher whose contribution in
stimulating suggestions and encouragement helped me to coordinate my project especially in
writing of this project.

Furthermore I would also like to acknowledge with much appreciation the crucial role of my
teachers who gave the permission to use all required equipment and the necessary material to
complete the project ”ANALYSIS OF DESIGNS ACT, 2000”. I have to appreciate the
guidance given by other teachers that has improved our presentation skills thanks to their
comment and advices.

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TABLE OF CONTENTS

1. Introduction……………………………………………………………………4
2. Historical background of Design Law………………………………………....5
3. Meaning of design……………………………………………………………..6
3.1 mere mechanical devices…………………………………………………..6
3.2 Eye Appeal………………………………………………………………...7
4. Meaning of article……………………………………………………………..7
4.1 Part of Article…………………………………………………………….. 8
4.2 Proprietor of new and old Designs………………………………………..8
5. Criteria for registration of designs…………………………………………….9
6. Application for registration of designs…………………………………….....10
7. Copyright in designs and duration……………………………………………10
8. Cancellation of registration……………………………………………………11
8.1 Any person interested……………………………………………………..12
8.2 Design……………………………………………………………………..12
8.3 Due to design not new and original………………………………………. 12
8.4 Due to prior registration………………………………………………….. 13
8.5 Due to prior publication…………………………………………………...13
9. Piracy of registered designs…………………………………………………...14
10. Remedies against the piracy of the registered designs………………………..15
10.1 Interlocutory injunction………………………………………………….15
10.2 No injunction…………………………………………………………….16
10.3 Final injunctions………………………………………………………... 16
10.4 Damages………………………………………………………………….16
11. Jurisdiction of the court……………………………………………………….18
12. Miscellaneous…………………………………………………………………18
13. Conclusion…………………………………………………………………….19

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INTRODUCTION-

Design refers to the features of shape, configuration, pattern, ornamentation or composition

of lines or colours applied to any article, whether in two or three dimensional (or both) forms.
This may be applied by any industrial process or means (manual, mechanical or chemical)
separately or by a combined process, which in the finished article appeals to and judged
solely by the eye. Design does not include any mode or principle of construction or anything
which is mere mechanical device. It also does not include any trade mark or any artistic work.

An industrial design registration protects the ornamental or aesthetic aspect of an article.

Designs may consist of three-dimensional features, such as the shape or surface of an article,
or of two dimensional features, such as patterns, lines or color. Designs are applied to a wide
variety of products of different industries like handicrafts, medical instruments, watches,
jewelry, house wares, electrical appliances, vehicles and architectural structures. An
industrial design is primarily for aesthetic features.
In the era of globalization, it is increasingly evident that the competitiveness of any enterprise
depends on its ability to innovate its product and service with an objective to distinguish itself
from its competitors in the market. It is common for manufacturers to capture product market
or create a niche for their product by differentiating, an otherwise similar product (substitutes
in terms of functionality) on the basis of ‘eye appeal’. Even if these products are not perfect
substitutes, the choice of consumers and in turn market demand; may, to a large extent,
depend on the appearance. In this respect, Industrial Designs (ID) have become a significant
element in a product’s value chain.

This allows a high potential and incentive for profitability for business through investment in
ID especially large producers. For such product segments, ‘design’ feature is an essential
component and hence is protected to avoid imitation with an intention of passing off. ID
stand at the junction of artistry and industry and are applicable to many different product
markets and nature of protection may vary from cultural artistic market to a consumer-
oriented general product market. The various arguments extended to seek protection for
design is grounded on the role of designs in maintaining and promoting competition within a
market economy.

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HISTORICAL BACKGROUND OF DESIGN LAW:-

It is significant to note that when the designs law was codified in 1842 and took its modern
day shape, copyright protection had not yet been extended to drawings, paintings and
photographs. This came only twenty years later with the enactment of the Fine Arts
Copyright Act, 1862. Codification of copyright law was nowhere in sight and came only
seventy years later with the enactment of the Imperial Copyright Act, 1911. Until 1883, the
statutes relating to patents, designs and trade marks remained separate. They were combined
in a single enactment by the Patents, Designs, and Trade Marks Act, 1883, which repealed all
the then existing statutes in the three areas. Soon trade marks law parted company and was
separately enacted as the Trade Marks Act, 1905, leaving patents and designs to remain
together.

The Patents and Designs Act, 1907 consolidated the enactments relating to patents and
designs. The first designs legislation enacted in India for the protection of Industrial Designs
was the Patents and Designs Protection Act, 1872. It was enacted to supplement the Act of
1859 passed by the Governor General of India for granting exclusive privileges to inventors
and added protection for Industrial Design. The Act of 1872 was passed to extend similar
privileges to the inventors of “any new and original pattern and design” in British India,
though for a very shorter duration. It included in the term “new manufacture” any new and
original pattern or design, or the application of such pattern or design to any substance or
article of manufacture". The Act, however, left undefined the expression new pattern or
design. The Inventions and Designs Act, 1898, which consolidated and amended the law
relating to the protection of inventions and designs contained provisions relating to designs in
a separate part. The (British) Patents and Designs Act, 1907, became the basis of the Indian
Patents and Designs Act, 1911.

The provision relating to patents under the Indian Patents and Designs Act, 1911, were
repealed by the Patents Act, 1970 − a post- Independence updation and consolidation of the
patent law. The design provisions of the Indian Patents and Designs Act, 1911 continued,
with some consequential amendments, with the title as the Designs Act, 1911. The new
Designs Act, 2000 has been passed by the Parliament to make the Design Law in India
TRIPS compliant.

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MEANING OF DESIGN:-
Design as per Section 2(d) of the Designs Act, 2000 means only the features of shape,
configuration, pattern or ornament or composition of lines or colour or combination thereof
applied to any article whether 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 or construction or anything which is in substance a mere mechanical
device, and does not include any trade mark, as define in clause (v) of sub-section of Section
2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined
under Section 2(c) of the Copyright Act, 1957.
In Polymer Paper Ltd. vs. Gurmeet Singh and Others1 , the Delhi High Court held that the
industrial drawings and designs in which copyright was claimed were for purpose of
manufacturing of filter related machines or components and as such clearly fell within the
meaning of design as defined in the Designs Act, 2000. Since the design was not registered
under the Designs Act, the plaintiff could not claim copyright therein.

WHAT ARE NOT DESIGNS:-

As stated in the definition of the design above, design does not include:

(i) any trademark, as defined in Section 2(zb) of the Trademarks Act, 1999, or
(ii) any property mark, as defined in Section 479 of the Indian Penal Code, 1860, or
(iii) any artistic work, as defined in Section 2(c) of the Copyright Act, 1957.

[Artistic Work means

(i) A painting, sculpture, drawing (including a diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work possesses artistic quality.
(ii) Any work of architecture i.e. any building or structure having an artistic character or
design or any
mode for such building or structure.
(iii) Any work of artistic craftsmanship (Section 2(c)).

1
2002(25) PTC 327 (Del.)

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An illustrative list of non-registrable designs is as under:

 book jackets, calendars, certificates, forms and other documents.

 dress making patterns, greeting cards, leaflets, maps and plan cards.
 post cards, stamps and medals.
 labels, tokens, cards and cartoons.
 any principle or mode of construction of an article.
 mere workshop alterations of components of an assembly.
 mere change in size of article.
 flags, emblems or signs of any country.
 layout designs of integrated circuits.

MERE MECHANICAL DEVICE:-

A mere mechanical device or functional design is not registrable. While pattern or an
ornament would ordinarily be applied to an article; shape and configuration becomes the
article itself. Design in that sense relate to the non- functional feature of the article.
Therefore, by necessary corollary, a design which has functional attributes cannot be
registered under Designs Act. This is the essence of the section 2(d) of the Designs Act. The
protection under the Designs Act is granted only to those designs which have an aesthetic
value or otherwise appeal to the eye. There may be however cases where the designs while
fulfilling the test of being appealing to the eye is also functional.
In Fishers Stoves Inc. v. All Nighters Stoves Works Inc. 2 the defendants were held not to be
guilty of the infringements of the plaintiff’s design, as it was a functional one since plaintiff’s
advertisement emphasized the functional nature of the features.

EYE APPEAL:-
The eye alone is to be the judge of identity for the purpose of deciding whether a particular
design has been anticipated or not by another has long been settled law. The design should be
protected provided it was not merely an analogous and that the test of novelty is the eye of
the judge who must place the two designs side by side and see whether the one for which
novelty is claimed is new.

2
206 USPQ 961

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In relation, however, to an assessment of whether a particular shape or configuration satisfies

the former and positive part of the definition, the fact that the important part of the very
purpose of the finished article is to the eye cannot be ignored…. One starts with the
expectation of eye-appeal, for part of the very purpose of the article is to have eye-appeal.
You have to design so that the article in question will make an immediate visual appeal to a
child or to the parent or other person buying for a child.

MEANING OF ARTICLE:-
A Design id applied to an article. “Article” is defined to mean under the Act as any article of
manufacture and any substance, artificial, or partly artificial and partly natural. Article also
includes any part of an article capable of being made and sold separately.3

PART OF ARTICLE:-

An article must be capable of being made and sold separately in the sense that the article has
a commercial identity in the market of its own and not when incorporated as a part of another
article.
In Marico Limited v. Raj oils Mills Limited,4 the court observed that the phrase “capable of
being sold and made separately” covers the cases not only that an article upon which a design
article can be made but also can be sold separately. Therefore, such articles which is separate
from the other parts of the goods and registered separately as a design, if intended and or
desired by the proprietor of the registered article, as capable of being made and sold, is
saleable in the market separately. Therefore it is registrable under the Act.

PROPRIETOR OF NEW AND OLD DESIGNS:-

‘Proprietor of a new or original design’ has been defined in section 2(j) of the Designs Act.
I. Proprietor of design means the author of the design.
II. Where the author of the design executes the work for some other person for good
consideration, the person for whom the design is so executed shall be the proprietor of
that design.

3
Section 2(a), Designs Act, 2000
4
2008 (37) PTC 109 (Bom)(DB) at p. 113

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III. Where any person acquires the design, or right to apply the design to any article,
whether exclusively or non- exclusively, the proprietor of the design is that person to
the extent in and to which the design or right is acquired.
Proprietor of a new or original design also includes any person on whom the property in the
design or the right to apply the design has devolved from the original proprietor.

CRITERIA FOR REHISTRATION OF DESIGN:-

Section 4 of the act relates to prohibition of registration of certain designs. A designs
qualifies for registration only if –
• Be new or original
• Not be disclosed to the public anywhere by publication in tangible form or by use or in any
other way prior to the filling date, or where applicable, the priority date of the application for
registration.
• Be significantly distinguishable from known Designs or combination of known designs.
• Not comprise or contain scandalous or obscene matter.
• Not be a mere mechanical contrivance.
• Be applied to an article and should appeal to the eye.
• Not be contrary to public order or morality.
The Register of Designs is a document maintained by the Patent Office, Kolkata as a
statutory requirement. It contains the design number, date of filing and reciprocity date (if
any), name and address of proprietor and such other matters as would affect the validity of
proprietorship of the design such as notifications of assignments and of transmissions of
registered designs, etc. and it is open for public inspection on payment of prescribed fee and
extract from register may also be obtained on request with the prescribed fee.
Any person who desires to register a design is required to submit the following documents to
the Design Wing of the Patent Office at "Intellectual Property Office", CP-2, Sector V, Salt
Lake, Kolkata - 700 091 or any of the Branch Offices of the Patent Office at Delhi, Mumbai
and Chennai. The applications received by the Branch Offices will be transmitted to the Head
Office for processing and prosecuting.
I. Application duly filed in on the prescribed form (Form-I) along with the prescribed fees,
stating name in full, address, nationality, name of the article, class number, address for
service in India. The application should also be signed either by the applicant or by his
authorized agent.

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ii. Representation (in quadruplicate of size 33 cm x 20.5 cm with a suitable margin) of the
article. Drawings \ sketches should clearly show the features of the design from different
views and state the view (e.g. front or Side).
iii. A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark,
work, letter, numerals should be endorsed on each representation sheet which should be duly
signed and dated.
iv. Power of attorney (if necessary).
v. Priority documents (if any) in case of convention application claimed under Section 44 of
the Designs Act, 2000.

APPLICATION FOR REGISTRATION OF DESIGNS:-

An application for registration of design shall be made to the Controller of Designs. The
Controller of Designs may register a design, on the application of its proprietor, provided it is
new or original, and has not been previously published in any country and which is also not
contrary to public order or morality.5 The Controller shall before such registration, refer the
application to an examiner for an examination as to whether such design is capable of being
registered and consider the report of the examiner.
The application is to be made in the prescribed form and is too accompanied by the
prescribed fee. The application shall be filed in the Patent Office. An incomplete application
shall be deemed to have been abandoned.
A design is to be registered in not more than one class. The Controller may decide in the case
of doubt as to the class n which a design ought to be registered. The Controller may refuse to
register any design, if he thinks fit. However, in such a case the aggrieved person may appeal
to the High Court.

COPYRIGHT IN DESIGN AND DURATION:-

The registration of a design confers on the registered proprietor, copyright in the design for
the period of ten years from the date of registration. If, before the expiry of the said ten years,
application for the extension of the period of copyright is made in the prescribed manner to
the Controller, the Controller shall, on the payment of prescribed fee, extend the period of
copyright for a second period of five years from the expiration of the original period of ten

5
Section 5, Designs Act, 2000

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years. The total duration of copyright in design shall not exceed 15 years. After 15 years, the
design will fall in public domain and will become public property.6
The registration of a design confers following rights on the registered proprietor of design:-
i. The exclusive right of the purpose of sale 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 for sale,
any article in any class of goods in which the design is registered and having applied
to it that design.
iii. The exclusive right to publish or expose, or caused to be published or exposed for sale
, any article in any class of goods in which the design is registered to which such
design is applied.7
In Parle Products Private Limited vs. Surya Food and Agro Limited8 the court observed that
the Designs Act, unlike the Copyright Act, gave monopoly protection in the strict sense of the
word rather than mere protection against copying as under the Copyright Act and thought
there was area of overlap between the Copyright Act and Design Act, the two act did not give
coterminous protection as regards the subject-matter.

CANCELLATION OF REGISTRATION:-

The registration of a design may be cancelled at any time after the registration of design on a
petition for cancellation in form 8 with a fee of Rs. 1,500/-to the Controller of Designs on the
following grounds:

1. That the design has been previously registered in India or

2. That it has been published in India or elsewhere prior to date of registration or
3. The design is not new or original or
4. Design is not registrable or
5. It is not a design under Clause (d) of Section 2.

6
Section 11, Designs Act, 2000
7
Section 22, id.
8
2009 (40) PTC 638 (Mad)(DB) at p.648

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ANY PERSON INTERESTED:-

A petition for the cancellation of registration of a design may be presented to the Controller
by “any interested person”. the Delhi High court in Western Engineering Company vs. M/S
America Lock Company, 9
held that “it is plain from the facts on record that M/S America
Lock Company is a person interested in the cancellation of the respondent’s deisgn for the
simple reason that itself holds a registered design for a similar lock and is also a manufacturer
of a similar lock.

DESIGN:-

The term “Design” used in the aforesaid grounds for the cancellation of registration must be
understood to mean “substantially the same design”. In Western Engineering Co vs. Paul
Engineering Co. 10 the petitioner succeeded in getting the respondent’s registered design for a
cycle lock cancelled on the ground that the design was the same as its registered design for
cycle locks, that the design had been previously published, and that the design was not new or
original. Though were some differences between the two designs, the court, however, was of
the opinion that those were not significant having regard to the substantial similarities
between the two.
The eye and the aye alone, as section 2(5) of the 1911 Act (section 2 (2) of the 2000 Act)
says, is to be the judge of the identity, and to decide whether one design is or is not an
anticipation.

DUE TO DESIGN NOT NEW OR ORIGINAL:-

In Simmons vs. Matheson and Co. Ltd.,11 the plaintiff as owner of a registered design for the
shape and pattern of the body of a children’s carriage, brought an action against the
defendants for alleged infringement. The defendants while denying infringement alleged that
the plaintiffs registered design was invalid by the reason of anticipation and they established
at the trial that they had produced the style of perambulators of which the plaintiff
complained independently in general outline to those made by the plaintiff in accordance
with his design.

9
ILR (1973) Del. 178
10
AIR 1968 Cal 109.
11
(1911) 28 RPC 486

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That trial Judge held that inasmuch as the defendants had produced independently something
bearing some resemblance to the plaintiff’s registered design., but different as much
therefrom as the plaintiff’s differed from any of its predecessors, there was not enough
novelty in the plaintiff’s design to sustain his registration as a new and original design
without at the same time deciding that the defendants article was so different as not to
infringe that there was no infringement. The court of Appeal upheld this view holding that the
design was not new and original and that the registration was invalid. The court of Appeal,
however, held that the registration was invalid there had been no infringement.

DUE TO PRIOR REGISTRATION:-

Under Design Act, 2000 specifications, drawings and demonstrations in connection with
registration of a design do not per se constitute publications which prohibit future registration
of that design. Had publication of design specifications by a registering authority, particularly
in a foreign country, in connection with registration of a design, in itself, amounted to prior
publication, that would have hit all future applications in India would not separately have
been made a ground for cancellation of registered design. Moreover, it is significant that
parliament consciously made publication in a country other than India a ground of
cancellation, in addition to publication India, but expressly restricted the embargo of prior
registration to registration in India. Registration in a country other than India has not been
made a ground for the cancellation of a registered design.12

DUE TO PRIOR PUBLICATION:-

The term ‘published’ used in section 19 or section 4 of the Design Act, 2000 has not been
defined anywhere in the Act. It has different meanings in different contexts. The design is
published it is no longer a secret. There is publication if the design has been disclosed to the
public or public has been put in possession of the Design. The publication did not mean that
every member of the public should posses the knowledge and it was sufficient if there was
publication and the knowledge was available to member of the public.
There will be publication if the knowledge was either (i) available to members of the public;
or (ii) shown and disclosed to individual member of the public who was under no obligation
to keep it secret. It is not necessary that the design should have actually been used. There will
be publication if it is shown that it was known to the public without ever having actually put

12
Gopal Glass Works Limited vs. Assistant controller of Patents &Designs, 2006 (33) PTC 434 (cal) at p. 444

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into use. Thus publication may be of two types: (a) publications in prior documents; and (b)
publication by prior user.13

PIRACY OF REGISTERED DEISGN:-

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.

In Kestors Ltd. Vs. kempat Ltd.14 It was held that where a registration has been made in
respect of a design which lacked novelty or originality on the ground that the design was a
mode or principle of construction or a mechanical device or on other grounds, there cannot be
any infringement of the copyright.

Fraudulent/Obvious Imitation:

A distinction is made between fraudulent and obvious imitation. The only common factor
between the two is that both should be imitations. Thus even in the case of fraudulent
imitation the design applied must be an imitation of the registered design. In a fraud the

13
A.D. Russell Clarke, Copyright In registered Design,4th edn., Sweet & Maxwell, London, 1968, pp. 41-42
14
(1936) 53 RPC 139

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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. Where, therefore, fraudulent
imitation is established even if the imitation is rather clumsy and not obvious, the Court will
declare it as an infringement of copyright in the design. There must be exact duplication, an
imitation of the registered design. Nothing less than imitation is sufficient to establish piracy.

Fraudulent imitation must mean if a man knowing that the pattern is a registered design, goes
and imitates it, and does that without sufficient invention on his own part, which would be
fraudulent imitation, if in fact it is an imitation (an exact copy of the registered design).

REMEDIES AGAINST THE PIRACY OF THE REGISTERED DESIGNS:-

The judicial remedy for infringement of a registered design recommended in the Act is
damages along with an injunction. Section 22(2) stipulates remedy in the form of payment of
a certain sum of money by the person who pirates a registered design. A suit in the
appropriate manner for seeking the relief in the form of an injunction is also recommended.

INTERLOCUTORY INJUNCTION:-

The plaintiff may seek Interlocutory Injunction under rules 1 and rules 2 of Order 39 of the
Code of Civil Procedure (CPC) during the pendency of the infringement suit.

The plaintiff must take 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. Vs. Faridabad Gas Gadget P. Ltd.15 Held that the court would not grant
an interlocutory injunction unless satisfied that there is a real probability of the plaintiff
succeeding on the trial of the suit.

Under order 39 of the CPC, jurisdiction of the court to grant the order of temporary
injunction or to interfere with an order of interlocutory injunction was purely equitable. The
grant of Ad Interim Injunction is purely within the discretion of the court. The Discretion is,
however, is to be exercised in accordance with the sound Judicial principles. The Principles
of law applicable to the grant of ad interim injunction are well settled.

15
2001 PTC 23 (Mad.)

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NO INJUNCTION:-

Injunction is not to be granted where plaintiff does not go to the court with clean hands.
Where the plaintiff suppresses the material facts, the court may refuse to exercise its
discretionary power of grant of interim injunction. A litigant, who approaches the court, is
bound to produce all the documents executed by him which are relevant to the litigation. If he
withholds a vital document in order to gain advantage on the other side then he would be
guilty of playing fraud on the court as well as on the opposite party.

FINAL INJUNCTINS:-

If the plaintiff succeeds at the trial in establishing infringement of his registered design, he
will normally be entitled to a permanent injunction to restrain future infringement because
there is always a possibility of the recurrence of such infringement. The object of granting
injunction is to prevent such recurrence and restore the status quo.

In exceptional cases, however, if it can be definitely shown that there is no such likelihood of
any recurrence, then an injunction may be refused. Thus, an injunction was refused, even
though infringement was proved, as the defendants had only use the infringing article on one
occasion, five years previous to the action, and had ever since abandoned its use, as they
found it did not work satisfactorily. On the other hand, even if there is no infringement the
court may grant an injunction if it is shown that the defendant had the intention of infringing
or had threatened to infringe.

DAMAGES:-

The plaintiff in an infringement suit is entitled to recover damages where he establishes

infringement. The measure of the damages is the loss caused to the plaintiff by the
defendants’ wrongful conduct. A practical method of assessing damages is to assess them on
the basis of a reasonable royalty upon all infringing articles made and sold by defendant.
Alternatively, damages may be assessed to compensate plaintiff for the loss of sales suffered
by him on account of the sale of the infringing articles by the defendant, or other damage
caused to him thereby, e.g. reduction in price.

However, the plaintiff cannot recover damages or penalty for infringement if he has failed to
mark his articles in the prescribed manner denoting that the design was registered, unless he

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shows that he took all steps to ensure the marking of the article or that the defendant knew or
had received notice of the existence of the copyright at or before the time the infringement
took place.

JURISDICTION OF THE COURT:-

A suit under section 22 is to be instituted in a District Court or a High Court depending upon
the quantum of damages claimed. The provisions of this section do not exclude action for
passing off and for rendition of accounts. A person complaining infringement of his design
can certainly ask for accounts from the defendant to show the profits earned by the defendant
which would be the loss sustained by him which he could claim as damages. A suit for
injunction restraining infringement of registered design and for rendition of accounts is,
therefore, maintainable only when filed in the appropriate court.

In S.S Products of India vs. Star Plast 16 the defendant was not a resident of Delhi. There was
no registered office of the plaintiff shown to be in Delhi. It was not even prima facie
established that defendant had been indulging in massive sale at Delhi so as to indicate that
he was carrying on business at Delhi. No cause of action was shown to have arisen within the
jurisdiction of courts at Delhi. The court held that civil courts at Delhi had no jurisdiction to
entertain the suit.

MISCELLANEOUS:-

The exclusive right conferred on a design is termed as copyright in design. This should not be
confused with exclusive right granted for literary and artistic work also termed a copyright in
the literary and artistic work. There may be certain designs which can qualify for registration
under both the Designs Act and the Copyright Act. Copyright in an industrial design is
governed by the Indian Designs Act 2000.

If a design is registered under the Designs Act, it is not eligible for protection under the
Copyright Act.17 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

16
2001 PTC 835 (Del.)
17
S. 15(1) of the Copyright Act 1957.

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 Intellectual Property Rights Assignment session 2016-17

his license by any other person.18 It would, therefore, follow that those industrial designs
which are not registerable 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.

A design capable of being registered means a design possessing when they were made those
essential characteristics which qualify them as designs. If such designs are, at that time, used
or intended to be used for the purposes of industrial reproduction, they are not to qualify for
Copyright under the Copyright Act.19 There is an overlapping area of the applicability of the
Designs Act and the Copyright Act but they cannot be applied at the same time for protection
of the same subject-matter.

CONCLUSION:-

An industrial design is the ornamental or aesthetic aspect of an article. The design may
consist of three dimensional features, such as the shape or surface of an article, or of two-
dimensional features, such as patterns, lines or colour. The Designs Act of 1911 is now
replaced by the Designs Act, 2000. The new Act complies with the requirements to TRIPS
and hence is directly relevant for international trade. Industrial Design law deals with the
aesthetics or the original design of an industrial product. An industrial design to be
protectable must be new and original. The total time of a registered design is 15 years.
Initially the right is granted for a period of 10 years, which can be extended, by another 5
years. 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. A design is not eligible registration if it (a) is not new or original;
or (b) has been disclosed to the public any where in India or in any other country by
publication in tangible form or by use 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) comprise or
contains scandalous or obscene matter.

The registration of a Design may be cancelled at any time after the registration of the Design
on a petition for cancellation in Form 8, along with the prescribed fee. A proprietor shall have

18
S.15 (2) of the Copyright Act 1957.
19
Interlego v. Tyco [1988] RPC 343.

ANALYSIS OF DESIGNS ACT, 2000 Page 18

 Intellectual Property Rights Assignment session 2016-17

no right to institute a suit or proceeding in respect of piracy of design or infringement

copyright, which has been committed between the date on which the design ceased to have
effect and the date of restoration of the design. Piracy of a Design means the application of a
design or its imitation to any article belonging to the class of articles in which the design has
been registered for the purpose of sale or importation of such articles without the written
consent of the registered proprietor. A registered proprietor can institute a suit for injunction
as well as recovery of damages against any person engaged in piracy of the registered design.

ANALYSIS OF DESIGNS ACT, 2000 Page 19

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BIBLIOGRAPHY/ REFERNECE

Books

 Designs act ,2002

 Intellectual Property Rights (Singhal law Publication)

 Ahuja, V.K. law relating to intellectual property rights ( Lexisnexis) student

edition

Web Sources

1. www.justicusindia.blogspot.in

2. www.lawyersclubindia.com

3. www.legalservicesindia.com

ANALYSIS OF DESIGNS ACT, 2000 Page 20