Introduction

“No thief, however skilful, can rob one of knowledge, and that is why knowledge is the best and
safest treasure to acquire.” 
― L. Frank Baum
Intellectual Property Rights play an important role in establishing a secure and incentive-based
system to ensure protection to the creators, inventors and innovators for the labor and assets that
have been invested in the creation of the intellectual property. Intellectual Property can be
defined as that intangible property that is a result of the creativity and efforts of a man for which
he may seek an exclusive right to control, use and an ability to conceive profits from.
There are several forms of Intellectual Property Rights that may be granted based on the article
that is sought to be protected. Some of these forms of IPR are:
1. Patent
2. Copyright
3. Trademark
4. Industrial Design
5. Geographical Indication
Of these, patents, copyrights and trademarks are well known and deal with utilitarian invention;
creative and artistic works and the rights over symbols, words etc. in respect to a business or
person respectively. There is another important form inf intellectual property right which is not
widely known and holds an important place in the form of Industrial Design.
The industrial design recognizes the creation new and original features of new shape,
configuration, surface pattern, ornamentations and composition of lines or colors applied to
articles which in the finished state appeal to and are judged solely by the eye.
The main features of a design seeking protection as Industrial Design are:
a) Feature of shape, configuration, pattern, ornament or composition of lines or colors
applied to any article.
b) The article must be in two-dimensional or three-dimensional form.
c) Feature must be applied to an article by some industrial process or means which is
manual, mechanical or chemical, either separately or combined.
d) The finished article mut appeal to the eye.
e) It does not relate to the features which are dictated by utility or function. This implies that
a mere mode or principle of construction or anything which in substance is a mere
mechanical device cannot be granted industrial design protection.
f) It is not applicable to ‘trademark’, ‘property mark’ or ‘artistic work’ as these have
distinct protections granted under other forms of IPR.
These features must be evaluated comprehensively and not conditionally since the failure to
match any one of them would render the article incapable of being granted the protection.
Design protection is therefore, granted based on appearance of the article. It depends on the
physical attributes that are concerned with the features that impart an aesthetic appeal to the eye
in order to enhance the value and marketability of the article. Mere utilitarian functions are
excluded from the grant of industrial design.
Industrial Design has an important position as it is something we encounter daily. The design of
your shoes, the ornamentation on the bottle-cap, the curves of cars, the texture of a pen are all
covered under Industrial Design. It is necessary to therefore, take all necessary steps to ensure
the protection of the same and raising awareness amongst proprietors is even more important
since the lack of awareness in the field often leads to the theft of design which leads to
infringement.
Industrial Design and International Legal Framework
There are several international treaties and conventions that have led to the establishment of a
cohesive design law regime at an international level, which has further bolstered the growth in
the municipal laws of several countries with respect to design law.
Some important conventions and treaties in this regard are:
1. Hague Agreement Concerning the International Registration of Industrial Designs:
The Hague Agreement governs the international registration of industrial designs. It
was adopted in 1925, the agreement has effectively established an international
system- The Hague System which allows industrial designs to be protected in
multiple countries or regions with minimum formalities, thus, promoting and
simplifying the protection.1
2. Locarno Agreement Establishing an International Classification for Industrial
Designs
The Locarno Agreement established a classification for industrial design. This is
known as the Locarno Classification and is either directly used or adopted into the
municipal laws of the Contracting States. It was adopted in 1979. The competent
offices of the Contracting States must indicate in official documents reflecting the
deposit or registration of industrial designs, the number of the classes and sub-classes
of the Classification to which the goods incorporating the designs belong. This must
also be done in any publication in the office issue in respect of the deposit or
registration of the industrial designs.2
3. Paris Convention for the Protection of Industrial Property
The Paris Convention applies to industrial property in the widest sense, and, includes
all major forms of IP Protection. It was adopted in 1883. This was the first major
international step taken to help creators ensure that their intellectual works were
protected in other countries.3 Its has laid down in respect to industrial designs that
they must be protected in each Contracting State, and protection may not be forfeited
on the ground that articles incorporating the design are not manufactured in that State.
4. Convention Establishing the World Intellectual Property Organization
The WIPO Convention is the constituent instrument of the World Intellectual
Property Rights Organization (WIPO). It was adopted in 1967. WIPO is an
intergovernmental organization that is a part of the United Nations system. It is not
the first organization to govern intergovernmental activities with respect to IPR since
both, the Paris Convention and Berne Convention call for the establishment of an
“International Bureau”. The two bureaus constituted under the two conventions were
1
https://www.wipo.int/treaties/en/registration/hague/
2
https://www.wipo.int/treaties/en/classification/locarno/
3
https://www.wipo.int/treaties/en/ip/paris/
 merged in 1893 and were replaced by WIPO in 1970 when the WIPO Convention
was enforced.4 WIPO plays an important role in facilitating and governing the various
facets of Intellectual Property Protection at an international level helping the
Contracting Parties to share information and maintains registers for the ease of
examinations of various applications.

4
https://www.wipo.int/treaties/en/convention/
Industrial Design Law in India
India has developed a comprehensive and established structure for the protection of industrial
designs. The laws enacted have helped create a set of criteria for protection which are prescribed
in law and are complicit to all international standards and systems. The industrial design
protection regime is a well drafted and extensive set of laws which has evolved in due course.
History of Industrial Design Laws in India
India has a long history of laws governing design which spans over the course of British
occupation of India and the modernized 21st century legislations.
Pre- Independence Laws:
1. The Patterns and Designs Act of 1872
The Patterns and Design Act of 1872 was the first legislation enacted to govern Industrial
Design Law in India. It gave a definition of new manufacture to incorporate any new or
original pattern, design, the application of such pattern, the design to any substance,
articles of manufacture and multiple other articles and inventions.5
2. The Inventions and Designs Act of 1888
The Act replaced The Patterns and Designs Act of 1872. It was a mere duplication and
duplication of the British model and legislation which had been enacted in the United
Kingdom for governance on matters of Design Law. 6
3. The Patent and Designs Act, 1911
The Act of 1911 nullified and replaced all prior laws that had been enacted for
governance of Industrial Designs in India. A major accomplishment of the act was the
establishment of the new, separate Office for the execution and control of laws relating to
design. This led to a unification and integration of the registration, administration and
information under one office and made the procedure for obtaining protection simplified,
steady and uniform.7
4. The Patent and Design Rules, 1933
The Rules were formulated and enacted to handle the practice of registration and aid in
effectively administering the provisions of the Act of 1911. 8
The Act of 1911 continued to be in force for almost a century with appropriate amendments
made by the British Parliament and post-independence, the Indian Parliament to ensure the
smooth and effective execution of Industrial Design Laws in India.
Post-Independence Laws:
5
http://intenseip.com/blog/history-of-indian-industrial-design-law/
6
Ibid.
7
Ibid.
8
Ibid.
 1. Indian Designs Act, 2000
The Indian Designs Act was enacted to reinforce the law relating to the protection of
designs and to apply and execute the provisions of the TRIPS Agreement. It was passed
by the Parliament in 2000 but, came into force on May 11, 2001 to replace the old law of
1911. It provided more effective protection to the registered designs and encouraged
design activities. In addition, it grants an exclusionary right of selling, licensing,
assigning and using the protection in any article to the proprietor of the registered design.
2. Design Rules, 2001
The Design Rules, 2001 were enacted in 2001 and came into force on May 11, 2001. The
Rules helped compliment the provisions of the Act and ensure that proficient execution
and protection of Industrial Designs in India. The Rules were amended in 2008 and 2014,
with the latest amendment incorporating a new category of applicant as small entry in
addition to natural person and other than small entity.9

Design Protection in India

Indian Design Act, 2000, is a complete code that grants complete statutory protection to
registered Industrial Designs in India. It grants protection to articles which seek protection for
appearance and not those that seek protection of utility. The key factor in assessing the capability
of an article to be registered is the appeal to eye. The features in terms of shape, alignment, color
or patterns on the finished product must appeal to and be judged solely by the eye. The features
of the design should be such that they add value to the product and increase its marketability. A
drawing indicating the method of construction which can be understood and deciphered only by
the eye of a person trained in the field cannot be a registrable design.
Process of Registration:
1. Who can Register?
The Act has laid down in Section 5(1) that any person who claims to be the proprietor of
any new or original design may apply for registration if he is Indian or citizen of a
convention country.
Proprietor has been demarcated in Section 2(j) of the Act. Proprietor may be:
i. An author of the design
ii. A person for whom the design is executed after receiving the
consideration
iii. A person who has acquired the design
iv. A person on whom the design has devolved from the original proprietor
2. Where is the Application made?

9
http://www.ipindia.nic.in/designs.htm
 A design application for registration must be filed at the Patent Office and addressed to
the Controller of Design. The application is made with the submission of the prescribed
form along with the prescribed fee.
3. Application
a. The process of application requires the submission of Form 1 as under Section
5(2) and must include:
i. Full Name and Address of Applicant
ii. Name of the Article
iii. The Class to which the Article belongs as per Schedule III of Design
Rules, 2001
iv. Address for service in India
v. Application shall be signed either by the applicant or through his legal
representative
vi. Four Copies of the representation of the design shall be filed along with
the application.
b. Representation Sheet
The representation sheet is made as per Section 5, Rule 11, 12 and 14 and
include the exact representation of the article for which registration is
sought.
i. Representation shall be exact drawings, photographs, tracing, computer
graphic design or specimen of design.
ii. Photographs from top, bottom, left, right and perspective views.
iii. Representation shall depict the various arrangements in which the given
article will apply if protection is sought for a set.
iv. A statement of novelty and disclaimer (if any) in respect of mechanical
action, trademark, word, letter, numerals should be endorsed on each
representation sheet
v. Dimensions or engineering symbols etc. shall not be used in the
representation sheet. The representation is not to be regarded as
engineering drawing of the article. The relevant parameter is the shape and
not the size of the article
vi. No extraneous matter or background shall appear in the representation
sheet. A background is considered neutral as long as the design is clearly
visible in it
vii. Representations shall ordinarily be prepared in one format e.g. drawings,
graphics or photographs etc. However, for better clarity, if the applicant so
desires, a representation may be given in different formats
viii. The applicant shall keep in mind the requirements of an Examiner to
visualize the design and distinguish the same from any probable prior art.
The number of views required in a representation sheet may be decided in
light of this requirement.
 c. Classification
The Locarno Agreement provided a uniform set of classification that must be
followed by all contracting countries. The Indian Parliament in its enactment of
the Design Rules, 2001 provided for the creation of the classes for the purpose of
registration of designs. The Schedule III of the Design Rules, 2001 provides 32
classes of articles along with Class 99 or the Miscellaneous Class. In case of
doubt as to which category an article would fall under, the Controller of Design
would decide the question. In cases where the article falls under multiple distinct
classes, separate applications must be made for the registration in order to grant
the different aspects of the article specific protection.

Types of Applications:
1. Ordinary Application: An application which does not claim priority. Thus, such
application is filed with priority in India.
2. Reciprocity Application: An application that is made to claim priority from an already
filed application in a Convention Country and being filed in India within six months
from the date of filing in the country of origin.
I. The period of six months is non-extendable. Section 44 and Rule 2(d) lay
down the rule regarding the same. The requirement for filing of application
for registration of reciprocity application is the same as an ordinary
application under the Act, however, in addition it requires a Priority
Document as per Rule 15.
II. Priority Document: A reciprocity application must be accompanied by a
certified copy of the design application filed in the Convention Country and if
the Document was not filed at the time of application it may be submitted
within an extended period of three months. The extension may be sought by
submission of Form 18 along with the prescribed fee as set by the Patent
Office or law.
Infringement of Industrial Design
It is illegal to apply a registered design or a deceitful or intentional imitation of registered design
to an article or to ingress, publish or expose an article to which such a design has been applied in
the same class of articles in which the design is registered, without seeking appropriate
authorization from the registered owner or proprietor of the design.
However, not every resemblance is applicable and imitation in every form does not mean
duplication. An obvious imitation is one which immediately strikes as being akin to the
registered design to the extent of being close to indistinguishable to the eye. In contrast, the term
‘fraudulent’ presupposes a knowledge of the registered design and an intent to misappropriate
such knowledge.
In such a situation where every imitation may not be termed as infringement, it is necessary to
ascertain the infringement. It may not always be done by placing the two articles side by side and
then evaluating the degree of resemblance but, examination from the point of view of the
consumer who possesses limited knowledge and imperfect recollection must be taken into
account. The main consideration exists in the form of broad features of shape, configuration and
pattern being similar to one another. However, in certain cases, the Courts may also strive to
ascertain substantial differences. All grounds available to a person seeking cancellation may be
adopted as a defense in infringement cases.