5 Designs

Paridhi Saxena
DESIGNS Advocate
Founder & Managing Partner
Taarkik Legal – Advocates &
Consultants
Editorial Director, Lex Explore
© Taarkik Legal, Advocates & Consultants

OBJECT OF REGISTRATION OF
DESIGNS
❖ The essential purpose of design law it to promote and protect the
design element of industrial production.
❖ It is also intended to promote innovative activity in the field of
industries.
❖ The Designs Act, 2000 and the Designs Rules, 2001 presently govern
the design law in India. The Act came into force on 25th May 2000
while the Rules came into effect on 11th May 2001.
❖ The object of the Designs Act to protect new or original designs so
created to be applied or applicable to particular article to be
manufactured by Industrial Process or means.
❖ Sometimes purchase of articles for use is influenced not only by their
practical efficiency but also by their appearance.
MEANING OF DESIGN
THE DESIGNS ACT, 2000
❖ Section 2(d) defines “design” to mean 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.
❖ As a general rule, a design consists of:
❖ 3D features – shape of a product
❖ 2D features – patterns, lines or colour of a product
❖ A combination of one or more such features.
❖ The design much be such that in the finished article the

features of it ‘appeal to and are judged solely by the eye’.
WHAT ARE NOT DESIGNS?
❖ The following are excluded from designs:

❖ any mode or principle of construction
❖ anything which is in substance a mere mechanical device
❖ any trade mark as defined in Section 2(zb) of the
Trademarks Act, 1999
❖ any property mark as defined in Section 479 of the
Indian Penal Code
❖ any artistic work as defined in Section 2(c) of the
Copyright Act, 1957
WHAT ARE NOT DESIGNS?

❖ 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
THE DESIGNS ACT, 2000

❖ A design is applied to an article.
❖ Section 2(a) - ‘Article’
❖ any article of manufacture and any substance, artificial, or partly artificial and partly
natural; and
❖ includes any part of an article capable of being made and sold separately.
❖ Section 2(j) – ‘Proprietor of a new or original design’

❖ Proprietor of design means the author of the design.
❖ 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.
❖ Where any person acquires the design, or the 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.
REGISTRATION OF
DESIGNS
CRITERIA FOR REGISTRATION
❖A design qualifies for registration only if:

❖ It is new or original;
❖ It has not been disclosed to the public;
❖ It is significantly distinguishable from known designs or
combination of known designs;
❖ It does not comprises or contains scandalous or obscene
matter;
❖ Its use would not be contrary to public order or morality/
NEW OR ORIGINAL DESIGN

❖ A design must be completely new – it is invented
or created for the first time and was hitherto
unknown.
❖ Section 2(g) – ‘original’
❖ originating from the author of such design and includes the cases which
though old in themselves yet are new in their application.
❖ The word ‘original’ may mean a new application of

an existing or known design to a new subject-matter.
❖ It may be an existing or known design but has been
applied, to a particular article for the first time.
GAMMETER V. THE CONTROLLER OF

PATENTS & DESIGN
AIR 1919 CAL 887
❖ 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 in tact new. It is a matter of first impression.
❖ The Court upheld the claim to novelty or originality for the registered
design of a metal wrist-band for watches, even though a gold bracelet
of the same shape or configuration worn as jewellery around the
wrist was already in the market several years before the date of
registration of design.
❖ The Court was of the opinion that although the shape of the band was
not new or original, but its application to a watch was for a purpose
so different from and for a use so dissimilar to the purpose and use of
the bracelet that the design in question could be said to be Original.
HAJI SIKANDER SHAH V. MIAN

RAHIM BAKSH
AIR 1940 PTC 72 (DEL)
❖ Where an existing design applied to an article is

subsequently applied to the same article by a new method,
there will be no novelty even if there is a different mode and
principle of construction, but the design itself is exactly the
same.
❖ The court cancelled the registered design of a cap on the
ground that it was the same design used long before the
registration for such caps, though it was applied in a new
manner.
DISCLOSURE OR PUBLICATION OF
DESIGN - EXCEPTIONS
❖ Confidential Disclosure of Design
❖ any disclosure made in breach of faith by someone to whom the
proprietor of the design had disclosed the design in such circumstances
as it would make it contrary to good faith for that person to use or
publish the design.
❖ the acceptance of a first and confidential order for articles bearing a
new or original textile design intended for registration
❖ Display of Design in Exhibition

❖ Three conditions are required to be fulfilled:
❖ It should have been extended to the concerned exhibition by the Central Government
by notification in the Official Gazette.
❖ the exhibitor exhibiting the design or article, or publishing a description of the design,
gives to the Controller previous notice in the prescribed form.
❖ the application for registration of design must be made within six months from the
date of first exhibiting the design or article or publishing a description of the design.
WHO IS ENTITLED TO SEEK

REGISTRATION?
❖ any proprietor who is seeking registration of a design
which is original and unpublished previously in any
country which does not seems to be contrary to any law
and order of that country can file an application for
registration.
❖ Any person who:
❖ is the author of that design
❖ acquired design for a valid consideration and
❖ Any person to whom the design has been devolved from the original
proprietor.
❖ In case there is more than one author than the design

must be applied by the joint authors only.
PROCESS OF REGISTRATION
OF DESIGNS
Numbering & Dating

Filling of of Application Examination
Application
Noncompliance of Communication of
Abandoned Objection (s) Objection (s)
Hearing if Removal of
Refusal objection (s) is Objection (s)
/are contested
Re- Examination
Appeal to Waiving /
High Court removal of Acceptance
Objection (s)
Notification in the
In case of allowance of
Official Gazette
appeal
Issue of Certificate
COPYRIGHT IN
REGISTERED DESIGNS
DURATION
❖ Ten years from the date of registration
❖ May be extended for a further period of five

years
❖ before the expiration of the said ten years, application for the
extension of the period of copyright is made to the Controller in the
prescribed manner
❖ After 15 years, the design will fall in public domain

and will become public property.
NATURE OF COPYRIGHT
PROTECTION IN DESIGNS
❖ Section 2(c) “copyright” means the exclusive right to apply a design to
any article in any class in which the design is registered.
Copyright Act 1957 Design Act 2000
Conferred on the author of an

Conferred on the registered
original literary, musical or
proprietor
artistic work
Exclusive rights to copy or
reproduce along with a
Protects the work from being
monopoly to produce articles
copied or reproduced
of the class in which design is
registered
RIGHTS OF A REGISTERED
PROPRIETOR
RIGHTS OF A REGISTERED
PROPRIETOR
❖ The exclusive right to apply to any article in any class of
articles in which the design is registered.
❖ The exclusive right to import, for the purposes of sale, any
article belonging to the class in which the design has been
registered, and having applied to it the design.
❖ The exclusive right to publish or expose or cause to be
published or exposed for sale any article in any class of
articles in which the design is registered.
CANCELLATION OF
REGISTRATION OF A DESIGN
GROUNDS FOR CANCELLATION
❖ the design has been previously registered in India.

❖ it has been published in India or in any other country prior
to the date of registration.
❖ the design is not a new or original.
❖ the design is not registrable under this Designs Act.
❖ it is not a design as defined under Section 2(d).
PIRACY OF REGISTERED
DESIGN
WHAT IS PIRACY OF DESIGNS?
❖ 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.
❖ Publishing such articles or exposing them for sale

with knowledge of the unauthorized application
of the design to them also involves piracy of the
Design.
REMEDIES AGAINST
PIRACY
REMEDIES
REGISTERED UNREGISTERED
DESIGNS DESIGNS
CIVIL CRIMINAL PASSING-OFF
INJUNCTION DAMAGES FINE
INTERLOCUTORY not exceeding Rs.

25,000/-
PERMANENT
TRADEMARKS VS. DESIGNS
PARTICULARS TRADEMARK DESIGN
A trademark means a mark A design refers to only the

that represents the goods or features of a shape, pattern,
Meaning services provided by an or ornamentation applied to
entity or an individual. It can an article to have a visual
be a logo, word, etc. appeal.
It requires innovation as they
It can be a brand, logo,
are created or designed by
word, phrase or even a
artists or experts. It is not a
sound mark that represents a
Innovation mere representation, and it
product or service. It does
needs to have visual appeal
not require any innovation
to the article for which it is
but must be Unique
applied.
A trademark represents a
A design is an attractive
mark that distinguishes and
pattern applied to a product
Purpose identifies the source of the
to accentuate the product’s
goods or services for the
commercial value.
consumers.
PARTICULARS TRADEMARK DESIGN
Design registration is
Trademark registration is granted only for the
granted to a mark that is features of configuration,
capable of being shape, pattern, or ornament
Registration represented graphically and applied to an article
distinguishes the goods or manufactured by any
services of one entity from industrial process or means
another. that appeals to and is
judged solely by the eye.
The Trademarks Registry
The Patent Office provides
Authority provides trademark
the design registration.
registration.
Trademark registration is
Design registration is
granted for ten years that
granted for ten years that
Renewal can be renewed for another
can be renewed for five
ten years after submitting
more years
the trademark renewal fees.
ANY QUESTIONS? THANK YOU!

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Paridhi Saxena

© Taarkik Legal, Advocates & Consultants

❖ Section 2(d) defines “design” to mean only the features of

❖ The design much be such that in the finished article the

WHAT ARE NOT DESIGNS?

❖ The following are excluded from designs:

WHAT ARE NOT DESIGNS?

THE DESIGNS ACT, 2000

❖ Section 2(j) – ‘Proprietor of a new or original design’

❖ Proprietor of a new or original design also includes any person on

CRITERIA FOR REGISTRATION

❖A design qualifies for registration only if:

NEW OR ORIGINAL DESIGN

❖ The word ‘original’ may mean a new application of

GAMMETER V. THE CONTROLLER OF

HAJI SIKANDER SHAH V. MIAN

❖ Where an existing design applied to an article is

❖ Display of Design in Exhibition

WHO IS ENTITLED TO SEEK

❖ In case there is more than one author than the design

Numbering & Dating

❖ May be extended for a further period of five

❖ After 15 years, the design will fall in public domain

Copyright Act 1957 Design Act 2000

Conferred on the author of an

GROUNDS FOR CANCELLATION

❖ the design has been previously registered in India.

WHAT IS PIRACY OF DESIGNS?

❖ Piracy of a design means:

❖ Publishing such articles or exposing them for sale

CIVIL CRIMINAL PASSING-OFF

INJUNCTION DAMAGES FINE

INTERLOCUTORY not exceeding Rs.

PARTICULARS TRADEMARK DESIGN

A trademark means a mark A design refers to only the

PARTICULARS TRADEMARK DESIGN

© Taarkik Legal, Advocates & Consultants

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