Salient Feature Of Design Act 2000:

The Design Act in India protects only those Design, which are solely appealed by eye or in other word, the Design which are aesthetic in Nature are protectable in India. Earlier the Design Law in India was governed by Design Act 1911. There has been considerable growth in the area of science and technology since the enactment of the Design Act, 1911. It was also felt that a better legal system is required to ensure effective protection of a registered Design.

The enactment of new act was also necessary in order to bring the India Design Law at par with the International Law. The Design Act 1911 has been repealed and replaced by Design Act 2000. Presently the Law pertaining to Design in India is governed by Design Act 2000.

Why Owner Of A Design Should Be Vigilant About Protecting The Design:

The design is the aesthetic features applied to an article and hence it becomes major force to attract the consumer attraction. The Design of an article has tremendous marketing value. The Industrial Design is business assets of a company. The design of an article increases the competitiveness of the Company in the market.

The owner of a design should be very much vigilant as the pirates in the market may seriously jeopardize the exclusive right of the Company in its Design. In order to obviate such problem, it is strongly recommended that the Company should get its Design Registered.

Few Of The Relevant Provions Of Design Act 2000

A Design Is Defined In Section 2 (D) Of Design Act 2000, Which Is Reproduced Herein Below:

"Design" means 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; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and 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 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.�

In other words the Design Act 2000 defines a Design as two-dimensional or three-dimensional features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article by any manual, chemical, or mechanical ( separate or combined) industrial process or means, , which in the finished article appeal to and are judged solely by the eye. The Design Act 2000 in India specifically excludes any mode or principle of construction or anything which is in substance a mere mechanical device. The Design Act in India also excludes any trade mark, property mark or any artistic work.

Prohibition Of Registration Of Design:

Section 4 of Design Act 2000.
Prohibition of registration of certain designs.- A design which:

1. is not new or original; or
2. has been disclosed to the public any where in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or
3. is not significantly distinguishable from known designs or combination of known designs; or
4. comprises or contains scandalous or obscene matter, shall not be registered.

Section 4 of the Design Act 2000 provides that the Designs, which are neither new, nor original, or prior published or not significantly different from know designs, or is combination of known designs etc are not registrable within the provisions of Design Act 2000.�

Duration Of Design:

Section 11 of the Design Act 2000.

Copyright on registration:

1. When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.
2. If, 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, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years.

Hence , total year of statutory protection of Registered Design is 15 years (10+5) from the date of Registration.

Legal Right Granted By Design Registration:

Section 22 of Design Act 2000.
Piracy of registered design:

1. During the existence of copyright in any design it shall not be lawful for any person:
   
   1. for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied;

During the period for which the Design is registered, by virtue of Design Registration, the Registered Proprietor gets the exclusive right to use or apply the design in relation to article for which the design is registered. No other person is entitled to apply the registered design, without consent of the Registered Proprietor.�

Cancellation Of Registered Design:

Section 19 of the Design Act 2000. Cancellation of registration:

1. Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:
   
   1. that the design has been previously registered in India; or
   2. that it has been published in India or in any other country prior to the date of registration; or
   3. that the design is not a new or original design; or
   4. that the design is not registerable under this Act; or
   5. that it is not a design as defined under clause (d) of section2 .

Section 19 of the Design Act 2000, provides the ground for cancellation of registered design , on the ground inter alia, it is neither new, nor original, prior published in India or any other country or is not a Design under the provision of Section 2(d) of the Design Act 2000, i.e. it must be attractive to eye and should not be functional.

Few Of The Relevant Judgments In Design Act 2000:

• A Design In Order To Be Original, Need Not Be New Or Original. The Novelty In Applying The Design To The Product Is Sufficient
  Air 2008 Sc 2520 Bharat Glass Tube Limited Versus Gopal Glass Works Limited.
• The Onus Is On The Complainant To Establish That The Design Is Not Original.
  Air 2008 Sc 2520bharat Glass Tube Limited Versus Gopal Glass Works Limited
• The Imitation And Copying Has Been Defined. The Imitation Need Not Be Replica. The Copying Has To Be Decided By Eye Alone.
  2014 (60) Ptc 155 (Bomb) Whirlpool Of India Limited Versus Videocon Industries Limited.
• Only Because Similar Design Is Registered In Another Country-Does Not Defeat The Right Of The Registered Proprietor In India
  2009 (39) Ptc 104 (Del) (Db) Dabur India Versus Amit Jain
• Functional Designs Are Not Protrcted Under The Design Act.
  1999 (19) Ptc 36 (Del), Escorts Construction Versus Action Construction.

Prior Published Desings Are Not Protected:

• AIR 1985 DELHI 136 M/s Niky Tasha India Pvt. Ltd. V/s M/s Faridabad Gas Gadget
• 2018 (76) PTC 81 (Del) (DB) Aashiana Rolling Vs Kamdhenu Limited
• 2017 (70) PTC 31 (Mad):Maya Appliances Pvt. Ltd. Vs Butterfly Gandhimathi Appliances
• Injunction Granted On The Basis Of Registered Design:
• 1997 (17) PTC 15 (Del) Alert India Vs Naveen Plastics
• 1996(16) PTC 202(Cal) Castrol India Limited Vs Tide Water
• 2016 (65) PTC 364 (Del)Bhatia Enterprises Vs Subhash Arora
• 2016 (67) PTC 286 (Bomb)Selvel Industries Vs Om Plast
• 2014(60)PTC155(Bom) Whirlpool of India Ltd. Versus Videocon Industries Ltd.

For A Defence Of Functionality To Succeed, It Is Not Enough To Say That The Form Has Some Relevance To The Function. If A Particular Function Can Be Achieved Through A Number Of Different Forms, Then A Defence Of Functionality Must Fail.

Written By Advocate Ajay Amitabh Suman: Hon�ble High Court Of Delhi