History and Development of Design Law in India

The History of Designs Act in India can be traced back to the period of British reign. The first Indian legislature to grant to grant privileges and protection for designs was the Patent and Designs Act, 1872. It supplemented the 1859 Act passed by Governor General of India for granting exclusive privileges to inventors and added protection for Industrial Design. In 1911, British Government enacted the Patent and Designs Act and repealed the prior legislation.

In 1970, a separate act called the Patent Act 1970 was enacted to deal with matters related Patent and thus the provisions relating to patent was repealed, but the act continued to be the major legislation for Industrial Design till 2000. India joined the WTO as a member State in 1995. Consequently, the Patents & Designs Act, 1911 was repealed and the Designs Act, 2000 was enacted, to make the Designs Law in India in compliance with TRIPS.

Moreover since the enactment of the Designs Act of 1911, there has been a considerable progress in the field of science, technology and other related fields. This necessitated the need make the legislature more efficient and strong for proper administration and protection and promotion of Industrial Designs and all these gave rise to the Designs act 2000. This new act came into force on 11th May 2001.

Definition of Design and its essential elements

"Design" means features of shape, pattern, configuration, ornament or composition of colors or lines which is applied in three dimensional or two dimensional or in both the forms using any of the process whether manual, chemical, mechanical, separate or combined which in the finished article appeal to or judged wholly by the eye. It neither includes any mode of construction nor any trademark as defined under clause (v) of sub-section (1) of section 2 of Trade and Merchandise Marks Act, 1958.

It even does not includes 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. Novelty or newness is an essential requirement of an admissible design. As per the Designs act a design is preregister only when it is new and original, and not previously published.

In the case of Pilot Pen Co v. Gujarat Industries Private Ltd it was held that registration could not be deemed to be effective unless the design is new or original and pre- existing common type. But as per the act, the combination of previously known designs can be registered if the combination produces a new visual appeal .The novelty and originality of a design is judged on the basis of evidence of experts in trade.

Prior publication of design is not acceptable

According to section 4 following designs cannot be registered. A design which is:

1. It is not new or original or:
2. has been disclosed to the public anywhere 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.

In Kemp and company v. Prima Plastics Ltd it was held that disclosure of design by the proprietor to any third person cannot be claimed as publication provided that the disclosure must be in good faith. Also in the case of Wimco Ltd Bombay V Meena Match Industries, Sivakasi the court held that publication means the opposite of being kept secret. It is considered published if a design is no longer a secret. There is a publication if the design has been disclosed to the public or if the public is in possession of the design.

And any such previously published design cannot be registered. Publication can occur in two ways i.e. publication in prior document and publication by prior user. In the case of Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure, a design of water dispenser having a cylindrical shape was not considered as new on the grounds that mere shape and form is not sufficient to prove novelty. As per the law, the private or secret use or experimental use of a design will not constitute a publication.

Items that cannot be registered as a design under the act:

• Signs, emblems or flags of any country.
• Size of any article, if changed.
• Structures and buildings.
• Integrated circuits' layout designs
• Trade variations.
• Any principle or mode of construction of any article such as labels, tokens, cartoons, cards, etc.
• Books, calendars, certificates, jackets, forms-and other documents, greeting cards, maps and plan cards, postcards, leaflets, stamps, medals, dressmaking patterns.
• A mechanical contrivance.
• Workshop alterations of components of an assembly.
• Parts of any article which is not manufactured and sold separately.

In the case of Philip v. Harbo Rubber Company the Court held that introduction of ordinary trade variant into an old design cannot make it new or original.

Procedure for registration of designs

Chapter 2 of the Designs act, 2000 deals Registration of Designs.

The steps to be followed are:

• An application for the registration shall be made in the patent office in the prescribed form along with the prescribed fee. The class in which the design is to be registered must be specified in the application and the articles to which it is to be applied. There are separate applications which need to be filed for each class of article.
• The controller will give the application for examining it so as to check whether the design is capable of being registered or not. If everything seems perfect then the controller will accept the application and proceed further.
• If there is any objection, then the applicant or his agent will be asked to make necessary amendments so as to register the design and nullify the objection.
   
• If the objection does not get removed within three months after the hearing, the application will be withdrawn and it must be noted that.
   

Once the design is legally registered under the act it grants proprietor with following rights:

• Right to exclusive use of the design.
• Right to protect the design from piracy.
• Usage of rights even against the Government.

Infringement of Design

Just like any other Intellectual Property, the designs are also prone to infringement and they can also be copied by the competitors or some other person. If a design has been copied then the owner of that design can claim damages and can also apply for an injunction so that the design cannot be used further. If there arises any question regarding the ascertainment of infringement then the Court will directly look for the design from the point of view of an average customer.

In other words, the Court will consider whether there is any confusion which is obvious or some material facts in the minds of the customers regarding the two articles. In Disney Enterprises Inc. v. Prime Housewares Ltd. international registration of industrial designs became a matter of conflict in India. A Mumbai based company Prime Housewares used to manufacture characters like Mickey Mouse, Donald Duck, etc.

A suit was filed by the Disney enterprises for the infringement of their international registered designs. The court held that the plaintiff's trademark is protected but not the designs under the Indian law. An order was passed by the court for the infringement of the trademark of the enterprises. The Indian company was asked to deliver all the infringing material in their possession to Disney so that it could be destroyed.

Conclusion
The necessity and need for the protection of Industrial Designs in the nation has resulted in the so called legislation regarding Industrial Design starting from 1872 ( Patents and Designs Act ) to the recent Designs Act of 2000. Designs Act 2000 is a prominent legislation in the field of Intellectual Property, which has got a long strong legacy and history when it comes to effectiveness. This act along with other related rules efficiently controls the matters related to Industrial Design.

Under the Act of 2000, Locarno classification has been adopted in which the classification is based only on the subject matter of design. Under the previous provisions, the classification was made on the basis of the material which has been used to make that material. When a proprietor applies for the registration of the design he shall automatically get 'copyrights in design' for the period of 10 years from the date of registration.

This period can be extended if the proprietor wants to continue with the design. The Design Act should not be confused with the Copyrights act because there are many products which can be registered under both the acts but their remedies cannot be sought in both the acts individually.