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Government enacted the Patent and Designs Act and repealed the prior
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matters related Patent and thus the provisions relating to patent was repealed,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& Designs Act, 1911 was repealed and the Designs Act, 2000 was enacted, to make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
" 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
In the case of Pilot Pen Co v. Gujarat Industries Private Ltd
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
- It is not new or original or:
- 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
- Is not significantly distinguishable from known designs or combination
of known designs or
- Comprises or contains scandalous or obscene matter, shall not be
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
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,
- 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:
Once the design is legally registered under the act it grants proprietor with
- 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
- 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
- If the objection does not get removed within three months after the
hearing, the application will be withdrawn and it must be noted that.
- 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.
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
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.