Industrial Designs – Intellectual Property Rights Laws and Practices Important Questions
Question 1.
Industrial design plays an important role in the trading of consumer goods or products as well as helps economic development by encouraging creativity in the industrial and manufacturing sectors. Discuss the salient features of the Designs Act, 2000.
Answer:
Salient Features of Design Act, 2000 Objectives and Justification for Design Protection The process of acquiring design rights is of importance from the perspective of the creator of the design. Basically, the evolution of design rights was based on the keen interest to encourage and protect those who produce new and original designs, thereby facilitating competitive development and industrial progress.
Being a creation of the intellectual mind, the designs also need to be protected. Designs protection through registration has been a source of tremendous progress in the field of science and technology which has revolutionized manufacturing during the process.
Subject Matter of Design Law
The subject matter which is protected by the design system is the application of the design to an article. The two fundamental characteristics of the design law are – firstly, it is concerned with the visual aspects of the articles and secondly, it concerns designs applied to an article, which means concepts like garden designing, the architectural drawings and designs, book jackets, labels, tokens, medals, buildings and structures have been excluded from design protection.
The term Design as per the Design Act, 2000
A design refers to the features of shape, configuration, pattern, ornamentation or composition of lines or colours applied to any article, in two or three dimensional (or both) forms. This may be applied by any industrial process or means (manual, mechanical or chemical) separately or by a combined process, which in the finished article appeals to and is judged solely by the eye.
Who can apply for Registration
Any person or the legal representative or the assignee can apply separately or jointly for the registration of a design. The term “person” includes firm, partnership and a body corporate. An application may also be filed through an agent in which case a power of attorney shall be filed.
What is excluded from Design Protection?
Designs that are primarily, literally or artistic in character are not protected under the Design Act. These will include:
- Book jackets, calendars, certificates, forms and other documents, dressmaking patterns, greeting cards, leaflets, maps and plan cards, postcards, stamps, transfers, medals.
- Labels, tokens, cards, cartoons
- Any principle or mode of construction of an article
- Mere mechanical contrivance
- Buildings and structures
- Parts of the article not manufactured and sold separately
- Variations commonly used in the trade
- Mere workshop alterations of components of an assembly
- Mere change in the size of the article
- Flags, emblems or signs of any country
- Layout designs of integrated circuits
What do you mean by new/original design
A design must have something new before the law will allow it to be registered. The design should be new or original; this is evident from Section 5(1) of the Act, which provides that the application for registration should be for “any new or original design”.
The words new or original, involve the idea of novelty, either in the pattern, shape or ornament itself or in the way an old pattern, shape or ornament is to be applied to an article. Novelty may consist not in the idea itself but the way in which the idea is to be rendered applicable to an article.
Question 2.
What do you understand by ‘design’? How is it different from ‘copyright’? What is the Act covering design?
Answer:
Design as per Section s (d) of the Designs Act, 2000 means only the features of shape, configuration, pattern or ornament or composition of lines or colour or a combination thereof applied to any article whether 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 of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2 (c) of the Copyright Act, 1957. Meaning of copyright specified under section 14 of the Copyright Act, 1957.
Design is with reference to the shape and aesthetic aspect of an article. It is different from copyright in the sense that a form of reference to a “hard” and “tangible” creation such as the shape of a cup. Copyright is “soft” defined creative work on paper and other media dealing with knowledge or information. The design does not include any artistic work, as defined in Section 2 (c) of the Copyright Act, 1957. The Design Act, 2000 covering design. Space, to write important points for revision
Question 3.
What is the meaning of ‘appeal to the eye’ in the definition of a design? A book designer prepares a jacket of a hard copybook. Will, his work be covered under the Designs Act, 2000 or will it be a subject matter of the Copyright Act, 1957? Discuss.
Answer:
As per Section 2 (d) of the Designs Act, 2000 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 trademark or property mark (as defined in Section 479 of the Indian Penal Code) or artistic work ( as defined in clause (c) of Section 2 of the Copyright Act, 1957).
The design will therefore be calculated to attract the attention of the beholder regardless of whether or not it makes a favourable appeal to him. The requirement of appealing to the eye is therefore really a preliminary test of novelty, as compared to the fundamental form of the article. (Amp. V. Utilux (1972) RPC 103, pp 107). In the given case, Jacket will be covered under Copyright Act, 1957 not under the Designs Act, 2000 which is usually a three-dimensional structure or object with “appeal to the eye”.
Question 5.
What are the essential requirements for the registration of a design?
Answer:
The essential requirements for the registration of a design are as under:
- The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to a new subject matter.
- The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article.
- The design should be applied or applicable to any article by any industrial process.
- The features of the design in the finished article should appeal to and are judged solely by the eye.
- Any mode or principle of construction or operation or anything which is in substance a mere mechanical device, would not be a registrable design.
- The design should not include any Trade Mark or. property mark or artistic works as define under the Copyright Act, 1957.
Question 6.
What is not a design under the Designs Act, 2000? Explain with illustrations.
Answer:
The design does not include:
- any trademark, as defined in Section 2(zb) of the Trademarks Act, 1999 or
- any property mark, as defined in Section 479 of the Indian Penal Code, 1860, or
- any artistic work, as defined in Section 2(c) of the Copyright Act, 1957.
Artistic Work means:
(1) A painting, sculpture, drawing (including a diagram, map, chart or plan), an engraving or a Photograph, whether or not any such work possesses artistic quality.
(2) Any work of architecture i.e. any building or structure having an artistic character or design or any mode for such building or structure.
(3) Any work of artistic craftsmanship. Illustrative of non-registrable designs are:
- book jackets, calendars, certificates, forms and other documents;
- dressmaking patterns, greeting cards, leaflets, maps and plan cards;
- postcards, 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;
- a mere change in the size of the article;
- flags, emblems or signs of any country;
- layout designs of integrated circuits.
Question 7.
Define ‘design’ and analyse non-registrable designs with examples.
Answer:
Design as per Section 2(d) of the Designs Act, 2000 means only the features of shape, configuration, pattern or ornament or composition of lines or colours or a combination thereof applied to any article whether 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. Exceptions: Design does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trademark, as defined in clause (v) of sub-section of section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under section 2(c) of the Copyright Act, 1957.
As per section 4 of the Design Act, 2000, Design is not registrable in India, if it
- is not new or original;
- has been disclosed to the public anywhere in India or in any other country by publication in tangible form or.by use in any other way prior to the filing date or priority date of the application;
- is not significantly distinguishable from known designs or combination of known designs;
- Comprises or contains scandalous or obscene matter.
Question 8.
Sonar Industries, the proprietor of a registered design, obtained an ad interim injunction restraining TRISHA International from manufacturing portable table fans with a design that was allegedly an obvious or colourable imitation of Sonar’s registered design for such fans. Sonar Industries also alleged that TRISHA International was guilty of piracy of its registered design.
TRISHA International contended striking features of the registered design could not be viewed in isolation. It added that the configuration and ornamentation of its table fan design were dissimilar. Will TRISHA International succeed in getting the ad-interim injunction vacated ?. Give, reasons in support of your answer.
Answer:
‘Design’ refers to the features of shape, configuration, pattern or ., ornamentation which can be judged by the eye in the finished products. Section 22 of the Design Act, 2000 provides the legal proceedings to be followed in the case of Piracy of Registered Design.
One of the below remedies can be sought against the accused:
(1) Paying to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt provided that the total sum recoverable in respect of any one design shall not ‘ exceed fifty thousand rupees; and
(2) Recovery of damages for any such contravention, and an injunction •against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly. Not every resemblance is actionable and imitation does not mean duplication. An obvious limitation is one that immediately strikes one as being so like the original registered design as to be almost indistinguishable. In contrast, the word ‘fraudulent’ presupposes knowledge .of the registered design. To ascertain infringement, the two products need not be placed side by side, but rather examined from the point of view of a customer with average knowledge and imperfect recollection. The main consideration is whether the broad features of shape, configuration and pattern are similar to one another ( Veeplast vs. Bonjour, 2011).
The Designs Act, 2000 grants protection only for the appearance of the article which appeals to and is judged by the eye. In a case, the Calcutta High Court held as below: “Novelty resided in the design as a whole and not in its component parts. The striking features of the registered design could not be viewed in isolation. Components such as mounting brackets being mechanical devices could not be considered as a part of the design as registered in the Certificate of Registration.”
Thus, the question of whether TRISHA International’s portable table fan is an obvious imitation of Sonar’s registered design has to be determined solely by the test of an eye. Like the shape, configuration and ornamentation of TRISHA’s portable table fan design were clearly dissimilar to those of Sonar’s registered design, no prima facie case of piracy has been made out by Sonar.
Question 9.
Can stamps, Labels, tokens, cards be considered an article for the purpose of registration of Design? If yes, why and if no, why not?
Answer:
The answer to the question is ‘No’ since, once the Design i.e., the ornamentation is removed only a piece of paper, metal or like material remains and the article referred to ceases to exist. For Design protection, the article must have its existence independent of the Designs applied to it. [Design with respect to the label was held not registrable, by an Order on civil case No. 9-D of 1963, Punjab, High Court], So, the Design applied to an article should be integral with the article itself.
Question 10.
What is design under the Designs Act,2000? What is the design not registrable under the Act?
Answer:
Designs speak of drawings. However, when a design is applied to commercial goods by the enterprise concerned, it is termed as an industrial design.
According to Section 2(d)of the Designs Act, 2000, Design means only the features of shape, configuration, pattern or ornament or composition of line or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by and 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 trademark, as defined in clause (v) of sub-section of section 2 of the Trade and Merchandise Marks Act,1958, property mark or artistic works as defined under section 2 (c) of the Copyright Act,1957.
The design which is not registrable under the Act are:
- any trademark as defined in Section 2 (zb) of the Trademarks Act,1999;
- any property mark, as defined in Section 479 of the Indian Penal Code,1860 or
- any artistic work, as defined in section 2(c)of the Copyright Act, 1957.
Examples of non-registrable designs are:
- book jackets, calendars, forms, certificates and other documents;
- dressmaking patterns, greeting cards, leaflets, maps and plan cards;
- postcards, stamps and medals;
- labels, tokens, cards and cartoons;
- any principle or mode of construction of articles;
- a mere change in the size of the article;
- flags, emblems or signs of any country;
- the layout of designs of integrated circuits.
Question 11.
What is the object of registration of designs? What is the duration of a design registration? Can it be extended?
Answer:
The object of registration of design are as follows:
- It must be a design i.e. it must belong to the subject matter of a design which the Design Act, 2000, aims to protect;
- It must be new or original;
- It must not be one that is excluded from registration.
The duration of a design registration is initially ten years from the date of registration but in cases where the claim to priority has been allowed, the duration is ten years from the priority date. Yes, the initial period of ten years may be extended by a further period of five years, if the registered proprietor applies for extension in the prescribed manner.
Question 12.
What constitutes piracy of a registered design? What penalties have, been provided for piracy of a registered design under the Designs Act, 2000?
Answer:
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 terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design. The piracy of registered design constitutes the following:
(1) for the purpose of sale to apply or cause to be applied to any article in 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 enabling the design to be so applied; or
(2) to import for the purpose of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and have applied to it the design or any fraudulent or obvious imitation thereof; or
(3) knowing that the design or any fraudulent imitation thereof has been applied to any articles in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
PENALTIES:
As per Section 22, if any person commits piracy of a registered design, he shall be liable to pay for payment of a sum not exceeding ₹ 25,000/ recoverable as a contract debt. However, the total sum recoverable in respect of any one design shall not exceed ₹ 50,000/
Question
Enumerate the general procedure for registering a design.
Answer:
The procedure for registration of designs are as follows:
1. WHERE To APPLY:
Any person claiming to be the proprietor of any new or original design. may apply for registration. An application for registration of a design shall be addressed to the controller of design. The Patent Office at Kolkata, or at any of its branch offices at New Delhi, Mumbai and Chennai. A proprietor may be from India or fpm a Convention Country.
2. TYPE OF APPLICATIONS:
There are two types of applications:
- Ordinary application: It does not claim priority.
- Reciprocity application: It claims the priority of an application filed previously in a conventional country. Such an application shall be filed in India within six months from the date of filing in a convention country. This period of six months is not extendable.
3. Substitution of Application or Joint Claiming:
The name of an applicant can be substituted or a joint claim can be made for an applied design if the following requirements are met:
(1) The claim for substitution is made before the design has been registered; and
(2) Right of the claimant shall be created only by:
- an assignment;
- agreement in writing made by the applicant or one of the applicants; or
- operation of law; and
(3) The design under consideration shall be identified in the assignment or. the agreement specifically by reference to the number of applications for registration; or
(4) The rights of the claimant in respect of the design have been finally established by a Court.
A request for substitution of the applicant shall be filed in Form-2 along with the required fee as per Section 8. However, in the case of joint applicants, the controller shall not pass such direction without the consent of the other joint applicant(s).