Updated: Feb 20, 2022
Written by: Girija Rani Mullapudi
An object must be visually interesting to draw buyers' interest. Its marketability is therefore enhanced by its visual appeal. An article's presentation may harm its marketability. Using their own abilities, craftsmen and artisans choose a form or design to make the articles appealing to the eye of the customers in ancient times as well. Following the industrial revolution, it became possible to use industrial processes to give mass-produced items a distinctive form. Manufacturers are also paying close attention to the shapes of the products they make. They spend a lot of money and do a lot of research on this.
The development of new designs and their introduction to publications necessitates legal defence. The Design Rights Act, 1911, which now protects designs in India, has proven to be insufficient and obsolete. The Patterns and Designs Protection Act, 1872, gave the inventors of modern patterns and designs in British India the exclusive right to make, sell, and use their invention in India, or to authorize anyone to do so for a limited period. Later, the Inventions and Designs Act of 1888 was passed to codify and update the legislation governing the preservation of innovations and designs.
The Patents and Designs Act of 1907 was passed in the United Kingdom. The Indian Patents and Designs Act of 1911 was based on it. Parliament also passed the Patents Act in 1970, replacing clauses pertaining to patents in the Indian Patents and Designs Act, 1911. The rules of the Indian Patents and Designs Act, 1911, relating to designs, were permitted to proceed under the current title Designs Act, 1911, with certain changes. A post-independence Designs Act does not exist to safeguard modern designs.
Under the Designs Act of 1911, the term[i] "design" has a specific meaning and definition. The law describes "design" as meaning only the features of the design, shape, decoration and ornament applied by any manufacturing process or instrument, manual, mechanical or chemical, distinct or mixed, which are solely visible and judged by the eyes in the finished product. The design implies that the characteristics of the form, design, design or accessory used for an article[ii] and not the item itself. That is obvious from the meaning. The architecture makes the product for sale appealing and is a component of the product itself. A successful design subject must be visually pleasing, but it does not have to be an innovative work or have artistic merit.[iii]
The description of the design in the Act excludes the following items:
a) A mode or theory of architecture cannot be registered as a design. A mechanical structure or a property mark cannot be registered as a design. The rationale for excluding the style or theory of construction from the concept of design is that one cannot assert monopoly based on the purported registration of a design for a type or principle of construction;
b) A mechanical unit, or in other words, a practical design, is not capable of registration.
c) Any trademark as specified in the Trade and Merchandise Mark Act, 1958 under section (2)(1)(v).
d) The mark as specified in the Indian Penal Code, Section 479, 1860. Obviously, the defence provided for in the Act would not apply to these exempt objects. Defence of the nature of copyright.
The design owner acquires the following rights by registering a design in accordance with the law:
a) the exclusive right to apply the design to any article in any class where it is registered;
b) the exclusive right to publish or to disclose any article in a class of products to which the design has been registered to be applied, or to allow it to be published or exposed; and
c) the exclusive right to import for sale any item belonging to, and applying the design to, the class in which the design is licensed. When a design is licensed, the design proprietor registered shall have copyright in the design for the period of five years after the registration date, according to the provisions of this Act.
d) If the controller is applied to and the required charge charged, the insurance period may be added to the same formalities for another five years and five more years. Design rights shall not be achieved by registration under the Act for longer than fifteen years.
PRECEDENTS ON DESIGN LAW
Gopal Glass Works v Asst. Controller of Patents and Designs[iv]
The Court held in this case that the specifications, sketches and demonstrations relating to the registration of a design are not per se published in accordance with the legislation currently in force in India, which forbids the possible registration of such a design. Had a registering authority published the design specifics in connection with a design registration itself, and especially the registering authority in a foreign country, it would have received all potential design applications in India. In addition to publication in India, it is essential that parliament deliberately made publication, but also limited the embargo on prior registration to registration in India, in a country other than India. Therefore, the registration in a country other than India was no reason why a registered design should be cancelled.
Eicher Good earth Pvt Ltd vs. Krishna Mehta and Others[v]
In this case, the Tribunal accepted the plaintiff's claims and stated that they met the passing test and that the defendant's actions caused consumer uncertainty. The Court absolute the provisional injunction, excluding the accused from using such prototypes. However, the Court required the defendant to use the design of Vrindavan and Falcon for unrelated purposes to relieve the defendant (where appropriate) because the design was not like that of the complainant and permitted them to use the design of Periyar without restrictions because it wasn't considered to be identical.
The Court has established a rule where old designs are added to new documents and holds as follows, bases on many judgments: While the design itself is ancient, but if the same goes on a new item, for which it has never been applied before, then the aforementioned design has to be covered. It is well-established law. The rule is crystallized in a range of rulings in which the courts ruled that "initial" designs are designs that are modern but ancient in their implementation. While the design itself is ancient, but if the same goes on a new item, for which it has never been applied before, then the aforementioned design has to be covered. It is well-established law. The rule was crystallized in a range of rulings in which the Courts ruled that "original" includes designs in contrast to designs that were existing but modern in their implementation.
Dabour Ltd. v Amit Jain [vi]
In this case the absence of an interpretation of 'publication,' the Court observed as follows that mere publishing by the Patent Bureau of any foreign country of design requirements, sketches and/or presentations in connection with the application, in itself does not result in a publication which would make a design registered in India liable for annulment. The Court held that it cannot be inappropriate for Dabur to seek the orders that restrict Amit Jain from breaking his registered design concerning similar bottles or caps. With this in mind, the order was reinstated before payment was ordered for disposal of the suit and expenses in the sum of rs.20,000/-.
Bharat Glass Tube Limited v. Gopal Glass Works Limited [vii]
The court had observed in this case that the term "new or original" in the sense of a design must be understood to mean whether or not a third party created the above design for that specific article. In the recording of a design, two elements, i.e. the design and design to be added to an article, have to be considered.
Asian Rubber Industries c. Jasco Rubber [viii]
The accused had questioned the authenticity of the claimant's design for the reasons of the on account of that the design of the shoes registered by the applicant was neither new nor original because that design came from 'Padukas' which was popular for many centuries. The Court held in this case that the claimant does not pretend to be 'Padukas' inventor and does not claim exclusivity by patent law. However, in the Creative Expression and the Look and Feel of their products, the complainant claims exclusivity.
Anuradha Doval vs The Controller of Patents and Designs & Ors[ix]
In this case, the court observed that "The concept shall be so designed to make it 'invite and determine only by the eye' in the finished Paper. It does not apply to function-driven features. The reason behind this omission is that design security aims to reward the successful product design and to promote it through the protection of product designers' skills, innovation and labour. For both shape and function, design is concerned. Design legislation does not aim to recompense progress. A successful design topic has to be naturally appealing, it does not have to be a work of art or it has to have an artistic value. The Designs Act was designed to shield new designs intended to apply to such articles which are to be produced and placed on the market.
Parle Food Products Pvt Ltd. vs. Sury Food and Agro Ltd[x]
The Court held that its design Act aimed to secure new design instruments that will be used to produce and sell such products for business purposes. The biggest problem was how the completed paper looked and not what it did.
Whirlpool of India Ltd. vs. Videocon[xi]
The Court held a physic comparison between the two washing machines to see if the washing machine produced and sold by Videocon is 'obvious' or 'fraud' in the imitation of the design registered by WhirlPool in the context of the matter of whether Videocon with the disputed design has committed an infringement of Section 22 (Piracy of Registered Design) of the Act. The court found that both devices share a distinctive outline and are clearly identical in the test 'Judging only by the eye.' On the machine sold by Videocon, the form and configuration of the Whirlpool washing machine are obvious. The court then upheld the judge's ruling.
A remarkable feature of this case is that both brands were taken to court by washing machines and put side-by-side during the whole hearings. As well as violation prosecution, Whirlpool has appealed for dismissal against Videocon. In the immediate event, the court held that Videocon might not have intentionally shown a customer error, but it deliberately created a deception technique and is thus guilty of disappearing.
REFERENCES [i] The Designs Act, 1911 (Act 2 of 1911) § 2 (d). [ii] The Designs Act, 1911 (Act 2 of 1911) § 2 (a). [iii] The Designs Act, 1911 (Act 2 of 1911) § 2 (d). [iv] Gopal Glass Works v Asst. Contoller of Patents and Designs, 2006 (33) PTC 434 (Cal.). [v] Eicher Good earth Pvt Ltd vs. Krishna Mehta and Others, 2015 (63) PTC 444. [vi] Dabour Ltd. v Amit Jain, 2009 (39) PTC 104 (Del). [vii] Bharat Glass Tube Limited v. Gopal Glass Works Limited, AIR 2008 SC 2520. [viii] Asian Rubber Industries c. Jasco Rubber, 2013 (1) Bom CR 393. [ix] Anuradha Doval vs The Controller of Patents and Designs & Ors, 2017(71) PTC 288 (Cal). [x] Parle Food Products Pvt Ltd. vs. Sury Food and Agro Ltd, 2009 report (40) PTC 638 (Mad) (DB). [xi] Whirlpool of India Ltd. vs. Videocon, (2013) 1 Mh.L.J. 197.