IPR Newsletter: Design Protection – December 2022

Design Protection in India and Object of Registration of Designs

The Designs Act, 2000, Section 2(d) of the Act, defines Design to mean 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 merely mechanical device.

The object of the Designs Act is to protect new or original designs so created to be applied or applicable to a particular article to be manufactured by Industrial Process or means. Sometimes the purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of Design Registration is to see that the artisan, creator, and originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.

What are the Essential Requirements for Design Protection in India?

• Must be new and original.
• Must not be disclosed to the public anywhere in India or abroad by publication before the filing date.
• Must be significantly distinguishable from known designs or a combination of known designs.
• Must not contain scandalous or obscene matters.
• Should be applied or applicable to any article by any industrial process.
• The features of the designs in the finished article should appeal to and are judged solely by the eye.

The registration provides the applicant with copyright in the design for an initial term of ten years. Design registrations are particularly useful since, often, a customer’s purchase decision is based on the product aesthetics, i.e. shape, look, colour combination, ornamentation, etc. 

Customers may also associate a product with a particular company or with a particular quality standard based on product aesthetics. For companies, design is the simplest way of differentiating one’s products from competing products. Further, companies manufacturing imitation products usually copy the design, i.e., the look and feel of a product, to gain market share. As a result, it becomes important to protect the design from being copied.

What are the rights owned by the inventor or proprietor of the Designs?

The proprietor of the registered design has the exclusive rights to sell, make, license or use articles embodying such designs.

• The exclusive right against unauthorized copying and imitation of his/her design by third parties.
• A distinctive identification among consumers and helps the applicant in boosting their sales and goodwill in the market.
• The legal right to take action against an infringer and stop piracy of the design.
• Protection of their products from imitation and piracy as well as the right to authorize third parties to use their design.

What are the advantages of Design Registration?

• Increases market potential
• Safeguards the features of the product
• Ensures exclusivity
• Encourages fair and competitive trading practices
• Promotes creativity

What exactly is termed as piracy of a design and design infringement?

Piracy of a design means the application of a design or its imitation to any article belonging to 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.

As per Section 22 of the Design Act, 2000, any fraudulent or obvious imitation of a Design that is already registered without the consent of the owner or proprietor of the registered design is unlawful. The section also prohibits the import of any kind of substance or material which is in close resemblance to such a registered design.

The acts mentioned above become the Infringement of Design only in the following circumstances:

• The act is committed during the existence of a Copyright in any Design;
• The design is imitated or applied without the prior consent of the registered owner or proprietor.
• The act done is for the purpose of sale, and not for any private or personal use;
• The infringing articles must be in the same class in which the design is registered.

Summing It Up

Designs play a crucial role in visually differencing one’s products from its competitors and with the rise of competition in the industry, protecting one’s designs is pertinent to attain an edge in the industry. The criteria of the visual appeal of a design leave an impression in the consumer’s mind and over time, associates with the owner alone. The Designs Act 2000 was formulated with the intent to promote innovation and creativity in sync with the global industrial and technological sector.