Sunday, October 11, 2009

design under intellectual property law

Title : Protecting A Design In Intellectual Property
Author : Mr. Sidhartha Mohapatra



Designs have always played a major role in the global dynamic market. The importance of design has been so highly felt in the field of intellectual property rights (IPR), that a new act, named the Designs Act, 2000 was enacted to give protection to the designs. But the major impetus on the registration of designs is that it should be novel and must not have been publicly known prior to its registration. Further, obscene or scandalous designs do not qualify for the registration of designs. But, once the design gets registered, the competitive advantage that the value of the product gets confers an umbrella protection on the design of the product. In this article, an attempt was made to describe briefly about the Designs Act, 2000 so that those reading it will get an insight of the importance of designs in this modern consumerist market.


Designs often stand at the crossroads of art and industry. The manifestation of design in various product markets poses a problem for the registration of a design in intellectual property. Protection of design as a rule can be done in all intellectual property regimes, with the prominence on copyright, sui generic design and unfair competition laws. The notion of protection of design is the result because of its adaptation in the minds of the users and the socio-economic framework, which sustains it. The rationale behind the protection of design is the role played by it in promoting and maintaining a competitive market economy.1

The essential purpose of design law is to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The existing legislation on industrial designs is enshrined in the New Designs Act, 2000 and this Act will serve its purpose well in the rapid changes in technology and international developments. It was enacted to bring the Indian law in consonance with the TRIPS agreement.2 India has also achieved a mature status in the field of industrial designs and in view of globalisation of the economy; the present legislation is aligned with the changed technical and commercial scenario and made to conform to international trends in design protection.


"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 trade mark as defined in Clause (v) of Sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 or 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, 1957.3


The term "design", in the field of intellectual property rights (IP), means the appearance and form of the whole or part of a product. In other words, design protection is used to protect the aesthetic features of a product i.e., in particular, the lines, contours, colours, shape and/or materials of the product itself and/or its ornamentation.4 Functional features are not protected under the Law of Designs. For a product to qualify for design protection, it must relate to the shape and appearance of the goods or articles and it must be applied by a mechanical or chemical process. The eligibility for design registration will be judged solely by the appeal to the eye. Section 2(d) read with Section 2(a) and Section 5(1) of the Design Act lays down the definition of the Design. In Delhi Metro Plastic Industries v. Galaxy Footwear5 case, it was held the definitions of "design" in Section 2(5) of the 1911 Act and Section 2(d) of the 2000 Act were slightly different and the present definition had certain additional features. The legislation has amplified the definitions of article and design to confirm them with international accepted definitions for providing wider protection. The definition of article has been broadened to include parts of articles sold separately within its scope. The definition of Design has also been amplified to incorporate the composition of lines and colours to avoid overlapping with Copyright Act, 1957 regarding the definition of design with respect to artistic work.


Section 2 (a) makes it clear that only an article of manufacture or any substance which is artificial or partly artificial and partly natural and includes any part of an article capable of being made and sold separately can be protected under the Designs Act, 2000. The functionality or technical features of a product cannot be design protected and should be covered by other methods of protection, i.e. patent protection or utility model protection.

Designs may be used in conjunction with trade marks to protect the entirety of a product. For example, in addition to the protection of the Coca-Cola name by registered trade mark, the shape of the bottle and design of the logo are protected by registered design.

Registered designs are preferable to non-registered designs, as the latter provides no protection against deceptively similar designs. If the part of an article is such that it is capable of being made and sold separately, then it can also be protected. An inventor or any other person/company assigned by the inventor can apply and obtain the registration for the design.


Almost all jurisdictions, including India, follow Locarno Classification for registration of design comprising 32 classes, numbered 1 to 31 and an additional Class 99 to include articles not falling under the aforesaid 31 classes.6 Most of the classes are further divided into sub-classes. Design applications must be filed in a particular class depending upon the predominant material with which the article is made or is capable of being made.7


A registrable design must be novel, in that it must not be publicly known8 prior to the filing of an application. A design shall be considered 'new' if no identical design has been previously made available to the public.What is essential is that the design must be new with respect to the class of article to which it has been applied.

Thus, any object which wants qualification for the design must fulfill the criteria, i.e., it must not have been put on in the market, exhibitions or brochures, etc. Further, a design must itself have a distinct individual character and should be substantially differentiating from the already marketed products and prior registered designs.9 However, in order to maintain the novelty of the design, it is necessary to file a design application within 12 months of the publication of the design. If no such application is filed, the design will not be considered novel and will not be registrable.

In the case of Joginder Singh v. Tebu Enterprises Ltd., 10 the petitioner filed a petition in the Delhi High Court for the cancellation of two designs issued in favour of the respondent, under Section 51 A of the Design Act, 1911, on the grounds that the impugned designs whose registration was obtained by the Respondent were in fact being manufactured in India prior to the date of registration in favour of the respondent, and that they were not novel and original and had also been previously published in India prior to the date of registration in favour of the Respondent. The Court held that if the goods imported from abroad are used by the importer without its discloser to anyone else and goods of such designs are not freely available in India, then there is no publication of the design so imported. If, however, the goods which are imported are used in full view of the general public, the design of such goods are regarded as published in India and would not be regarded as new or original designs. Considering the facts and circumstances of this case the court cancelled the registration of the design issued in favour of the Respondent.

1 comment:

  1. playing an important role in intelectual property...Thank you for the article.