Designs are creating by spending huge amount of money and long hours of work. The proprietor of a design has complete right to protect the design and avail complete benefits from creating such a design. Registration of designs is necessary to protect it from piracy and to avail maximum use of it. Important provisions in the Design Act, 1911, Design Rules 1933 and Design Act 2000 are explained below:
Definition of Design as per Section 2(5) of the Designs Act, 1911
According to Section 2(5) of the Design Act, 1911, 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 in 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. It does not include a trade mark or property or mark or an artistic work.
Definition of Design as per Section 2(d) of Designs act, 2000
Section 2(d) of Designs Act, 2000 defines a 'design' which is similar to the definition given under the Act of 1911 except the following added features:
(i) It includes composition of lines or colours applied to any article
(ii) Such article may be either in two dimensional form or in three dimensional form or both
(iii) It does not include any artistic work as defined under the Copy Right Act.
Features of Design
A design must have the following essential features
It must be applied to articles
A design is something applied to the article, not the article itself.
Appeal to the eye
Design Act 1911 and 2000 clearly describes that the finished article must appeal to the eye and is capable of being judged solely by the eye.
Novelty and originality
For the purpose of registration, a design must be new and original, not previously published in India. Introduction of ordinary trade variants into an old design cannot make it new or original.
Copyright in Drawings
Whatever be the nature of drawing, the purpose and intention would be the relevant criterion to consider whether the drawings are designs in the light of the provisions of the Design Act, 1911 and the Copy Right Act, 1957.
Presumption of Originality
Where the statement of novelty filed by the petitioner was in respect of shape, configuration and surface pattern particularly the ridged side of the container the novelty was not claimed either in relationship t the proportion of the shape or in the colour used. Therefore difference in the proportion of the container and the difference in colour between the petitioner's containers and the defendant containers are immaterial as neither the colour nor the proportions were part of the registered design.
No prior publication
The application for registration of a design should be for a new or original design, not previously published in India. Even though the Designs Act does not define "publication" in order to constitute publication, a design must be made available to the public or it is shown to be disclosed to some person without any obligation to keep it a secret/confidential. The publication may be classified into two types:
a. Publication in prior document
b. Publication by prior user
Effect of pre-publication
Design is a conception, suggestion or idea of a shape and not an article. It has been already anticipated, it is not 'new' or 'original'. It has been pre-published, it cannot claim protection. Publication before registration defeats the proprietor's right to protection under the Act".
Registration of Design – Section 43 to 46 of the Designs Act, 1911 and Rules 34 to 43 of the Designs Rules 1933
The Registering authority is the Controller-General of Patents, Designs and Trade Marks, appointed by the Central Government will be the controller of Designs for the purpose of the Act. An application is to be submitted for seeking registration of the Design. For the purpose of registration the proprietor of new or original design must be (1) either the author of the design; or
(2) Any other person who acquired the design or the right to apply the design to any article; or
(3) A person on whom such right have evolved
The application must be accompanied with four copies of the design duly signed by the applicant. It should state the class on which the design is registered and also the article/articles to which the design is to be applied.
Prohibition of Design Registration
The following designs cannot be registered:
1. A design which is not new or original
2. A Design which has been disclosed to the public anywhere in India or 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
3. A design is not significantly distinguishable from known designs or combination of known designs
4. A design comprises or contains scandalous or obscene matter shall not be registered under the Act
Certificate of Design Registration granted by Controller
After registration of Design the Controller should grant a certificate of Registration to the proprietor of Design and it shall be entered in the Register of Design.
Benefits of Registration of Design
The Registered proprietor of the design has the following rights:
The right for exclusive use of design i.e. the copy right in the design and
The right to protect the design from piracy
Cancellation of Registered Design
After registration of a Design, any persons interested in it may present a petition to the High Court for the cancellation of the registration of design on the following grounds:
a) That the design has been previously registered in India or
b) That it has been published in India prior to the date of registration or
c) That the design is not a new or original design
The petition may also be presented before the controller on the first two grounds mentioned above.
Remedies against Piracy of Design
Grant of Interlocutory Injunction
If the plaintiff succeeds in the action, the defendant is liable to pay by way compensation a sum or Rupees Twenty Five Thousand for each of the three categories of infringement, namely commercial application of the design to articles, importation of the infringing articles and publication for sale of the infringing article subject to maximum of Fifty Thousand Rupees.
3. Delivery up of Infringing Articles
The Plaintiff can take delivery of the infringed articles.
Absconding to avoid summons, Preventing Service of Summons, Non Attendance, Non Production of documents, false information, Refusing oath, answer, sign statement, False statement on oath False information - Section 172, 173, 174, 175, 176, 177, 178, 179, 180, 181, 182 of IPC