Industrial Designs Question and Answers

Industrial Designs

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 sector. Discuss the salient features of the Designs Act, of 2000.
Answer :

Salient Features of Design Act, 2000

Objectives and Justification for Design Protection: The process of acquiring design rights is important from the perspective of the creator of 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 an intellectual mind, the designs also need to be protected. Design protection through registration has been a source of tremendous progress in the field of science and technology which has revolutionized the manufacturing 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, 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 the legal representative or the assignee can apply separately or jointly for the registration of a design. The term “person” includes a firm, a 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 the 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 article are not manufactured and sold separately
• Variations commonly used in the trade
• 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

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 2 (d) of the Designs Act. 2000 means only the features of shape, configuration, pattern or ornament or composition of lines or colour or 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 or construction or anything which is in substance a mere mechanical device and does not include any trade mark, as defined in clause (v) of the 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 meaning of copyright is specified under section 14 of the Copyright Act, of 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. A copyright is a “soft” defined creative work on paper and other media dealing with knowledge or information.

Design does not include any artistic work, as defined in Section 2 (c) of the Copyright Act, 1957. The Design Act, of 2000 covers design.

Question 3. What is the meaning of ‘appeal to the eye’ in the definition of a design? A book designer prepares a jacket for a hard copy book. Will his work be covered under the Designs Act, of 2000 or will it be a subject matter of the Copyright Act, of 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 trade mark 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 favorable 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, the Jacket will be covered under the Copyright Act, of 1957 not under the Designs Act, of 2000 which is usually a three-dimensional structure or object with “appeal to the eye”.

Question 4. 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 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 be 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 registrable design.
• The design should not include any trademark or property mark or artistic works as defined under the Copyright Act, 1957.

Question 5. What is not a design under the Designs Act, of 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:

• A painting, sculpture, drawing (including a diagram, map, chart or plan), engraving or Photograph, whether or not any such work possesses artistic quality.
• Any work of architecture i.e. any building or structure having an artistic character or design or any mode for such building or structure. Any work of artistic craftsmanship.
• Illustrative of non-registrable designs are:
  • Book jackets, calendars, certificates, forms and other documents;
  • Dress-making 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;
  • mere change in the size of the article;
  • flags, emblems or signs of any country;
  • layout designs of integrated circuits.

Question 5. 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 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 or 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, 1 958, property mark or artistic works as defined under section 2(c) of the Copyright Act, 1957.

As per section 4 of 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 a combination of
  known designs;
• Comprises or contains scandalous or obscene matter.

Question 6. 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 case of Piracy of Registered Design.

One of the below remedies can be sought against the accused:

•  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
• 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 which 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, of 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. As 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 7. Can stamps, Labels, tokens, and 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 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 to the article itself.

Question 8. Company A has registration for its new design of bottles for soft drinks but after substantive examination, it was found that the design is not new or original. Can the registration of a design be cancelled?

1. The registered proprietor of design is given exclusive rights to his/her registered Designs. One such right is the right of the Cancellation of Design Registration. The registered proprietor or any other person interested can file for a petition of Cancellation of Registration of Design on the grounds mentioned in the Design Act, 2000 read with the Design Rules, 2001.
   • The procedure for Cancellation is also provided in the Act and the Rules regarding the Design Law of India. The registration of a design may be cancelled at any time after the registration of the design on a petition for cancellation in Form 8, along with the prescribed fee.
2. Such petition may be filed at any of the four Patent Offices. Such petitions filed in offices other than Kolkata are transmitted to the Kolkata Patent Office. However, at present, all further proceedings of cancellation take place only at the Patent Office, Kolkata and hence all communications relating to cancellation petitions are required to be communicated to that office.
3. The petition for cancellation of registration of a design may be filed on any of the following grounds:
   1. that the design has been previously registered in India;
   2. that it has been published in India or in any other country prior to the date of registration;
   3. that the design is not a new or original;
   4. that the design is not registerable under the Designs Act;
   5. that it is not a design as defined under Section 2(d) of the Designs Act.

For a design to be called new or original, there should be some original mental application involved. The novelty or originality of even a particular part of the article may be sufficient to call the design as a whole “novel or original”, but this part must be a significant one and it must be potent enough to impart to the whole design a distinct identity.

In view of the above, registration of the design of Company A’s soft drinks bottles can be cancelled on the grounds that the design is not new or original.

Question 9. Describe the mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set of fees.
Answer:

The Hague Agreement regarding the International Deposit of Industrial Designs, also known as the Hague system provides a mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set of fees. The system is administered by the World Intellectual Property Organisation (WIPO).

• The Hague Agreement consists of several separate treaties, the most important of which are: the Hague Agreement of 1925, the London Act of 2 June 1934, the Hague Act of 28 November 1960 (amended by the Stockholm Act), and the Geneva Act of 2 July 1999.
• The original version of the Agreement (the 1925 Hague version) is no longer applied, since all states parties signed up to subsequent instruments. The 1934 London Act formally applied between a London Act states that did not sign up to the Hague and/or Geneva Act in relation to other London Act states until October 201 6.
• Since 1 January 2010, however, the application of this Act had already been frozen. The system allows owners of an industrial design to obtain protection in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs).
• An international registration produces the same effects in each of the designated countries as if the design had been registered directly with each national office unless protection is refused by the national office of that country.
• Countries can become a party to the 1960 (Hague) Act, the 1999 (Geneva) Act, or both. If a country signs up to only one Act, then applicants from that country can only use the Hague system to obtain protection for their designs in other countries which are signed up to the same Act.

For instance, because Japan has only signed up to the 1999 (Geneva) Act, applicants who qualify to use the Hague system because their domicile is in the European Union can only get protection in countries which have also signed up to the 1999 Act or to both the 1999 and 1960 Acts.

Question 10. What is the purpose of design registration? What is not a “design” as per the provision of the Designs Act, 2000?
Answer:

‘Design’ refers to the unique aspects of shape, figure, blueprints decorations or composition of lines or hues or combination thereof given to an article, which may be 2 dimensional or 3 dimensional or in both formats, by any manufacturing procedure or mode.

• The process involved in the creation of the design may be manual, mechanical, automated or chemical, separate or all-inclusive, by which the finished article appeals and can be identified solely by the eye. However, this does not contain any mode or a standard or construction or anything which is in material a mere mechanical device.
• The Purpose of obtaining the design registration under the Designs Act is to safeguard a novel or an innovative design so created which is to be applied to a specific article under the manufacturing process through an Industrial Process or mode.
• At times, we see that the buying behaviour OT the customers towards some articles for consumption is inclined not only by their actual product quality but also by the design of their appearance, e.g., a mobile phone or goggles.
• The main objective of obtaining a design Registration is to make sure that the particular artisan, creator, craftsman, engineer or the designer of that design having a unique appearance is not deprived and deceived of his bonafide reward by some copycats, who might tend to use his design to their goods. The key reasons as to why a business entity needs a Design Registration:

To get an effectual and well-situated legal shield for safeguarding unique designs in India from being imitated or misused.

• To promote and develop creativity and originality.
• It is mandatory compliance for all the companies located in the WTO
• Member nations who have signed the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement.

The important purpose of design Registration is to see that the artisan, creator, or originator of a design having an aesthetic look is not deprived of his due reward by others applying it to their goods.

1. As stated in the definition of the design above, the design does not include:
2. Any Trademark, as defined in Section 2(zb) of the Trademarks Act, 1999, or
3. Any property mark, as defined in Section 479 of the Indian Penal Code, 1860, or
4. Any artistic work, as defined in Section 2(c) of the Copyrights Act, 1957.
5. A painting, sculpture, drawing (including a diagram, map, chart or plan), engraving or photograph, whether or not any such work possesses artistic quality.
6. Any work of architecture i.e. any building or structure having an artistic character or design or any mode for such building or structure.
7. Any work of artistic craftsmanship.

Colours, verbal elements and sounds are examples of what cannot be protected as a design since they are not part of the ornamentation of a product. On the other hand, they may seek protection under trademark law. The designs whose appearance responds exclusively to the technical function of the product.

It is possible that the technical or functional characteristics of these types of designs can be protected through other intellectual property rights (normally through patents or utility models). Designs that go against public order and certain moral standards.

As a general rule, designs that reflect or promote violence or discrimination based on sex, racial or ethnic origin, religion or belief, disability, age or sexual orientation will be denied.

Question 11. XYZ company has ventured into design work. It provides logistics as well as creates architecture design for its clients. They made a three-dimensional diagram for the new corporate office for ABC Company Pvt. Ltd. in Delhi in 2006, and paid the consideration of? 10 lakh for that. However, it was planned in 201 6 to work on it and create infrastructure according to the design. To their surprise, they discovered the same architectural design as created by the other builder in making a commercial complex. What kind of rights are violated and what is the remedy?
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 colour or 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 or 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.

• Section 30 of the Design Act, 2000 read with Rules 32, 33, 34 and 35 of the Design Rules, 2001, recognizes the contracts relating to the assignment of designs and provides the procedure thereof. The Copyright in the design is only protected if the same is statutorily recognized under the provisions of the Designs Act, of 2000.
• Similarly, the rights acquired by third parties by way of assignments or licenses are only made effective if the same is duly registered in accordance with the provisions of the Act and the Rules framed there under. There is no concept of a common law license under design law.
• A registered proprietor can institute a suit for injunction as well as recovery of damages against any person engaged in piracy of the registered design.
• Such legal proceedings can be instituted from the date of registration till the expiry of the copyright. However, in the case of a reciprocity application, the registered proprietor can claim damages only from the actual date on which the design is registered in India.
• If any person commits piracy of a registered design, as defined in Section 22, he shall be liable to pay for a 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/-.
• The suit for injunction/damages shall not be instituted in any Court below the Court of District Judge.
• In a case between Ampro Food Products v. Ashok Biscuit Works, AIR 1973 AP 17, the appellant manufactured biscuits with AP embossed on them. The respondent also manufactured biscuits with identical designs except that the letters AB were embossed on them, in place of AP. The suit claimed an injunction bringing a charge of piracy of design.

Issuing a temporary injunction, the Court held that in such cases the defence cannot argue that the appellant’s registered design was not new or original if no steps had been taken earlier seeking cancellation of the registration of the design.

Descriptive Questions

Question 1. What is design under the Designs Act, of 2000? What are 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 or construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as define 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 designs which are 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;
• Dress-making 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;
• A mere change in size of the article;
• Flags, emblems or signs of any country;
• Layout of designs of integrated circuits.

Question 2. What is the object of registration of designs? What is the duration of design registration? Can it be extended?
Answer:

The objects 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 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.3 What constitutes piracy of a registered design? What penalties have been provided for piracy of a registered design under the Designs Act, of 2000?
Answer:

Piracy of a design means the application of a design or its limitation 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:
• 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 enable the design to be so applied; or
• 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 having applied to it the design or any fraudulent or obvious imitation thereof; or

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.

Penalites: As per Section 22, if any person commits piracy of a registered design, he shall be liable to pay for a payment of a sum not exceeding? 25,000/- recoverable as contract debt. However, the total sum recoverable in respect of any one design shall not exceed? 50,000/.

Question 4. Enumerate the general procedure for registering a design.
Answer.

The procedure for registration of designs is 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 in New Delhi, Mumbai and Chennai. A proprietor may be from India or from a Convention Country.

2 Type Of Application: 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 convention 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.

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: The claim for substitution is made before the design has been registered; and

The right of the claimant shall be created only by:

1. An assignment;
2. Agreement in writing made by the applicant or one of the applicants; or
3. Operation of law; and

The design under consideration shall be identified in the assignment or agreement specifically by reference to the number of applications for registration; or The rights of the claimant in respect of the design have been finally established by a Court.

A request for substitution of 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).