Authored By – Sumit Kumar, University Five Year Law College, Jaipur

A) Introduction

The appearance of anything, whether a human or an object, significantly impacts the observer’s perception. It can be a source of fascination or repulsion. Similarly, the appearance of industrial goods or products plays a crucial role in distinguishing them in a competitive market. This aspect of appearance includes distinct features such as color, shape, configuration, etc. Any distinctive feature of an industrial product that sets it apart is considered a “design.” An innovative and creative design has the potential to revolutionize industries. Though fundamental in form, its inherent efficiency and uniqueness cater to consumer needs. As a creation of the human mind, design is a fundamental component of Intellectual Property Rights (IPR).

In the context of IPR, “design” refers to the visual appearance of a product, including shape, pattern, configuration, and color applied to an article or product. Design is essential for both consumers and manufacturers, as it helps consumers choose their preferred products while granting manufacturers exclusive rights to produce and sell their designs without fear of duplication. Businesses prioritize appealing designs to add value to their products and ensure healthy returns on investment. Design law promotes fair business competition while protecting the rights of creators. Thus, design law holds significant importance in today’s competitive world.

Keywords: IPR, Design Act 2000, Design Rules 2001, Design (Amendment) Rules 2021, Indian Design Law.

B) Meaning, Definition & Explanation

The statutory implications of design and its related aspects are governed by the Designs Act, 2000 and Design Rules, 2001. The Act aligns with the protection standards outlined in the TRIPS Agreement and other international frameworks.

As per Section 2(d) of the Designs Act, 2000, “design” means:

“Features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether in two dimensions or in three dimensions, by any industrial process; such features being judged solely by the eye.”

However, the scope of “design” does not include:

• The mode or principle of construction.
• A mere mechanical device in substance.
• Trademark, property mark, or artistic work.

Design is recognized as an aesthetic feature judged solely by the eye, excluding functional aspects. It applies to an article rather than the article itself. Protection under the Act extends to iconic designs such as the Nokia mobile shape, Pepsi bottle, etc. Design protection is particularly relevant in industries such as electronics, automobiles, and fashion, where aesthetics significantly influence consumer preferences.

Need for Registration of Design

The primary objective of design registration is to ensure that the creator, proprietor, or originator of a design receives due recognition and reward for their creativity.

As per Section 2(g) of the Act, originality of a new design is determined by its first-time creation by the proprietor or its new application to an existing design.

Essential Requirements for a New Design (Section 4, Designs Act, 2000)

• It should be novel or new.
• It should not have been anticipated by publication or use anywhere in the world (including India) or previously claimed in another application (not part of the public domain).
• It must be substantially distinguishable from known designs or combinations of known designs.
• It must not contain any obscene or scandalous matter.

As per Section 5 of the Act, any natural or legal person who claims to be the proprietor or creator of a new or original design can file for registration. Design protection ensures brand identity, market exclusivity, and prevents infringement.

As per Section 6 of the Act, registration of design can be done for all or any articles in a class of articles. Rule 2(e) of the Design Rules, 2001 allows creators to register designs for a particular article or a set of articles with similar traits sold together.

C) Historical Background / Evolution

• Paris Convention for the Protection of Industrial Property, 1883 was the first international convention emphasizing industrial property protection.
• In India, the first design protection legislation was introduced under the Patterns and Designs Protection Act, 1872 during the British regime, granting exclusive rights for manufacturing, selling, and using new patterns and designs.
• The Inventions and Designs Act, 1888 succeeded the 1872 Act and introduced separate provisions for designs, based on UK design laws.
• The British Patent and Designs Act, 1907 became the foundation for the Indian Patent and Designs Act, 1911, which established a dedicated office for design law enforcement.
• The 1911 Act was amended in 1930 to change the eligibility criteria for design registration from “new and original” to “new or original.”
• In 1970, the Patents Act, 1970 was enacted, separating patents from design law.
• India joined the World Trade Organization (WTO) in 1995, necessitating alignment of domestic design laws with the TRIPS Agreement. Consequently, the Designs Act, 2000 was enacted, repealing the 1911 Act and taking effect on May 11, 2001.
• The 2000 Act expanded design protection, addressing developments in science, technology, and commerce.

D) Comparison with Other Countries

European Union (EU) Nations

The EU design laws and the Indian Designs Act, 2000 share similarities and differences:

• EU design laws introduced in 2003 led to harmonized and sophisticated regulations.
• The EU follows a two-tier protection system:
  • Registered Community Design (RCD) – Long-term protection.
  • Unregistered Community Design (UCD) – Short-term protection.
• EU design protection includes “movement, animation features, and visual representation,” making it broader than India’s definition.
• “Originality” is a primary criterion in both India and the EU.
• The EU has two key tests:
  • Novelty Test – Ensures uniqueness compared to previous designs.
  • Individual Character Test – Ensures distinct consumer perception.
• EUIPO (European Union Intellectual Property Office) handles multi-nation design protection, unlike India, which has one central authority.

Despite India’s Design Act, 2000, EU laws provide clearer and stricter regulations with detailed provisions and concurrent jurisdictions.

E) Legal Provisions / Procedure / Criteria

The Design Act, 2000 is India’s primary legislation governing design law.

Key Features of the Act:

1. First-to-File System – Prioritizes early registration to establish ownership rights.
2. Locarno Classification – India adopted the international classification system in 2019 for transnational design uniformity.

Rights Conferred by Design Registration:

• Exclusive Rights – The registered proprietor gains an exclusive right to apply the design to specific articles.
• Protection Against Unauthorized Use – Legal remedies are available against design piracy or duplication.
• Transferability – Rights over a registered design can be assigned or licensed.

Duration of Protection (Section 11, Designs Act, 2000):

• 10 years from the date of registration (or priority date if applicable).
• Can be extended by 5 years upon request.

Remedies Against Design Infringement (Section 22, Designs Act, 2000):

• Unauthorized use, duplication, or imitation without written consent is design piracy.
• The minimum fine is ₹25,000, and the maximum is ₹50,000 per infringing act.
• The Controller of Designs adjudicates infringement cases.

F) Case Laws / Precedents / Overruling Judgments

1. Bharat Glass Tube Limited v. Gopal Gas Works
   The court held that the primary objective of the Designs Act, 2000 is to protect the Intellectual Property Rights of original designs, ensuring an advantage to the innovator for research and effort applied in creating a new and distinct design. The court emphasized that protection is intended to advance industries and help them progress in a highly competitive environment. The term “new or original” in Section 4 signifies that a design must not have been published anywhere or made known to the public. A design is perceived by its creator in their mind and is then reproduced in an identifiable manner for application to an article.

2. Wimco Ltd, Bombay v. Meena Match Industries, Sivakasi
   The court clarified that the expression “publication” means the opposite of being kept secret. Any design is considered published if it is no longer a secret.

3. Amitabh Bachchan Corporation Limited v. Suresh Nanda and Ors. (2008)
   This case is significant for understanding the novelty in design. The plaintiff contended that a particular watch design was unique, whereas the defendant challenged its novelty, citing similar designs in the market. The court stated that a novel design must not have been previously published or publicly disclosed in India or any other country.

4. R. Jugulkishore v. M/s. Rawatmal Dugar (1971)
   The court ruled that the basis of novelty is not absolute originality. Even a small alteration or variation capable of producing a new visual effect or result can make a design unique.

5. Disney Enterprises Inc. v. Prime House Wares Ltd. (2014)
   This case addressed the issue of international registration of industrial designs in India for the first time. The court found overlapping of trademark and design infringement, holding that the trademark rights of the plaintiff (Disney) were infringed, but the designs of Disney characters were not.

6. Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure (1999)
   The Delhi High Court held that mere form and shape are insufficient to determine a design’s novelty. The ultimate test lies in observing the difference between the previously published design and the registered design with an instructed eye.

7. Reckitt Benckiser (India) Ltd. v. Wyeth Ltd. (2013)
   The Delhi High Court ruled that if it can be proved that a design was disclosed or published in India or any foreign country under Section 4(b), then its registration in India would be cancelled, serving as a defense against infringement claims.

8. Shree Vari Multiplast India Pvt. Ltd. v. Deputy Controller of Patents & Designs & Ors. (2018)
   The court held that design laws do not prohibit competitors from using the same methods or principles of construction to create competing designs, provided they do not have the same shape or configuration as the original design.

9. M/S Crocs Inc. USA v. Liberty Shoes Ltd. & Ors.
   The Delhi High Court emphasized that the concept of originality must remain the sole essential criterion in determining design rights.

G) Amendments / Additions / Repealing

1. Designs (Amendment) Rules, 2014

These rules did not make significant procedural changes but introduced modifications in the fee structure and administrative functions. Some key changes were:

• Classification of Applicants:
  The applicants were categorized into three groups:

  • Natural Person
  • Other than Natural Person – Small Entity
  • Other than Natural Person – Others (excluding Small Entity)
    This classification was absent in earlier rules and was introduced along with different fee structures for each category.

• MSME Act, 2006 Compliance:
  In line with the Micro, Small, and Medium Enterprises Development Act, 2006, a definition for ‘person other than a natural person’ was provided, including small entities under its scope.

2. Designs (Amendment) Rules, 2021

Effective from January 25, 2021, this amendment brought several variations to the Designs Act, 2000 and Design Rules, 2000:

• Registration Requirements:
  The Locarno Classification (13th edition) was implemented, expanding the scope of registrable designs from 31 classes (10th edition) to 32 classes and 237 subclasses. This change aimed to simplify the registration process and align it with international standards.

• Fast Track Examination Facility:
  A fast-track examination procedure was introduced, allowing applicants to request expedited processing upon payment of an extra fee.

• Digital Designs:
  The amendment recognized digital, graphical user interface (GUI) designs, graphic symbols, and logos as registrable subject matter.

• Definition of “Startup”:
  Section 2(eb) introduced the term “startup”, referring to entities recognized under the Startup India initiative, including foreign entities meeting specified turnover and incorporation criteria.

• Fee Reduction for Small Entities:
  Fees for small entities were reduced to be on par with those of natural persons and startups, marking a 50% reduction to encourage design registrations.

H) Challenges to Indian Design Laws

Despite the statutory framework, India’s industrial design laws face several challenges:

A. Lack of Awareness

Many SMEs, unorganized designers, and informal sectors are unaware of design registration. Limited access to legal resources results in a lack of motivation to protect their designs.

B. Delay in Registration

Although the process is uniform, administrative inefficiencies such as staff shortages and high backlogs lead to delays. This particularly affects industries like fashion and textiles, where delays increase the risk of imitation or piracy.

C. Design Piracy

Design imitation and piracy are rampant due to the high cost of original goods and expensive legal proceedings. Many designers lack financial resources to pursue legal action.

D. Procedural & Enforcement Issues

• Burdened Judiciary: The Indian judiciary is overwhelmed with cases, making it difficult to enforce design laws effectively.
• Absence of Specialized IPR Courts: IPAB (Intellectual Property Appellate Board) was abolished in 2021, transferring IP cases to high courts, which lack subject-matter expertise.
• Limited Remedies: The Designs Act, 2000, primarily provides monetary damages and injunctions, which are often insufficient to deter offenders.

E. Difficulty in Proving Infringement

It is challenging to distinguish between inspiration and imitation, making it hard to prove design infringement in court.

F. Transnational Design Protection

Indian design laws do not sufficiently address international design protection, creating difficulties for Indian manufacturers operating globally.

G. Lack of Technological Integration

There is minimal use of technology in design registration and protection. Digital designs and 3D printing need greater legal recognition.

I) Solutions to Address Challenges in Design Laws

1. Technology Integration:

   • AI and Blockchain can enhance design verification and security.
   • A uniform online registration system can streamline processes.

2. Specialized Design Law Courts:

   • Setting up specialized IPR tribunals can reduce case backlogs.

3. Awareness Campaigns:

   • Educating SMEs and designers on design protection.

4. Stronger Penalties for Infringement:

   • Introducing strict punitive measures can reduce piracy.

5. Alignment with Global Standards:

   • Incorporating international design protection norms can help Indian designs gain transnational recognition.

J) Conclusion & Comments

Design registration in India is crucial for businesses to protect their creativity and gain a competitive advantage. The Designs Act, 2000, aims to promote innovation and safeguard aesthetic originality. However, legal loopholes, procedural delays, piracy, and enforcement issues pose significant challenges.

With rapid technological advancements like digital design and 3D printing, the scope of design protection is expanding. Strengthening legal frameworks, integrating global standards, and leveraging technology can ensure a robust and efficient design protection regime in India.