What is a Design Registration ?
Design registration is a protection of industrial designs in India is administered by the Designs Act, 2000 and corresponding Designs Rules, 2001 which came into force on 11th May 2001 repealing the earlier Act of 1911. The Design Rules, 2001 was further amended by Designs (Amendment) Rules 2008 and Designs (Amendment) Rules 2014.
Why we use Design Registration ?
The purpose of Design Registration is to safeguard the product. It covers all the aspects of the product: how it looks and what it does. Trademark Act 1999 protects the trademark. Design Act 2000 protects the design.
What Cannot be Registered As A Design ?
The following items cannot be registered as a design: Books, jackets, calendars, certificates, forms-and other documents, dressmaking patterns, greeting cards, leaflets, maps and plan cards, postcards, stamps, medals. Labels, tokens, cards, cartoons. any principle or mode of construction of an article.
Flow Chart from filing stage of application till Certificate stage
Landmark Cases - Design Act
1. Copyright and Design exclusive from each other for legal purposes /Application of Section 15(2) of the Designs Act Mattel Inc. v. Jayant Agarwalla, IA No. 2532/2008 in CS (OS) 344/2008)
Mattel claims a copyright in their “Scrabble” board. They also claim copyright in the underlying drawings which were used to create the board in the first place. Section 15 (2) applies and the board is incapable of copyright protection. Section 15 (2) reads as below: “Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been produced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.”
In other words, if the work in question (Mattel’s board) could have been registered as a design under the Designs Act, but hasn’t been so registered, then Mattel loses any “copyright” in such work, if such work was produced more than 50 times. In short, Mattel loses both design protection (since it failed to register it as a design) and copyright protection (since it produced the board more than 50 times).
The Delhi High Court directed that the defendants, Agarwala brothers were restrained from using Scrabulous, Scrabble or any other deceptively similar trademark. The brothers cannot even hyperlink to Scrabble. But the court ruled that Mattel did not have a copyright to their famous board game Scrabble.
2. Copyright/design interface MICROFIBERS INC. v. GIRDHAR & Co. & ANR, RFA (OS) NO.25/2006 and MATTEL INC & ORS v. JAYANT AGGARWALLA & ORS, FAO(OS) NO. 447/2008
Delhi High Court reviewed section 15(2) and sought to tease out some of the interpretational anxieties faced thus far. The bench clubbed two appeals which raised the section 15(2) issue: Mattel Inc vs Jayant Aggarwalla and Microfibers vs Girdhar.
Although a copyright in the drawing continues to subsist, a copyright in the design article itself (board) would cease under section 15. In this regard, it bears noting that while a standalone drawing is copyrightable, it will not, ipso facto, merit design protection. Rather, it has to be applied in some way to an article to merit design protection. A design registration is specific to the classes of goods in respect of which it is registered. Interpreting section 15(2) to permit copyright enforcement against the design article itself would render the section otiose. The court suggests a distinction between a work of art and a work of commerce i.e the moment a work of art is applied industrially to an article, it ceases to enjoy copyright protection and is only entitled to a (lesser term) design protection.
3. Artistic work excluded from protection under Designs Act RAJESH MASRANI v. TAHILIANI DESIGN PVT. LTD, AIR2009Delhi44
Section 15(2) of the Copyright Act is applicable to the copyright in any design capable of being registered but has not been registered and the copyright in the said design cease to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process. Section 2(d) of the Designs Act, 2000 does not include any “artistic work” as defined in Clause (c) of Section 2 of the Copyright Act.” Registration of the work is not compulsory nor is a condition precedent for maintaining a suit for damages for infringement of Copyright.
4. Novelty of design/ Mere changes in placement of the plaintiffs’ and the defendants’ products be perceived as sufficient to alter the shape of such products so as to acquire novelty Tarun Sethi & Ors. v. Vikas Budhiraja & Ors. Delhi High Court CS(OS) 1841/2008
With respect to novelty of a design, the court held that a design incorporating a shape/pattern previously published/used or one substantially similar to that is lacking in novelty. Mere variations/modifications that do not substantially alter a previously published shape or design, are not sufficient to bring novelty to the design. References were also made to prior decisions like Kestos Ld. v. Kempat Ld. & Vivian Fitch Kemp (1936)53 RPC139 and Allen West & Co, Ld. v. British Westinghouse Electric and Manufacturing Co. Ld. (1916)33 RPC 137.
In the present matter, the plaintiffs had claimed novelty only in the shape and configuration of the door spring. There were certain features in the plaintiffs’ product that were not present in the defendants’. Existing publications prior to 2006 were found, which proved that capsule-shaped door closer/door hinge were available in the market much prior to the plaintiffs’ registration and there was no difference in the configuration of those earlier products with the plaintiffs’. Hence the latter product couldn’t be said to be materially different from the former. Nor could mere changes in placement of the plaintiffs’ and the defendants’ products be perceived as sufficient to alter the shape of such products so as to acquire novelty.Therefore, the court opined that plaintiff’s registered design No. 202794 was liable to be cancelled for lack of novelty and the defendants could use such a factor as defence by virtue of Section 22(3) of the Act.
5. Distinction has to be drawn between usual trade variants on one hand and novelty or originality on the other B. Chawla & Sons v. Bright Auto Industries [AIR 1981 Delhi 95]
For drawing such distinction reliance has to be placed on popular impression for which the eye would be the ultimate arbiter. However, the eye should be an instructed eye, capable of seeing through to discern whether it is common trade knowledge or a novelty so striking and substantial as to merit registration. A balance has to be struck so that novelty and originality may receive the statutory recognition and interest of trade and right of those engaged therein to share common knowledge be also protected.”