Meaning and Registration of Designs

Definition of Design (Section 2(5))

Features of shape, configuration, pattern, ornament applied to any article

According to Section 2(5) of the Designs Act, a design refers to the features of shape, configuration, pattern, or ornamentation applied to an article by any industrial process, which in the finished article appeals to the eye.

Features must appeal to the eye

To qualify as a design under law, the visual features must be such that they are judged solely by the eye, not functional or mechanical.

Example 1. A unique floral pattern embossed on ceramic tiles.

Answer:

The floral pattern qualifies as a design since it is a visual feature and enhances aesthetic appeal.

Patentability of Designs

Novelty and originality

A design must be new or original and not previously disclosed to the public in India or any other country.

Must not be previously published or used

If a design has already been published or used in any country, it is not eligible for registration in India.

Example 2. A company tries to register a phone case design that is already available in foreign markets.

Answer:

The design will not be patentable in India as it lacks novelty due to prior publication.

Registration of Designs

Application to the Patent Office

An application for registration must be filed with the Controller of Designs, including representations of the article and prescribed fees.

Examination and grant of certificate

The Design Office examines the application to check for compliance with legal requirements and issues a certificate upon approval.

Duration of protection (10 years + 5 years extension)

A registered design is protected for 10 years from the date of registration, which may be extended by 5 more years upon request.

Example 3. An industrial design for a new style of water bottle is registered in 2020.

Answer:

The design will be protected until 2030, and with an extension, it can be protected until 2035.

Infringement and Remedies for Designs

Infringement of Design (Section 22)

Reproduction of registered design, importation of infringing articles

Under Section 22 of the Designs Act, infringement occurs when a registered design is copied or applied to any article for commercial purposes without the consent of the registered proprietor. It also includes importation of infringing articles into India for sale or use.

Example 1. A company imports mobile cases that copy a registered pattern used by another Indian manufacturer.

Answer:

This constitutes infringement of the registered design as it involves importation of copies without authorization.

Defences to Infringement

Prior publication

The defendant may claim that the design was already published before the registration date, making the design invalid and unenforceable.

Lack of novelty

If the design lacks novelty or originality, it cannot be enforced against others, and this serves as a valid defence in infringement proceedings.

Example 2. A seller argues that the registered design already appeared in a magazine before the application date.

Answer:

This can be a successful defence if the publication is proven, as it shows lack of novelty.

Remedies for Infringement

Injunction

The court may grant an injunction to restrain the infringer from continuing to reproduce or sell the infringing design.

Damages

The registered proprietor may be awarded compensation for losses suffered due to the infringement.

Account of Profits

Instead of damages, the owner may choose to claim the profits made by the infringer from the use of the design.

Example 3. A court orders a company to stop selling copied handbags and to pay the profits made to the design holder.

Answer:

This is an example of injunction and account of profits being used as remedies for design infringement.