SEM VI Intellectual Property Rights-II – Unit IV Class Notes

These LLB Semester VI class notes for Intellectual Property Rights-II Unit IV cover the statutory framework of the Designs Act, 2000 in India, detailing design definitions, registration criteria, term of copyright in registered designs, piracy under Section 22, legal remedies, the statutory overlap with copyright law, and distinctions among major IP regimes.

Introduction and Legislative Framework of Designs Law

Industrial design law in India is governed by the Designs Act, 2000, which repealed and replaced the archaic Designs Act, 1911. The primary statutory object of the Designs Act, 2000 is to protect novel, original aesthetic designs applied to articles manufactured through industrial processes, thereby encouraging commercial innovation, product differentiation, and artistic creativity in industrial manufacturing.

Under Section 2(d) of the Designs Act, 2000, a 'design' is defined as 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.

The definition expressly excludes any mode or principle of construction, any mechanical device or functional mechanism, any trademark defined under the Trade Marks Act, 1999, any property mark defined under the Indian Penal Code, and any artistic work defined under Section 2(c) of the Copyright Act, 1957.

Essential Requirements for Design Registration

To qualify for registration under the Designs Act, 2000, an industrial design must satisfy several mandatory legal criteria before the Controller General of Patents, Designs and Trade Marks:

• Novelty and Originality: The design must be new or original. Novelty means the design has not been disclosed to the public anywhere in India or abroad prior to the date of application for registration. Originality implies that the design originated from the author or creator, even if based on existing shapes combined in an unprecedented aesthetic manner.
• Visual Appeal (Judged Solely by the Eye): The design must be capable of being appreciated visually by the consumer. It must possess aesthetic value distinct from the utilitarian function of the article.
• Application to an Article: A design cannot exist in the abstract. It must be applied to an article as defined under Section 2(a) through an industrial manufacturing process.
• Non-Functionality: Design protection extends solely to outward visual appearance. Purely functional shapes or designs dictated entirely by mechanical utility are ineligible for design registration.
• Not Contrary to Public Order or Morality: Under Section 5, designs that contain scandalous, obscene, or contrary-to-public-order matter are strictly prohibited from registration.

Prohibition of Registration Under Section 4

Section 4 of the Designs Act, 2000 establishes explicit statutory prohibitions against registration. A design is strictly barred from registration if it:

1. Is not new or original;
2. Has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where priority is claimed, prior to the priority date of the application;
3. Is not significantly distinguishable from known designs or combinations of known designs;
4. Comprises or contains scandalous or obscene matter.

Procedure for Registration of Industrial Designs

The process of obtaining design registration in India follows structured administrative stages:

• Application Filing: The applicant submits Form 1 along with prescribed statutory fees and four copies of representations of the design illustrating front, top, side, and perspective views. The application must specify the appropriate class under the Locarno Classification system.
• Formal and Substantive Examination: The Patent Office conducts an examination to verify whether the design meets novelty standards, complies with classification rules, and does not fall within statutory bars under Section 4.
• Removal of Objections: If objections are raised by the examiner, the applicant must respond and remedy defects within six months (extendable by three months upon application).
• Registration and Publication: Upon acceptance, the Controller registers the design in the Register of Designs and issues a Certificate of Registration. The registered design is published in the Official Journal to notify the public.

Term of Copyright in Registered Designs

Under Section 11 of the Designs Act, 2000, registration confers upon the registered proprietor 'copyright' in the design. In this context, copyright signifies the exclusive legal right to apply the design to any article in any class in which the design is registered.

The initial statutory term of copyright in a registered design is ten years from the date of registration. Before the expiration of this initial ten-year period, the registered proprietor may apply for an extension by paying the prescribed renewal fee. The extension is granted for a second period of five years, bringing the total maximum duration of design protection to fifteen years, after which the design enters the public domain.

Piracy of Registered Designs Under Section 22

The unauthorized use, copying, or fraudulent imitation of a registered design during the subsistence of copyright constitutes 'piracy of registered design' under Section 22 of the Designs Act, 2000. Piracy occurs when any person, for the purpose of sale, applies or causes to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, without the written license or consent of the registered proprietor.

Section 22 also makes it unlawful to import or publish for sale any article knowing that the design or an obvious imitation has been applied without the owner's consent.

Judicial and Civil Remedies for Infringement

The registered proprietor can initiate civil proceedings before the District Court or High Court to seek the following statutory remedies under Section 22(2):

• Interim and Permanent Injunctions: Restraining the defendant from manufacturing, marketing, or selling the infringing articles.
• Statutory Penalty: Recovery of a sum not exceeding Rs. 25,000/- for every contravention subject to a maximum of Rs. 50,000/- in respect of any one design as a contract debt under Section 22(2)(a).
• Damages and Account of Profits: Alternatively, under Section 22(2)(b), the plaintiff may elect to bring a suit for the recovery of actual damages sustained and for an account of profits earned by the infringer.
• Delivery Up and Destruction: Seizure and destruction of infringing goods, dies, and promotional materials.

In modern practice, dispute resolution mechanisms are increasingly deployed alongside court litigation, drawing on principles of intellectual property litigation and alternate dispute resolution to resolve industrial design conflicts efficiently.

Interplay Between Designs Law and the Copyright Act 1957

A critical area in intellectual property jurisprudence is the statutory boundary between design protection under the Designs Act, 2000 and copyright protection for artistic works under the Copyright Act, 1957. This interface is governed by Section 15 of the Copyright Act, 1957:

• Section 15(1): Copyright does not subsist under the Copyright Act in any design which is registered under the Designs Act, 2000.
• Section 15(2): Copyright in any design which is capable of being registered under the Designs Act, 2000, but which has not been so registered, ceases as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or with his licence by any other person.

This statutory threshold prevents double protection and compels commercial creators to seek formal registration under the Designs Act if they intend to exploit an artistic work industrially beyond fifty copies.

Powers and Duties of the Controller General

The Controller General of Patents, Designs and Trade Marks functions as the principal statutory authority administering the Designs Act. The Controller exercises extensive administrative and quasi-judicial powers:

1. Power to Register or Refuse Registration: Hearing applications, examining novelty, and issuing formal registration orders or refusals under Section 5.
2. Power to Cancel Registration: Entertaining cancellation petitions under Section 19 on grounds of prior publication, lack of novelty, or wrongful registration.
3. Power to Rectify the Register: Correcting clerical errors, updating proprietorship records, and maintaining the public Register of Designs under Section 31.
4. Quasi-Judicial Authority: Summoning witnesses, receiving evidence on affidavits, awarding costs, and reviewing decisions under Section 32.

These regulatory mandates are essential study components in professional legal training, intersecting with commercial corporate law and CS executive study modules.

Distinction Between Design, Trademark, Copyright, and Patent