Decoding IPR

Ambit of Protection of a Product Design Under the Design Act, 2000 

Effective from May 11, 2001, The Designs Act, 2000  replaced the outdated 1911 law, providing more robust protection for registered designs and facilitating design activities. The 2000 Act introduced a streamlined registration process and addressed various aspects such as extension periods, rights of registered proprietors, penalties for infringement, and the roles of Design Controller and examiner.

Over time, the 2000 Act underwent multiple amendments, incorporating additional crucial provisions aiming to refine and strengthen the legal framework, covering aspects such as the period of limitation, reports by the Controller, publication periods, objections, and the issuance of certificates of registration. The evolving nature of the legislation reflects ongoing efforts to adapt to the changing landscape of design protection in India.

The sole purpose of this Act has been understood to be to protect the Intellectual Property Rights of such person who holds the original design of a product for a period of 10 years (and an optional extended 5 years, at the discretion of the designer). This is to ensure the benefits of research and labour dedicated to their fresh and unique designs. Further, it also discusses the dos and don’ts to be followed to protect their designs from fraud, acts intending to breach faith, etc.

In an age where design determines factors such as revenue generation, competition, market survival, etc., protecting one’s design becomes paramount. To ensure the protection of design applied to products and sold for commercial purposes, it is important to understand the extent to which such designs are secure and the precautions one is required to follow to ensure such watertight protection and avoid any uncalculated losses. 

Given how fast-paced today’s world is, how products are designed to facilitate convenience has changed drastically and has become more abundant. In such a scenario, protecting individuals’ designs and preventing unfair trade, breach of faith, etc., enforcing a protective framework becomes necessary. Through the years, judicial precedence has reinforced this belief and ensures equity.

One of the noteworthy features of the Act of 2000 is that it excludes “artistic works” of product designs under its ambit. “Artistic works” are protected under the Copyright Act alone while the Design Act governs only “designs”. These two are not interchangeable under any circumstance as copying a drawing (which could potentially qualify as ‘artistic work’ could be used to create a shape with different configurations and colors, etc.) would still infringe the rights of the original designer.

It is essential to understand that a design used for commercial purposes will be subject to different timeframes of protection. When a design is used as the basis for designing an article by its application by an industrial process or means, meaning thereby an article other than the artistic work itself in a two or three-dimensional form, it would enjoy a lesser period of protection of copyright under Section 11 of the Designs Act, 2000, if registered as a design under that Act, and if not so registered (despite being registrable), would cease to enjoy any copyright after more than fifty such applications, under section 15(2) of the Copyright Act, 1957.

Now arises the question of whether a registration of a design anywhere in the world would render the same design (with or without minor modifications) an infringement of that product’s design. The court affirmed in Reckitt Benckiser (India) v Wyeth Ltd., that the prior disclosure of a design in a foreign nation doesn’t automatically invalidate a registered design in India. It underscored the Designs Act of 2000’s purpose to safeguard unique and original designs, regardless of their previous exposure in other countries.

This ruling highlights the principle that the Designs Act aims to protect distinctive and original designs within the jurisdiction of India. Merely disclosing a design in foreign countries does not serve as a basis for rejecting the registration of the design in India. The court’s decision reinforces the idea that each country’s intellectual property laws operate independently, offering protection based on the design’s merits within the specific legal framework of that country.

Section 44 of the law states that if someone registers their design in a foreign country, they have six months to apply for registration in India. If the application in India is made within this time frame, the priority date for the Indian registration will be the same as the date of the foreign registration. If the design is registered in India after this six-month period, but within a reasonable time, the priority date remains the date of the foreign registration. However, if there is no application in India within the six-month period and the design becomes public during this time, it can be considered as prior publication.

Section 4(b) clarifies that public disclosure within the six-month window will not affect the validity of the registration. However, if there is no application in India within this period, the design’s public disclosure abroad could be used as a defense in infringement proceedings. In summary, if a design registered abroad is not applied for registration in India within six months, public disclosure of the design abroad during that time can be a valid defense against infringement in India.

Sections 4, 5(1), and 19 emphasize that for all designs for a product to be capable of being given protection, it must be “new” and “original”. “New” has not been defined in the Act due to the ease of understanding what it constitutes introduced to the public domain (with reference to Section 4(b)) for the first time by the designer), but “original”, requiring elevated context, has been defined under Section 2(g) of the Act – this originality is not strictly newness in the shape of the product available in the public domain, however, there ought to be an element of originality to the existing design giving a new twist to the existing design, thereby giving it an intellectual property right. If a situation arises where a design that was intended to be a secret is brought into the public domain on account of a breach of faith, the newness of the design will not be endangered at the time of registering such design. The purpose of Section 16 is said to be to narrow the normal meaning of the public domain. However, once a design is introduced to the public domain (not restricted to publication), in the absence of a breach of faith, the newness of such design is no longer existent. It can be inferred thus that the most important aspect of availing protection under the Act for a product is to ensure the design’s newness and originality. 

The issue then arises that although the original design has been made aware to the public, certain elements alone are changed. In such cases, the courts have held that despite the registered design not being infringed, the trade dress, color scheme, etc., may be misleading to the companies’ customers and can be categorized as passing off. Therefore, compensation may be demanded for such passing off the original design. This is an available remedy through judicial precedent to safeguard original designs and prevent unfair competition through design imitation.

Section 19 (cancellation of protection) and Section 22 (piracy) are independently operational because under the former, any person can call for the cancellation. With the latter, it is the original artist/ designer who calls for the piracy of such product’s design.

Overlap of the Copyright Act and the Design Act 

Section 15 of the Copyright Act of 1957 has specified that if a design has been registered under the Design Act of 2000, it loses immunity under the Copyright Act automatically and is governed by the Design Act alone. However, when a design has been produced more than 50 times for commercial purposes, the person also loses their existing copyright. 

In the case of Microfibres Inc vs Girdhar & Co &Anr., it was established that if an artistic painting gives rise to a design that is not registered and is reproduced less than 50 times, only the copyright for that specific design is forfeited, while the copyright for the original work, the painting, remains intact. This interpretation implies that the legislature prioritizes protecting the author’s original work over industrially produced designs. An issue arises due to the Copyright Act not explicitly recognizing copyright specifically applied to the design of an article, leading to concerns about faulty application.

In the case of Ritika Private Limited vs Biba Apparels Private Ltd, the Delhi High Court directly applied the Microfibres ruling. The plaintiff Ritu did not register her sketches and drawings under the Designs Act. As the reproduction exceeded 50 times, she was denied any copyright or design infringement claims against the defendants.

Contrastingly, in Rajesh Masrani vs Tahiliani Design Pvt Ltd, the plaintiff was granted protection against infringement since the copy threshold of 50 was not crossed. These contrasting outcomes highlight the dilemma created by the legal provisions. The issue of copyright needs to be determined when the artistic work is created, not based on subsequent replication.

The matter of determining the ‘intention of the creator’ gained prominence in 2017 during a case in which the plaintiff was denied copyright for industrial drawings of an automated twisted lock because they were eligible for registration under the Designs Act.

Copyright has traditionally been considered an inherent right of the artist, not requiring mandatory registration. In contrast, the Designs Act mandates compulsory registration for a design to receive protection under the Act. The court’s current approach challenges the long-standing principle that copyright is inherently granted to artists without the need for registration.