As mentioned above, a design means the features of shape, configuration, pattern, etc. which are applied to an article. An “article”^[2] is defined in the Act as any article of manufacture and any substance, artificial, or partly artificial and partly natural. By this definition “article” also includes any part of an article capable of being made and sold separately.

As such, the design of a part of a product that is invisible during use of the product may be registered as a design, provided that the part is capable of being made and sold separately. However, the part itself must not in any way provide for the use or functioning of the product.

Scope and intent of legislation

What is eligible for registration?

As per Section 4, for registration, a design must be new or original [clause (a)], must not have been disclosed by publication in tangible form or use before the date of filing or priority [clause (b)], must not be significantly distinguishable from known designs or combination of known designs [clause (c)], and must not comprise or contain scandalous or obscene matter [clause (d)].

A design is likely to be rejected if it is found to be materially similar to a publically known design(s). In Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir^[3] the Delhi High Court has reiterated that a design shall not be considered novel, if a materially similar design has been published or registered previously.

Section 4(c) requires that a design be significantly distinguishable from known designs or a combination of known designs. Therefore, even if a design is not identical to a known design or a combination of known designs, it is yet liable to be rejected if it cannot be demonstrated that the design in question is significantly distinguishable. Sections 22(3) and 19(1) respectively provide grounds for making a counterclaim to this effect in a suit for infringement or in an application for cancellation of design. Thus, the design seeking registration should be substantially different from previously known designs.

For the purposes of Section 4, not just designs, other motifs may also be prior art for the purposes of examining novelty of a design in a design application.

Section 4 requires a design to be either new or original. Section 2(g) defines “original” as originating from the author of a design and includes cases “which though old in themselves yet are new in their application”. Accordingly, the section provides that an old design may be considered original if the author of the design applies it in such a fashion as would be considered a new application of the design.

First to file principle

Section 5(1) provides the basis for a first to file principle. It empowers the Controller to register a design on an application of any person claiming to be the proprietor of any new or original design. Section 16 provides the only exception where such a person may lose his design rights to any other person. The circumstances set out are those of wrongful obtaining. Further, Section 6(4) sets out a principle that further reinforces the first to file principle. Obliquely, Section 6(4)(b) gives preference to the first applicant over a second or subsequent applicant even if the first application has not been published at the time of the making of the second application. Once the first application is registered, it may be taken to be as if at the time of making the second application, the first application was valid prior art.

Period of protection

The maximum term of protection of a registered design is 15 years (with a renewal before the expiry of 10 years) from either the priority date or the filing date, whichever is earlier.

Scope of protection

During the existence of copyright in a design, it is unlawful for a third party to unauthorisedly apply or cause to be applied, a registered design (or any fraudulent or obvious imitation thereof) to any article (in the class in which the design is registered), for the purposes of sale; to unauthorisedly import, for the purposes of sale, such articles; publication or exposure, or causing publication or exposure, by a third party, for sale, of an article (in the class in which the design is registered) unauthorisedly embodying a registered design (or any fraudulent or obvious imitation thereof), which is in the knowledge of the third party.^[4]

Section 22(1) sets out what may be considered to be unlawful and therefore, infringement. Each of the clauses of the section provide for dead copies, or any “fraudulent or obvious imitation thereof”. The words, “fraudulent” and “obvious imitation” provide for non-literal infringement of copyright in design. In practice, courts have been fairly predictable in concluding whether non-literal copying of a design should be discouraged.

The scope of a design for the purposes of determining infringement has been elucidated in the M.C. Jayasingh v. Mishra Dhatu Nigam Ltd.^[5] The Madras High Court held that mere variations or modifications which do not substantially alter a previously published shape or design, which any skilled person can make, are not sufficient to bring novelty to the design.

Further, in Alert India v. Naveen Plastics^[6], the Delhi High Court indicated that one of the practical tests to find out the identity or sameness of the design is to find out whether there are substantial differences. These differences cannot be based on purely subjective or utilitarian or aesthetic considerations. The differences must be objective in essential features. A general view of the features of both the designs should be looked into to find out whether one design is as good as the other and the conclusion is to be arrived at by visual examination of the two products.

Therefore, a registered design owner may exercise rights against any design which is not only a dead copy but also a substantially similar design.

Cancellation

Section 19 provides the grounds for seeking cancellation of registration of a design. Such grounds include the design not qualifying as a design under Section 2(d); the design not being new or original; the design not being registrable under the Act; or the design having been previously registered or disclosed.

Passing off

As noted above, even in absence of registration of a design, a registered proprietor can enforce it by way of an action for passing off. To demonstrate passing off, the proprietor will have to prove by way of documentary evidence that:

• the design has garnered goodwill and reputation and is exclusively associated with the proprietor;
• that the other side has made a misrepresentation which has caused or is likely to cause confusion and deception amongst consumers; and
• the proprietor has suffered damage or is likely to suffer damage due to such misrepresentation.

Major recent developments

The Designs Rules, 2001, were amended in 2021 to include startups as a new category of applicants. Fees payable by startups and small entities were brought down to the level of fees payable by a natural person. The 2021 Amendment also made the classification of articles under the Act consistent with the International Classification for Industrial Designs (Locarno Classification) published by the World Intellectual Property Organisation (WIPO).

Historically, the Indian patent office has been known to refuse applications for graphical user interfaces (GUIs). Over the course of time, Controllers have generally relied upon the definition of “design” and “article” under the Deigns Act to refuse registration. Going by the definition of “design” under Section 2(d) of the Act, GUIs were traditionally considered, by their transient nature, to not be a design “applied” to an article, as is required under the Act.

However, the Calcutta High Court on 20-3-2023) delivered a favourable judgment, ruling that GUIs are registrable under the Act. In UST Global (Singapore) Pte Ltd v. Controller of Patents & Designs^[7], the Calcutta High Court has rejected the patent office’s interpretation that GUIs and icons are incapable of registration. The Court has inter alia held that a GUI or icon is a two-dimensional design, whose novelty can be judged as soon as the device is turned on. The Court held that the process of application of the subject design i.e. GUI on the finished article is a mechanical and manual process which falls within the definition of ‘industrial process’ mentioned in Section 2(d) of the Designs Act, 2000.The Court observed that a source code developed by a software developer results in the GUI. The Court noted that this source code is then embedded in the micro-controllers and micro-processors and is displayed in screen by illuminating pixels by electronic means. Therefore, the design is applied to the article by industrial process and means.

Conclusion

The Indian design system continues to evolve, aided by judicial pronouncements, amendments to legislation, as well as administrative changes. Over the course of the last few years, the system has adopted technology to make the interface with stakeholders seamless. The entire filing and prosecution system is now electronic. Hearings are conducted through videoconferences. Indeed, the system saw the worst of the pandemic pass without a flutter. The design system in India reflects a progressive regime and strengthens India’s position as an IP-friendly jurisdiction.

Footnote

[1] Designs Act, 2000, S. 11.

[2] Designs Act, 2000, S. 2(a).

[3] 2014 SCC OnLine Del 821.

[4] Designs Act, 2000, S. 22(1).

[5] 2014 SCC OnLine Mad 16 

[6] 1996 SCC OnLine Del 710.

[7] AID No. 2 of 2019, judgment dated 20-3-2023.

This article was originally published in SCC Online on 11 September 2023 Co-written by: J.V. Abhay, Partner and Jogeshwar Mishra, Partner. Click here for original article

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