Protection and Enforcement of Design Rights in India

Introduction

An innovative design has the implicit to revise the assiduity. Simplest designs with their essential effectiveness and oneness have provisioned to consumers' introductory requirements for decades. Infrequently known notorious designs which might have skipped one's attention, but not their requirements include the ball- point pen, lissome straw, anglepoise beacon,Post-it ® notes and Tupperware ®, to name a many. So, why is design an essential criteria for a composition, and does it warrant separate legal protection? The compass of the composition attempts to punctuate the growing significance of design rights and its current script in India.

What's Design?

Design rights cover the new features similar as shapes, configuration, colour combination, face decoration, composition of lines, or patterns of a composition, whether in two dimensional or three dimensional or in both forms, which give an aesthetic element rather of a functional quality. In India, form, execution and enrollment of an artificial design is governed by the Designs Act, 2000 (hereinafter pertained to as the Act'), along with its corresponding Designs Rules, 2001. The Act has been legislated in accreditation with the minimal compass of protection granted to designs as per Agreement on Trade-Related Aspects of Intellectual Property Rights ( Passages), while conforming to transnational protection norms. As per the Act, a' design includes features of shape, configuration, pattern, garnishment or composition of lines or colours applied to any composition whether in two dimensional or three dimensional or in both forms, by any artificial process or means, whether primer, mechanical or chemical, separate or combined, which in the finished composition appeal to and are judged solely by the eye

.Compass of protection under the Act excludes the following

any mode or principle of construction;

anything which is in substance a bare mechanical device; and

any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any cultural work as defined in clause (c) of section 2 of the Copyright Act, 1957.

Any person ( natural or juridical), claiming to be the owner of any new or original design, can file for enrollment of similar design2

.Design Filing Trends-India

The Annual Report (2017-2018) released by the Controller General of Patents, Designs and Trademarks (CGPDTM) reported an increase of15.9 in design operation forms over the last time.

Applied to an Composition

Besides the abecedarian criteria of furnishing a visual appeal to the final consumer, a design must be applied to an composition and not the composition itself, in order to seek protection under the said enactment. Composition means any composition/ substance, whether artificial or incompletely artificial and incompletely natural, and able of being made and vended independently similar as the iconic designs of Apple's iPhone (Reg. No. D0842298) and Volkswagen's Beetle (Reg. No. D0774952). As per Section 6 of the Act, a design may be registered in respect of any or all of the papers in a prescribed class of papers, and enrollment of designs for multiple papers in the same class isn't barred. Therefore, if an composition is able of being manufactured or vended independently and visually appeals the eye, a design can be registered independently in respect of that composition. Design protection can also be claimed for a' set of papers, which have same characteristics and are generally vended together4. This ensures a wide dimension of protection to the registrant and latterly, helpers in grueling violation of a registered design in respect of same/ analogous papers.

Design Registration-India

The Act purports to cover new or original designs, able to be applied to a particular composition that can be manufactured by an artificial process/ means. Designs play an integral part in a consumer's shopping experience, as frequently times, the papers are bought on both utilitarian and aesthetic aspects. The important purpose of design enrollment is to insure that the handworker, creator, originator of a design having aesthetic look isn't deprived of his bonafide price by others applying it to their goods. Hence, originality of a new design has been supposed as fabrication of a design from the author of

. similar design and includes the cases which though old in themselves yet are new in their operation. Analogous obiter was cited by the Hon'ble High Court in Shree Vari Multiplast IndiaPvt.Ltd. v/ s Deputy Controller of Patents & Designs & Others that the law of design right doesn't help challengers from using same styles or principle of constructing to produce contending designs, so long the contending designs don't have the same shape or configuration as that of the original design of the owner.

Thus, some essential criteria for design enrollment, as per Section 4 of the Act, authorizations a design to be

.New or new;

Has not been anticipated by publication or use anywhere in the world, including in India or previous claimed in operation away i.e. doesn't form a part of public sphere or state of the art;

Significantly distinguishable from known designs or combination of known designs; and

Shouldn't contain any libelous or stag matter

The subtext is apparent on a bare perusal of the provision that the aspirant for enrollment makes a protestation on a specified form, in lieu of the design for which enrollment is sought, and that the same isn't vulnerable to any condition as quested under Section 4 of the Act.

Locarno Bracket

The Locarno Agreement was first introduced in 1968 as a criterion for invariant transnational bracket of goods for enrollment of artificial designs. The Bracket houses classes andsub-classes of alphabetically-listed goods. With India's formal accession to the Locarno Bracket Agreement in June, 2019

. Representation of a design

In order to effectively apply one's design rights, it's material to represent all the rudiments of a design.However, separate operations can be filed under the Act, If a design's features are capable of isolation and each fulfils the essential criteria for enrollment. In Vega Auto Accessories (P)Ltd. vsS.K. Jain Bros. Helmet (I) Pvt, the Hon'ble Court editorialized that while comparing two designs, their sameness of the features doesn't inescapably mean that the two designs must be identical in all the aspects and should differ on none. Rather they can be mainly the same indeed.

Enforcement of Design Rights

Duration of protection

Once a design meets the statutory conditions, it's registered and the owner of the design acquires a brand over that design which lasts for a duration of 10 times from the date of enrollment (in cases where claim to precedence has been allowed, the duration is 10 times from the precedence date), farther extendable to an fresh period of 5 times upon a request made within the said protection period. The date of enrollment, except in case of precedence, is the factual date of form of the operation. In case of enrollment of design with precedence, the date of enrollment is the date of making an operation in the complementary country.

Violation

A registered proprietor of a design acquires exclusive rights to apply the design in respect of composition (s) for which enrollment is sought for. A fraudulent or egregious reproduction of the design thereof, in respect of an analogous composition, for the purpose of trade or importation of similar composition, without the written concurrence of the registered owner, amounts to pirating of a registered design. Publication or exposing similar papers for trade with knowledge of the unauthorized operation of the design to them also involves pirating, attracting financial damages and instruction reliefs. A suit for violation of brand in design or pirating of registered design shall be filed before the Controller of Designs, and shall retain powers of a civil court in disposing off the same.

Marking of an composition to gain Relief under the Act

It's the duty of the registered proprietor of a design to fix on his composition (s) on which registered design has been applied, with the specified mark or words or numbers, which expressly denote that such a design has been registered with the Controller. A failure to do so renounces the right to file a claim of violation and damages in the future. In such a case the registered proprietor must show evidence beyond reasonable distrustfulness that –

All necessary way to mark the composition were taken; or

Violation took place after entering knowledge of the brand actuality

Imbrication of protection vis-a-vis Design Rights

Design rights are notoriously notorious for lapping with other IP rights inter alia imprints. Although, compass of protection extends only to the aesthetic features of a design and not to functionality, unlike under patents which grant protection to inventions performing in technological advancements and functionality thereof.

By description, the registered owner of a design acquires a brand in the said design. There's no contemporaneous protection for a design under the Copyright Act and the Designs Act, as Section 15 (1) of the Copyright Act bars brand protection to a registered design. Brand in an unrecorded design would also cease once the design has been reproduced further than 50 times by an artificial process by the proprietor or with his license, by another person.

Design Protection under the Paris Convention

India is one of the countries signatory to the Paris Convention. Thus, the vittles for the right of precedence are applicable. Grounded on a regular operation first filed in any one of the constricting states, the aspirant may, within a time- period of not further than six months (from the date of filing the first operation in India), apply for design protection in other constricting countries. The ultimate operation will be treated as if it had been filed on the same day as the first operation.

Penalty and Compensation

In reference to Section 22 (2) of the Act, a base quantum is handed by the legislation to the displeased party as statutory compensation i.e. a minimum of INR, which goes outside of INR at present. The party also has the option to file a suit for recovery of damages grounded on the accounts of factual gains, alongwith instruction. In the recent case of Steelbird Hi-Tech IndiaLtd.vs. Asia Fiberglass Products & Anr., wherein the Defendant was engaged in manufacturing and trading of helmets with identical design as those of the Plaintiff's. It was contended that due to the oneness and novelty of the helmet's design, the Plaintiff's product had acquired a substantial character in the request, both India and abroad and is solely associated with the Plaintiff alone. Although, a fair observation that the design of a helmet may be confined to certain shapes, the Hon'ble Court passed an ex parte endless instruction, alongwith annuity to the Defendant's gains worth over INR 96 lacs. The case highlights the deficit in the provision and the judicial review exercised to amend and interpret the applicable law in question as statutory compensation under Section 22 leaves the party open to admit a many pennies as compared to the factual losses and damages suffered, and the damages offered in a suit would rest entirely on the Court's discretion upon producing an accurate account of infringer's gains.

Conclusion

Designs play a pivotal part in visually discriminating one's products from its challengers and with the rise of competition in the assiduity, guarding one's designs is material to attain an edge in the assiduity. The criteria of visual appeal to be a design, leaves and print in the consumer's mind and over the time, associates with the proprietor alone. The Designs Act, 2000, was formulated with an intent to promote invention and creativity in sync with the global artificial and technological sector. The niche and expansive frame, with its streamlined operation process and period emendations, ensures possessors/ possessors are awarded statutory rights, in harmony with transnational covenants and agreements similar as the 2014 correction to the Designs Rules which brings in' small reality'as a new order of aspirant in addition to natural person. Also, we also look forward to having the Launch-ups included in the list of aspirants in the Indian Design Laws.