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A Comparative Analysis of the Designs Act 1911 and the Designs Act 2000

Written by: Reshma Abraham
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The Designs Act of 1911 was passed by the then British Government of India and since then extensive amendments have been made in the Designs Act. In the meanwhile India has made tremendous progress in the field of science and technology. There has been considerable increase in the registration of designs. To provide more effective protection to registered designs and to promote design activity it has become necessary to make the legal system of providing protection to industrial designs in a more efficient manner. It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs. To achieve these objectives and in order to repeal the Designs Act, 1911 which has been extensively amended, the Designs Bill was introduced in the Parliament and the Designs Act of 2000 was passed.

Analysis of the Difference between the Act of 1911 and the Act of 2000 based on Case study Cases relating to Designs Act, 1911:

A) Ampro food products v. Ashok Biscuit Works (AIR 1973 AP 17)
In the above case, the appellants and the respondents manufactured biscuits. The appellant's biscuits have embossed on them a certain design in the centre of which appear the letters " AF". The design is registered under the Design act, 1911. The respondent's biscuits also have embossed on them an identical design except that the letters " AB" appears instead of the letters "AF".The appellants filed a suit for injunction claiming that the respondent had committed piracy of design. Pending disposal of the suit, they sought a temporary injunction. The learned additional Judge of the City Civil court refused the temporary injunction on two grounds; (1) the appellant's design, though registered was not a new and original design since the affidavit filed on behalf of the respondent showed that they had been using the same design even before it was registered by the appellant. Under the Designs Act 1911, a design is required to be a new or original design not previously published in India in order that it may be registered. (2) The design gave no right to the appellant to use it as a trade mark. The respondent's application for the registration of a trade mark was pending before the Registrar of Trade marks and was likely to be granted.

The grounds on which the respondent may seek a petition for the cancellation of registration of the design are as follows
(1) The design has been previously registered in India.
(Ii) It has been published in India prior to the date of Registration
(iii) The Design is not a new or original design.

The court held that, for an injunction based on registered design , the defence that the appellant's design was not new or original was not open to the respondent since he had not taken any steps for the cancellation of the registration of the design. The court issued temporary injunction restraining the respondents from using the appellants registered design and from selling biscuits bearing that design.

B) Texla Metals & Plastics Pvt. Ltd. v. Anil K. Bhasin ( 2001 PTC 146, Del)
In the above case the Plaintiff has obtained a registration of a design of a bollard with effect from 21st September, 1988. A bollard is a road safety marker. The design of the Plaintiff consists of a rhombus with nine reflectors inside it. Below the rhombus are the words 'DARK EYE'. Below these words is a circular disk with an arrow pointing towards the road and below the circular disk is a pole. The Plaintiff also claims to have obtained registration of the design of a delineator with effect from 21st September, 1988. A delineator is also a road safety marker and consists of a circular reflector on a pole. The circular reflector is covered by a cage to protect it from damage or theft.

The Defendant is also into manufacturing bollards and in the above case the bollard of the Defendant also consists of nine reflectors in a rhombus. This rhombus is placed upon a pole. In other words, the difference between a bollard of the Plaintiff and the Defendant is that in the case of the Defendant the words 'DARK EYE' and the circular disk with an arrow are missing. The defendant is also into manufacturing delineators. The Plaintiff claim is that the Defendant is infringing the designs of the Plaintiff and, therefore, an injunction should be granted restraining the Defendant from manufacturing bollards and delineators which infringe the design of bollards and delineators designed by Plaintiff. According to the Defendant, these items are of common use as road safety markers in Korea and Japan. Section 43 of the Designs Act, 1911 has provision for the making of an application by any person claiming to be the proprietor of any new or original design not previously published in India.

A design when so registered will be effective from the date of the application for registration. Section 51-A of the Designs Act, 1911 provides for the cancellation of a registration already granted. The registration of a design may be cancelled if the design has been previously registered in India or it has been published in India prior to its registration or if the design is not a new or an original design. The contention put forth by the Defendant is that both the designs have been published in India prior to the date of the application of the Plaintiff and the design is not a new or an original design.

The court held that the concept of a new or an original type of design is relatable to the publication of such a design or its availability to the public in India. The court further held that if the contention that the defendant has received brochures from Malaysia, Korea and Japan with regard to such goods, the mere receipt of such brochures would not amount to publication of such designs within India. Hence in the above case an injunction was granted.

C) B.K. Plastic Industries v. Jayantilal Kalidas Sayani ( AIR 1972, Cal 339)
In this case, the petitioner applied for the registration of patent in respect of a 'Picnic Set' made of plastic. After making the said application the petitioner started manufacturing and marketing for commercial purposes the said products. The respondent, one J. K. Savani of Bombay also known as Jayantilal Kalidas ,was also marketing the said design thereby infringing the said patent granted to the petitioner. The court held that even if a design which is original but is published earlier than the date of registration, it loses its novelty or newness on the date of registration and hence, it may be cancelled or revoked. A person is not entitled to take any one of the grounds as set out in sub-clauses (I) (II) and (III) of clause A of sub-section 1 to section 51 of the Designs Act 1911, since the word ' or' stands between the sub-clauses, as the ground for cancellation or revocation of registration of a design. All the grounds must be taken in the application for cancellation of registration.

Cases relating to the Designs Act, 2000:

A) Taparia Tools Limited v. Ambica Overseas and Anr
In the above case, the plaintiffs have filed a suit claiming perpetual injunction restraining the defendants from applying or causing to be applied in relation to wrenches and pliers or any other goods contained in class 01 of the Designs Act 1911( now repealed and substituted by the designs act 2000) which is identical or deceptively similar to or a fraudulent imitation of the plaintiffs registered designs. In March 1994, the plaintiff conceived a novel design of an adjustable Wrench. With a view to protect the unique design and novelty of this product, an application was made for registration of the same on or about 28th March 1994 and registration was accepted.In1998 the plaintiff conceived and developed a Plier with a unique design. With a view to protect this design, the plaintiff made an application on 5th January 1999 and that application was accepted. Hence by virtue of these registration certificates, the plaintiff acquired status as registered proprietor of the copyright in the said designs.

In May 2003 the plaintiff learnt that first defendant was manufacturing and selling, through defendant No. 2, in Mumbai, adjustable Wrench which was a fraudulent and obvious imitation of the plaintiff's registered design.

Thus, the first defendant had committed and continues to commit infringement and piracy of the plaintiff's registered designs.

The Designs Act as originally enacted and now amended, has enlarged the scope of definition of terms "Article" and "Design". It has introduced the definition of the term "Original". The term "Original" as defined in Section 2(g) reads thus:
"(g) 'original', in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application."

'Article' means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately."

The defendants contended that there is nothing novel and the articles with their shapes and designs are part of common trade. It may be true that there are several manufacturers of these articles. However, the uniqueness insofar as adjustable Wrenches in the plaintiffs design is the scale mark. The defendants have contended that plaintiffs are not proprietors of new or original design and the design registered is pre-existing common type. Defendants have submitted that the plaintiffs are not aware of hard realities about hand tool manufacturers and the plaintiffs should not, because of money power; attempt to suffocate genuine competition in business. The court considering the above circumstances held that since the plaintiffs had failed to make out a prima facie case, the motion for injunction was dismissed.

B) Glaxo Smithkline Consumer Healthcare Gmbh and Co. Kg v. Amigo Brushes Private Limited and Anr. (2004, 14 ILD 357Del)
In the above case the plaintiff filed a suit for permanent injunction for restraining the defendant from manufacturing and selling offending toothbrushes, which infringed the registered design of the plaintiff or which were fraudulent or obvious imitation. It was alleged that plaintiff was a company organized under the laws of Germany. It was engaged in a variety of business in the healthcare field, especially in the design and sale of toothbrushes. The suit is filed in respect of design of toothbrushes, which comprises a distinctive aesthetic toothbrush in respect of which the plaintiff had obtained a design registration.

By virtue of said design registration and Section 48(5) of the Designs Act, 2000, the plaintiff has the copyright in the design for an initial period of 5 years from the date of the registration and this period is extendable by two successive periods of 5 years each. Plaintiff has also obtained corresponding design registrations of this toothbrush model in several parts of the world. Recently, the plaintiff came to know that defendant has recently commenced sale of toothbrushes under the brand name "Pepsodent Cushion", which is a fraudulent and obvious imitation of the plaintiff's design. The entire controversy centers around the design of the handle grip part of the toothbrush used for gripping the toothbrush while in use. The plaintiff claims that the design of its handle is novel and original and has been registered.

In a suit for injunction filed against the defendants, the Delhi High Court held that the tooth brushes mainly have 2 components viz., the plastic handle and the bristles. The handle itself has 3 sub components which are (a) the head (b) the neck (c) the handle grip. While holding that the handle of the tooth brush could not be detached from other components and sold out separately, the court dismissed an application for interlocutory injunction against the defendants on the grounds that the handle (grip) of the toothbrush detached from its other components is incapable of being registered as a design, therefore the question of piracy of the plaintiff's toothbrush's design under section 22 of the Designs Act 2000 could not arise. The court held that the similarity of toothbrushes of the plaintiff and the defendant cannot be judged simply on looking at the tail of the handle i.e. the grip portion.

C) Rotela Auto Components (P) Ltd. & Anr. v. Jaspal Singh & Ors. (2002 {24} PTC 449 Del)
In the above case it was held that Design was a conception, suggestion or an idea of a shape and not an article. If it has already been anticipated, it is not new or original. If it has been pre-published, it cannot claim protection as publication before registration defeats the proprietors rights to protect under the Designs Act, 2000.Unless the design is new and original, registration cannot be effective. In the present case since the design has been pre-published, it cannot claim protection. The registration of the design is of recent date , but since the design has been published earlier, the ground of defence mentioned in section 19 of the designs act 2000 can be taken by the defendants, pursuant to sub-section (3) of section 22 of the act. Therefore no injunction can be granted as there is a serious dispute as to the validity of the design to be tried in the suit. The injunction order granted earlier has also been vacated.

Changes made in the Designs Act 2000 compared to the Designs Act, 1911

From the above case studies, and from the criteria on which the judgment has been passed in each case, the difference between the Act of 1911 and the Act of 2000 can be brought forward. The main aim of passing the Designs Act of 2000 was to cope up with the increase in the registration of designs and to encourage the progress in industrial growth. As can be seen from ' Rotela Auto Components (P) Ltd v. Jaspal Singh case, the act helps to prevent the pinning down of competitors which would block technological growth.

In Glaxo Smithkline Consumer Healthcare Gmbh and Co. Kg v. Amigo Brushes Private Limited and Anr, under section 2 of the Designs Act,2000 which defines 'Designs' the court has held that, a mere functional component with no appeal to the eye cannot be registered. A design should be capable of being applied to article so that it shows to eye, a particular shape, configuration, pattern or ornament. Whereas under section 2(5) of the Act of 1911, a design is defined as features of shape, configuration, pattern, ornament applied to any article by any industrial process and in the finished article appeal to and are judged solely by the eye, but does not include any mechanical device.

Under section 2 (d) of the Designs Act, 2000 the following features have been added:

(1) It includes the composition of lines or colors applied to any article:
(2) Such article may be either in two dimensional form or in three dimensional form or both:
(3) It does not include any artistic work as defined under the copyright Act.
Hence the Designs Act of 2000 does not include the trade mark and the property mark alone but also includes the 'artistic works'
Therefore the definition under the Act of 2000 is an improved one and more comprehensive.

In Joginder Singh v. Tebu Enterprises (P) Ltd, (AIR 1989, Del 16) the court has held that if the goods imported from abroad are used by the importer without its disclosure to anyone else and such designs are not freely available to anyone in India, then there has been no prior publication. If however the goods imported are in full view of the general public, the design of such goods are regarded as published in India and would not be registered as new or original. Under section 18 of the Designs Act of 2000, the scope of prior publication has been amplified.

In Kemp and Company & Ors v. Prima plastics Ltd, the court has held that disclosure of a design by the proprietor to any other person in good faith, is not a publication of design sufficient to invalidate the copyright. The Act of 2000 enhances the initial period of registration from 5 to 10 years, to be followed by a further extension of a period of 5 years, while the Act of 1911 gives a protection of 5 years.

Thus it can be seen that the Act of 2000 is far more superior and efficient which encourages technological growth in India.

Intellectual Property Rights and the Law b y Dr. G.B Reddy
Law relating to Patents, Trademarks, Copyrights and Designs by B.L. Wadehra
Intellectual Property Law in India by Justice P.S.Narayan
Intellectual Property Rights Laws by Dr.Ashok Soni

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