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Procedure Of Publication Of Industrial Design In India

A thing of beauty is a joy forever, these golden words have a very great significance in today's materialistic world, where the appearance of an article counts more than its utility or quality. Many people blindly choose an article, which catches their eye by the beauty in its design. Nowadays the producers spend huge capital in developing innovative designs for catching the recognition of consumers by enhancing the appearance of their products.

There are professional designers who put great intellectual effort in creating new & attractive designs. The rationale for design protection is clear from US Supreme Court's decision in the case, Gorham Co .v. White, 81 U.S. (14 Wall) 511 (1871)[1], in which the Court stipulated that the essential rationale for design Law are that the design right may enhance the design's saleable value, may enlarge the demand for it and may be a meritorious service to the public.

Design protection plays an important role in the product market, increasing the competitiveness of the manufacturer or vendor of the product, and enhancing quality of societal life. Hence it is necessary to protect designs so as to reward the designer's creativity and to encourage future contributions.

This paper deals with one of the prominent legislations related to Intellectual Property Rights, the Designs Act, 2000 (Act) and mainly focuses on the Procedure of Publication of Industrial Design in India.

What Is Design?

As per the Act, the term Design[2] means only the features of shape, configuration, pattern, ornament or composition of lines or colour or a combination thereof applied to any article whether 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 but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include 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 artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

What Are The Requirements For Registering A Design?

  • It should be novel and original
  • It should be applicable to a functional article
  • It should be visible on a finished article
  • It should be non-obvious
  • There should be no prior publication or disclosure of the design and it should not have been made available anywhere in India or abroad, before the date of application for registration.

In the matter of Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh[3], it was held by the Delhi High Court that the word ‘Published' means that the design is no longer a secret and if a design has been disclosed to the public, or the public is in possession of the design, it may no longer be qualified for registration.

In the case of Joginder Singh v. Tebu Enterprises (P) Ltd [4] the Delhi High 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 is regarded as published in India and would not be registered as new or original.

In the matter of Gopal Glass Works Ltd Vs Assistant Controller of Patents and Designs[5], the Calcutta High Court held that to constitute prior disclosure by publication to destroy the novelty of the registered design, the publication has to be in tangible form of the design applied to the same article. Prior publication of a trade catalogue, brochure, book, journal, magazine, or newspaper containing photographs or explicit picture illustrations that clearly depict the application of the design on the same article with the same visual effect would be sufficient.

Also, the Court opined that what amounts to publication is a question of fact to be decided as per the evidence led in each case. Thus, mere existence of a design in the records of a Registrar of Design in a convention country may not amount to publication in all cases.

Who Can Apply For Registration Of A Design?

As per the Act[6], any person who claims to be the proprietor of any new or original design can apply for the registration of the design. A foreigner can also apply for the registration of the design. However, the convention followed is that if a country does not offer the identical registration right to Indian citizen for their designs in their country, its citizen would not be eligible to apply for registration of design in India.

In the Vredenburg's Registered Design case[7],it was held that if there are two persons each of whom has produced a similar design and communicated the fact of such authorship to the other, neither of them alone is the proprietor of a new or original design. Thus, there can be joint authorship of the design.

What Is The Procedure For Registration?

  • The proprietor of the design shall submit the application for registration in the patent office in the prescribed form, accompanied by the prescribed fees and shall state the class in which the design is to be registered.[8]
  • The Controller shall, then, refer the application to an examiner appointed under this Act, to determine whether the design is capable of registration under this Act.
  • The Controller shall consider the report of the examiner and if satisfied that the design complies with all requirements for registration under this Act shall register it. The Controller may, also, if he thinks fit refuse to register the design.[9]
  • If on consideration of the application any objections appear to the Controller, a statement of these objections shall be sent to the applicant or his agent.
The applicant has to remove the objection within one month of communication of the objections to him failing which the application shall be deemed to have been withdrawn. He may also apply to the Controller for being heard on the matter. When the Controller refuses the application after the submission, he may directly appeal to the Central Government whose decision is final.[10]

What Do You Mean By Publication Of Particulars Of Registered Designs?

The Controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in such manner as may be prescribed and thereafter the design shall be open to public inspection.[11]

As per the Designs Rules, 2001, the particulars of registered design are published in the Patent Office Journal[12] ordinarily within one month. the Controller may select one or more views of the representation of the design, which, in his opinion, would depict the design best.[13]

Furthermore, the Patent Office Journal is published on every Friday and contains the following matters on designs:[14]
  • Public notice, if any.
  • Registered designs including:
    1. Registration number.
    2. Date of filing.
    3. Name of article.
    4. Class of the article.
    5. Name and address of the registered proprietor.
    6. Priority details like priority date and country.
    7. Best view(s) of the article from the representation.
  • Renewal of designs (only registration number).
  • Restored Designs.
  • Assignments / licenses/ Mortgage registration.
  • Matters relating to rectification.
  • Matters relating to cancellation.
Also, where an application for a design has been abandoned or refused, the application and any drawings, photographs, tracings, representations or specimens left in connection with the application shall not at any time be open to public inspection or be published by the Controller[15].

Can A Registered Design Be Cancelled?

The petition for Cancellation of Design Registration in India can be filed on the following grounds[16] namely:
  • that the design has been previously registered in India; or
  • that it has been published in India or in any other country prior to the date of registration; or (as discussed above under the point dealing with requirements for registering a design)
  • that the design is not a new or original design; or
  • that the design is not registrable under this Act; or
  • it is not a design as defined under the Act.

The essential requirements for Cancellation of Design Registration in India are as follows:
  • The Petition for Cancellation of Registered Design can be filed by any person at any of the Patent Offices, in Form 8 as prescribed under the Design Rules, 2001;[17]
  • The Petition should be accompanied by a statement setting out facts along with certain other evidences supporting the facts setting out the reason for filing the petition of Cancellation of Registration of Design with the Controller;
  • The statement should also state the nature of the applicant's interest to determine whether the petitioner is an interested person or not. If the petition is made by any person who is not the registered proprietor of the design, a copy of the petition along with the statement should be transmitted by the Controller to the registered proprietor of the design;
  • The Controller should decide on the petition and notify his/her decision to the parties.

Conclusion
From the above observations, we may conclude that the term ‘Design' means the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article by any industrial process or means. It holds immense value because customers may also associate a product with a company or a particular quality standard based on product aesthetics. The designer/his assignee either alone/jointly with any other person or through a legal representative can also apply for design.

A design to be registerable under the Act, has to satisfy the definitional requirements of Section 2(d). As per the Act, ‘original' means, new in its application to a specific article. In other words, it is not necessary that the design must be totally new, and it is enough that the existing design is applied in a new manner to an article to which that design has not been applied before. The main aim of law, hence, is to promote innovation.

As soon as a Design is registered and is entered in the register, the Controller shall cause publication of the prescribed particulars of the design. Thus, it is disclosed to the public and any member of public can take inspection of the records and obtain a certified copy of the entry.

Furthermore, we also understand that the element of Novelty and Prior Publication can be the grounds for cancellation of registration of design under the Act. Also, what amounts to prior publication is a question of fact and depends upon case to case. The test of prior publication is satisfied only when the previously registered design is out in public.

The details of the design applied to the article should be such that it is can be judged by the eye. A person of ordinary intelligence and imperfect recollection must be able to see the design in his mind's eye and not rely on imaginative faculties in constructing the design. The main ratio is that cancellation of design will be allowed if the claimed design is substantially similar to the of the prior publication design. The reason why this exclusion was granted to the eye was that the purpose of granting design is to encourage and reward design of a good product. This helps in protecting the skill, creativity and labour of product designers.

A rationale basis for the protection of designs is to reward the designer's creativity and to provide incentives for future contributions, however a balance must be maintained between such reward and the long-term goal of promoting competition within a market-based economy.

The owner of the registered design right will be in a position to oppose infringement in relation to goods in respect of which the design has been registered. So, there is a real need to register the design as a registered design. It is the only way to prevent piracy of designs and to encourage the origin of new and original ones. The Designs Act 2000 to a great extent serves as an umbrella protection for Industrial Designs.

End-Notes:
[1] https://www.law.cornell.edu/supremecourt/text/81/511#fn1 (Visited on 11-08-2020)
[2] Section 2(d) of the Designs Act, 2000
[3] 2002 {24} PTC 449 Del
[4] AIR 1989, Del 16
[5] (2007) 1 CALLT 290 HC, 2006 (3) CHN 188, 2006 (33) PTC 434 Cal
[6] Section 5 of Designs Act, 2000
[7] https://academic.oup.com/rpc/article/52/1/7/1606813 (Visited on 11-08-2020)
[8] Law relating to Intellectual Property- Dr. B.L. Wadehra
[9] Law relating to Intellectual Property- Dr. B.L. Wadehra
[10] Ibid.
[11] Section 7 of the Designs Act, 2000
[12] www.ipindia.nic.in
[13] Rule 22 of the Designs Rules, 2001
[14] http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_30_1_manual-designs-practice-and-procedure.pdf (Visited on 13-08-2020)
[15] Section 28 of the Designs Act, 2000
[16] Section 19(1) of the Designs Act, 2000
[17] Rule 29 of the Designs Rules, 2001

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