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Origin and Development of Designs Act, 2000

This paper deals with one of the prominent legislation related to IPR , the Designs Act of 2000. Designs act was enacted to protect and safeguard the original industrial designs which are applied to particular articles manufactured by industrial process or means . The paper mainly focuses on the origin and development of this so called legislation . If we travel back to the early 20th century , we will come across the archaic Designs Act which was enacted during the British regime , the Designs Act 1911 , and it was consequently repealed to constitute the current act of 2000. This paper further makes a comparison between the archaic Designs Act and the current one .

Introduction
As hinted in the Abstract , the primary objective of Designs Act is the protection of Designs. Now here arises some relevant question such as what are Designs? Why are they Important? Why is it necessary to protect these ? An Industrial Design is the commercial or aesthetic aspect of an article. It promotes the product by drawing customer attraction , that is an industrial design plays an important role in increasing the commercial value of the product and thereby expanding its market and customers chain . Every industrial or business group has got their own distinct and evident Designs .The competitors or other rivals groups may make attempts to exploit the designs to their advantage , thus there is a vital need to safeguard these designs .Section 2(d) of Designs Act , 2000 defines the term design . “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in 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 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)[1]. So under this act , an Industrial Designs Right is being granted to its creator or the owner, and this is an Intellectual Property Right that protects the visual design , that is the style , appearance , structure etc , of the industrial object . An effective system of protection also benefits the consumers and the public at large by promoting fair competition and honest trade practices.

Essentials of Valid, Admissible Design

Novelty
Novelty or newness is an essential requirement of an admissible design . As per the Designs Act , a design is registerable only when it is new and original , and not previously published . In the case of , Pilot Pen Co v. Gujarat Industries Private Ltd ,that registration could not be deemed to be effective unless the design is new or original and pre- existing common type . But as per the act , the combination of previously known designs can be registered if the combination produces a new visual appeal .The novelty and originality of an design is judged on the basis of evidence of experts in trade .

No Prior Publication
The design should not be published previously, If a design is made available to the public or if it has been shown or disclosed to a person who is not bound to keep it secret , then it constitutes publication of design .In the case of Wimco Ltd , Bombay V Meena Match Industries, Sivakasi[2] , the court held that publication , means the opposite of being kept secret . It is considered published if a design is no longer a secret . There is a publication if the design has been disclosed to the public or if the public is in possession of the design . And any such previously published design cannot be registered . Publication can occur in two ways . Publication in prior document and Publication by prior user . As per the law , the private or secret use or experimental use of a design will not constitute a publication .

The Design must be Applied to a Particular Article
A design is admissible if only it is incorporated in an article. It can be either three-dimensional or two-dimensional. The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Hence, the industrial plan designs layouts and installations cannot be taken as design under the Act.

Visible on the Finished Article
A design should be appeal solely by the eyes of the consumer. This means a design in order to qualify, should be visible on a finished article. For example, the inside arrangements of a closed article cannot be considered as design as per the law.

In short , according to section 4 of the Designs Act , 2000 the following designs are prohibited from registration. A design which;
a. is not new or original; or
b. has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or
c. is not significantly distinguishable from known designs or combination of known designs; or
d. comprises or contains scandalous or obscene matter, shall not be registered.

History of Design Law In United Kingdom

Before we dig up the history of Designs Acts in India , let us see the history and develop-ment of Designs act in United Kingdom who has got a long history about the origin and development of Industrial Designs legislations dating back to the 18th century . United Kingdom is considered to be the pre- runners in protecting the industrial designs and our laws relating to industrial designs are based on their legislations during the colonial period . The Designing and Printing Linen Act , 1787 , is the pioneer legislation of United Kingdom that dealt with the matters and protection of Designs . This so called act was originally introduced to protect the designing and printing of linens and cottons, and the act was later on extended to include and govern the matters related to functional as well as decorative articles . Initially , the act gave limited copyright protection to the designs , gradually it took a shift and resulted in an effective designs registration scheme , which took a recognisable form in 1830s and 1840s. Later on in 1839 , Copyright and Designs Act was passed in order to incorporate all the developments and progresses that took place in the field of designs , printings , copyright etc and thereby provided better and strong protection . Then came up the Designs At of 1842 , which consolidated all the previous legislation in this particular field and thus provided a higher level of protection and increased the remedies for infringement. Thereafter in the year 1883 a single consolidated and amendment act was passed by the parliament of the United Kingdom, clinching designs, patents and trademarks . In 1949 , a separate legislation for matters related to designs , Registered Designs Act was enacted . The cat was later on amended in 1968 and 1988 . The 1988 amendment was made to reduce the luxurious nature of the designs right . The act was further amended in 2001 to incorporate the European Designs Directive. The Directive mandate all the member countries of European Community to implement the directive before 2001, to give the holder of a registered design right an exclusive right to authorize or prohibit others from using the design in any way. The European Community has introduced a community design in the year 2002 that provides a unitary industrial design right.[3]

Origin And Development of Designs Act On India

The History of Designs Act in India can be traced back to the period of British reign . The first Indian legislature to grant to grant privileges and protection for designs was the Patent and Designs Act , 1872 . It supplemented the 1859 Act passed by Governor General of India for granting exclusive privileges to inventors and added protection for Industrial Design. The enactment of Inventions and Designs Act , 1888 , repealed the 1872 act and provided the protection of inventions and designs . This act was a clear reflection of designs act in United Kingdom . n. In 1911 , British Government enacted the Patent and Designs Act and repealed the prior legislations .In 1930 , this act was amended and where by the eligibility criteria for design registration changed from new and original design to new or original design . Initially , this particular legislation governed the matters related to both Patent as well as Designs . In 1970 , a separate act called the Patent Act 1970 was enacted to deal with matters related Patent and thus the provisions relating to patent was repealed , but the act continued to be the major legislation for Industrial Design till 2000. India joined the WTO as a member State in 1995. Consequently, the Patents & Designs Act, 1911 was repealed and the Designs Act, 2000 was enacted, to make the Designs Law in India in compliance with TRIPS. Moreover , since the enactment of the Designs Act of 1911 , there has been a considerable progress in the field of science , technology and other related fields . This necessitated the need make the legislature more efficient and strong for proper administration , protection and promotion of Industrial Designs and all these gave rise to the Designs Act , 2000. This new act came into force on 11th May 2001 .

Features And Composition of Designs Act of 1911

The definition of the term Design , under this legislation was narrow and of less amplitude when compared to that of in Designs Act 2000. 1911 Act excluded any trademark or property mark from the definition of the term design . Section 2(5) of the act defined Design as follows ; "design" means only the features of shape configuration patterns or ornament applied to any article 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 or property mark[4] . The act further provided the conditions to be satisfied to get the design registered , such as novelty , originality etc and again the design should be devoid of any kind of obscenity . The act categorised the goods into 14 classes for the purpose of registration of designs . In order to protect the rights of applicants or the people who seeks to designs under this act register , the act contained a provision whereby it was allowed to register identical design in different classes. When a design is registered under this act, the proprietor of the design shall have copyright on his design for a period of five years, and this period of copyright can be extended by making an application to the registrar before the expiry of five years . While making this so called application for extension of period of copyright over the design a considerable amount of fee has to be paid[5].

During the period of the protection, the registered owner has the exclusive right to apply the design so registered on any particular thing or object in which it was registered. Under this act, the registered owner of the design should mark the article with word Regd or Registered with the number of registration, except in case of the textile design. If it was not marked by the proprietor, the he cannot claim protection and not entitled to recover damages from an infringer[6].

The Designs Act, 2000

As mentioned above , the act came into existence from May 2001, the basic structure and fundamental principle of this act is same as that of the 1911 Designs act . This act is based on first to file, first to get system, which means that the inventor or creator of a design should file the application for registration on the earliest possible time in order to prevent other persons from claiming rights over that particular designs . The basic and fundamental object of Designs Act 2000 was discussed by the Supreme Court in the case of Bharat Glass Tube Limited v. Gopal Gas Works clearly defines the object and the purpose of the Design Act. The object of the act is to protect the IPR of original design with the aim to reward the innovator for research and labour applied to evolve a new and original design. The Court further emphasized that the protection given with respect to designs “is primarily to advance industries and to keep them in high level of competitive progress”[7].

Changes Made
The prominent changes or amendments in the 2000 act in when compared to the act of 1911 are :
· It enlarges the scope of definition of “article” and “design” and introduced the definition of “original”
· The act amplified the scope of Prior Publication”.
· The cat incorporated provisions for delegation of powers of the Controller to other officers .
· It added provisions for identification of non register-able designs .
· Act introduced internationally followed system of classification in place of Indian classification.
· Added provisions for maintaining the register of designs on computer .
· The Act contained provisions to restore lapsed Designs .
· It added provisions for appeal against order of the Controller before the High Court instead of Central Government .
· The new act made it mandatory to register any document for transferring the right over a registered design .
· The act introduced additional grounds in cancellation proceedings and made provisions initiating cancellation proceedings before the controller instead of High Court .
· The new act enhanced the quantum of penalty imposed for infringement of registered design .
· The act increased the initial period of registration from 5 years to 10 years .
· The act has provisions that allowed to give priority to other countries , inter – governmental organisations apart from United Kingdom and other Commonwealth Countries .
· The new act added provisions for avoiding certain restrictive conditions for the control of anti-competitive practices in contractual licenses
· Act further has specific provisions to protect the security of India .

Thus, it is clear that the new act is more superior and effective in giving protection and encouraging the industrial designs in India.

The act aims at promotion of Indian design through a well-defined and managed regulatory, promotional and institutional framework. Under this act action plan for implementation of the policy was also adopted for building a platform for innovation in creative design, propagation of Indian designs and innovations on the international arena and for global positioning and branding of Indian designs. Subsequently, in 2009 the Central Government constituted the India Design Council under the Department of Industrial Policy and Promotion (DIPP).The council is intended to act as the national strategic body for multidisciplinary design and to get involved in promotion of design with the ultimate vision to make Indian Industry a design enabled industry[8].

Procedures For Registration of Design

Chapter 2 of the Designs Act , 2000 deals Registration of Designs. The steps to be followed are :
· As a first step, application for the registration of design shall be made in the prescribed form and shall be filed in the patent office along with the prescribed fee. The application should state the class in which the design is to be registered and the article or the articles to which the design is to be applied. Separate applications are required to be filed for each class of article.
· The Controller will then l refer the application for examination to the examiner to know whether such design is capable of being registered under the Act .The controller will accept the application and proceed accordingly to grant registration to the design if everything is perfect or if there arise no objection .

· If there is any objection , then the controller will ask the applicant or his agent to make necessary amendments in the application in order to nullify or remove the objection .

· f the applicant or his agent does not remove the objections or apply for hearing within 3 months, his application is deemed to have been withdrawn, provided that the period for removal of objection shall not exceed 6 months from the date of filing.

· . After giving the applicant an opportunity of being heard or otherwise if the applicant has not attended to the hearing or has notified that he does not desire to be heard, the Controller may register or refuse to register the design as he thinks fit.

· On acceptance of the design filed in respect of the application, the Controller shall direct the registration and publication of the particulars of the application and the representation of the article to which the design has been applied, in the official Gazette.

· The Controller shall grant a Certificate of Registration to the proprietor of the design when registered.

Once the Design is legally registered under the Act, it grants the proprietor with following rights ;
Right to exclusive use of the design
Right to protect the design from piracy
Usage of rights even against the Government

Infringement of Design

Like other IPs , Design is also susceptible to infringement . It is an illegal act to make use of a registered design, or a fraudulent or obvious imitation of a registered design , without authorization from the registered owner of such design. In case of such an infringement, the registered owner may file a suit to recover a nominal sum as damages from the infringer, and also ask that the infringement stop taking place. In order to ascertain infringement, the Court or any adjudicatory body need not directly compare the two articles, but look at them from the point of view of the average customer and see if the two are causing an obvious confusion in the minds of the consumer[9].

Disney Enterprises Inc. v. Prime House wares Ltd.
This was the case in which the international registration of industrial designs came into conflict in India for the first time . Prime House wares , was a Mumbai based company which manufactured the Disney characters such as mickey mouse, minnie mouse and donald duck etc . The Disney filed trademark infringement suit with the main contention on their international registration of their designs and the court observed that the plaintiffs trademark is protected under Indian law, but not the designs. The court passed an order on trademark infringement suit in favour of the Disney. The court further directed the Indian company to deliver all the infringing material in their possession to Disney so that it could be destroyed[10].

Designs Regime At International Level

At the international level the Paris convention for the protection of Industrial Property, 1883 is the first international convention which discussed and emphasized the concept of industrial property . The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and was amended in 1979 and made it mandatory to the countries of the union to protect Industrial designs. It further introduced another provision to mandate the member states to provide protection to the industrial designs without any forfeiture on the basis of failure to work or by reason of importation of articles corresponding to those which are protected .Another important international document which built a foundation for the protection of industrial property in a global basis , is the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs which was adopted in the year 1999. This so called agreement is governed or administered by the International Bureau of World Intellectual Property Organisation , WIPO . The international registration obtained under this agreement produces the same effects in each of the designated countries, as if it was registered in that country. India is a member of Paris convention and gives protection to the industrial designs, but did not sign the Geneva act of the Hague agreement and the international protection for industrial designs is not extended to India.

Yet another important , world convention on the industrial design regime is the Agreement or the Classification of Industrial Designs (1968). It classifies Industrial design 32 classes and 219 sub-classes based on goods or products in an alphabetical order in which industrial designs are incorporated. The Classification is solely an administrative tool and does not bind the member States with regards to the nature of protection afforded by a design so classified

Conclusion
The necessity and need for the protection of Industrial Designs in the nation has resulted in the so called legislations regarding Industrial Design , starting from 1872 ( Patents and Designs Act ) to the recent Designs Act of 2000 , . Designs Act 2000 is a prominent legislation in the field of IP , which has got a long , strong legacy and history . When it comes to effectiveness , This act along with other related rules efficiently controls the matters related to Industrial Design .

End-Notes
[1] Designs Act 2000, No. 16 (India) ,Section 2(d)
[2] AIR 1983 Del 537 :1983 Rajdhani LR 631
[3] Zaid Imam , Tracing the Evolution of Designs Act , 2002, ( May 28, 2016) https://www.avenuemail.in/opinion/columns/tracing-evolution-designs-act-2002/93806/
[4] The Designs Act ,1911 , No.2 (India)
[5] V. J TARAPOREVALA ,LAW of INTELLECTUAL PROPERTY,375 (3rd ed.2013)
[6] Balaji P Nadar , Evolution of Designs Act in India and Protection of Industrial Design under International IPR regime , https://www.scribd.com/doc/53318556/Evolution-of-Designs-Act-in-India-Protection-of-Industrial-Designs-under-International-IPR-Regime
[7] Bharat Glass Tube Limited v. Gopal Gas Works ,(2008) ,SC 3185 (India)
[8] Balaji P Nadar , Evolution of Designs Act in India and Protection of Industrial Design under International IPR regime , https://www.scribd.com/doc/53318556/Evolution-of-Designs-Act-in-India-Protection-of-Industrial-Designs-under-International-IPR-Regime
[9] Meghna Sengupta , Designs Act 2000 :Design Law In India ,( July 10 ,2017), http://www.pocketlawyer.com/blog/designs-act-2000-design-laws-india/
[10] Disney Enterprises Inc. v. Prime House wares Ltd, 2014, (India)

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