There are special legislations governing the protection of different nature of
rights in our country. The purpose of design Act is to protect any design on an
article and that is appealing to the eyes. Design
means features of shape,
pattern, configuration, ornament or composition of colors or lines which is
applied in three dimensional or two dimensional or in both the 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 by the eye; but
does not include any mode or principle of construction.
- The classification was made on the basis of the material which has been
used to make that material
- The classification is built solely on the subject matter of the design.
- Judging a novelty on the grounds of prior publications of any article,
is made viable by Absolute Novelty.
- It is possible to re-instate the registration of a design.
- The quantum of punishment is enhanced if any infringement takes place.
- The confidentiality of two years of a registered design is also
- Regulation of anti-competitive practices in contractual licenses.
- The laws regarding the substitution of the application before
registering a design is mentioned.
- The district courts have the authority and faculty to transfer cases to
the high court.
- It subsumes the provisions in relation to the delegation of powers of
the controller to other controllers and the duty of examiner.
Requirement Of Originality
Section 2(g), Design Act deals with originality
in relation to a design and
means as originating from the author of such design. It refers to artistic works
which has the capacity to increase the decorative and visual value and can be
distinctly recognized as mentioned under sec 2(d) which is:
- Composition of lines or colors.
In Chawla and sons v. bright auto industries
, the court figured that there were
only slight variations in the products existing. A little addition or change in
shape which is well recognized shape of another product that exists in the
market cannot make it as a new product or original design.
Requirements For Registration
- A design that is to be registered under the act must have a unique
shape, configuration, pattern or an ornament
- When the design is being applied to an article, it must show to the eye
that particular shape, pattern, configuration, ornament e.t.c. Any
application for registration should be accompanied by a representation i.e
drawing, tracing which can be communicated easily.
- The design should always be a new or an original design.
- The design must have not been disclosed anywhere in India or any other
- It should not contain any obscene or scandalous matter.
Cancellation Of Registration
Any interested person may present a petition for cancellation of registration
for a design and any time to the controller under the certain following grounds
- Previously registered in India or
- Either it is published in India or in any Country prior to the date
- Design is not new and original and not registrable under this act
- Section 2 clause D that it is not a design as defined under this:
Section 51A(1)(a) act of the 1911 act and section 19(1) of the 2000 act deals
with the cancellation of registration which also provides a petition for the
cancellation of registration to be filed before the controller and not before
the High court. The basic difference that has to be understood is section 19 of
the 2000 act deals with the cancellation that has to be made to the controller
of the designs and section 51 deals with cancellation of registration which
could be preferred to the High Court within one year from the date of education
under specific grounds of sub-clauses one and two of section 51 A (1). Under the
2000 act High Court can only assume jurisdiction at an appellate level whereas
under section 51(A) the High Court can directly cancel the registration.
With no application for cancellation of a design, rights of registered design
can be enforced and no defence can be taken on a ground for cancellation. An
application for cancellation cannot be revoked to be open for the court trying a
suit under section 53 turn a blind eye to waiting stage of suit application.
Further ahead of the enactment of 2000 and registration and publication of
design in India was used as a ground for cancellation of a design but not
register other than India.
Parliament has deliberately differentiated between registration in India and
registration in abroad.
In Gopal glasswork v/s controller of patents and designs
the petitioner found
that prior publication of abroad is a ground for cancellation of the registered
design the weakness around this issue whether the registration can be a ground
for cancellation was answered by the full bench of Delhi High Court in Reckitt
Benkiser India ltd .v. Wyeth Ltd.
- And bold work of the design has to be necessarily looked in terms of the
article as there may be a lack of clarity to the existence of the
publication unless it is totally clear
- Importance is given to the Indian registered design because the design
which was registered in the UK patent office was never used and documents
downloaded from the Internet could not have been sent as much clarity for
being treated as prior publications.
- A foreign registered design cannot serve as a ground for cancellation
under section 19 (1) (A) of a design registered in India unless the
application that is put to public use can be downloaded from the UK patent
office and can be held as a clear cut clarity for publication.
- Was held that there was no prior publication since there was no clarity
from the designs downloaded from the UK patent office
The court found that there is a wide awake departure by the legislature while
enacting section 19 (1)(B) of the 2000 act as compare to section 51 Ė A (1)(a)(ii)
of the 1911 act.
Under both the given sections prior registration is in India and not abroad
which is a ground for cancellation of design which is later registered in India.
The Parliament has added a new basis for publication in any country other than
India as a ground for cancellation of registered designs, but is very aware do
not include registration in a country other than India. The registration abroad
cannot be included under section 19 (1) (A) of the act for cancellation of
design registered in India.
Piracy Of Registered Design
Section 22 protects restraint against piracy for a personís design. Section 22
(1)(a) makes it unlawful for any person to enroll for the purpose of sale or
cost to be applied to any article in a class of articles in which the design is
registered. This restriction is put to anything that may come to enable the
registered design to be in the manner described above.
Section 22 (1)(b) extend the prohibition to articles That are imported without
the consent of registered proprietor otherwise it is just an article belonging
to a random class in which it is designed.
Section 22 (1)(c) makes it unlawful to publish or expose the sale of articles,
where the imitations are applied fraudulently without the consent of registered
Section 22(2) provides the penal consequences for the forms of damages. The
second provision under this section directs that a suit for violence or
infringement cannot be admissible in a court below the District Judge.
Section 22(3) allows the defendant in an infringement suit, to plead his defence
grounds which are available in section 19, design act for cancellation of
Section 22 (4) explains the defence in section 19 where design act has been
pleaded, then the same case shall be transferred to High Court for decision.
Section 22(5) when a decree is passed under subsection (2) it is the duty of the
controller to make necessary changes to register of design.
In Bharat Glass Tube Limited v. Gopal Gas Works Ltd
., Gopal Glass Works, the
respondent had registered their design for diamond-shaped glass sheets and had a
certificate of the same as well. The appellants started using this design for
marketing. A German company had collaborated with them to make the designs.
After knowing that the appellants were using their design, they moved to the
Court. The appellants contended that the respondentsí designs were not new since
the German company had been using it since 1992 and it was already published in
the U.K. Patent Office so it lost its originality. When the matter went to the
High Court on appeal, it reinstated the designs to the respondents. When the
matter reached the Supreme Court, it upheld the decision of the Calcutta High
International Aspect Of This Act
Provisions have been made for protection of any design which gives priority to
the applicant belonging to United Kingdom or any other countries of the
convention over the other applicants provided the application is made within a
span of six months. The proprietor of the design shall not be shall not be
entitled to recover damages for piracy, before the actual date on which the
design is registered in India.Conclusion
Design Act, 2000 consolidates laws that protect designs. When a developer
develops something, say for example, if an architect builds a structure/statue
it is expected for the structure, to not be infringed. Many designs are capable
of providing the author with copyrights and there are policies to protect these
designs. And if they are infringed they can have a negative impact on the value
- Hridya Nambiar
- Soorya Krishnaa