Standardization of the Management of The Designs Act, 2000

Introduction

In our daily life we come across various kinds of designs. The first Designs Act that came in India was The Patterns and Designs Protection Act, 1872 which extended to British India designs as well. Products that are artistically designed grab the attention of everyone and it is important that one’s creativity is not infringed or imitated. Till date, fashion brings more and more fans willing to pay large amounts of money to feel and to look about their own appearance and adornments. Today, fashion laws have come as a brand of new legal sanctity that involves various issues of Intellectual Property Rights particularly trademark law, copyright law and at times it also includes the Patent and Trade secrets. In the field of legal realm and regime the term ‘fashion’ has been protected and secured under the shade of intellectual property. Focusing on the Fashion Industry in this article, I would like to highlight the laws that govern the Indian fashion industry and its designs.

What laws govern designs in Indian?

Design Act, 2000 is the law ensuring the originality of the design of an article and a registered design may help to act against piracy. It’s clear that the act’s purpose is to protect designs. In addition, the act amplifies the complexity of designs such as design lapse, restoration of lapsed designs, period until a design remains in effect. The very first act for the protection of designs came in the year 1911 but due to the increase in registration of designs and development of science a new law was required. The aim of the act is to provide more effective protection to the registered designs, compulsory registration of any document for transfer of right in the registered design and to promote design activity and also to put a block on the rampant piracy.

Design Rules 2001: The Act empowers the Central Government to prescribe the rules while the Department of Industry Policy & Promotion under the Ministry of Commerce & Industry is the authority of the Central Government concerned with the enforcement of this act. Under the authority of the Act, the Design Rules are enforced to define some guidelines about certain complex issues such as the amount of fee payable, who would apply for the registration of a design (i.e. a natural individual or a registered corporate entity), how much amount the small entity will pay for. Therefore, there’s a distinction between the amount of fee and other procedural requirements which apply differently to corporate entities ranging from small entities defined under the Micro, Small & Medium Enterprises Development Act, 2006. Thus, the manner in which day-to-day procedures are actually performed, such as the application process, the number of forms to be submitted, the types of forms to be submitted, the request to assert as a small entity and the sum of costs to be charged in the proceedings before the controller were presented in detail in accordance with the Rules. The Designs Rules have been amended from time to time and the following are in force at the moment:

• Design Rules, 2001- These are the very basic rules which provide for very minute details about the practical aspects related to Designs namely- leaving and serving document, Address for Service, payment of Fees (available in First Schedule of the Rules, now amended by the Designs Rules 2014, kind of Forms set forth in the Second Schedule, Classification of Goods, Application for Registration, Inspections and Searches, Register of Designs, Registering designs
• Designs (Amendment) Rules, 2014- It amended the Designs Rules of 2001 and has replaced erstwhile provisions regarding the application made by the natural person, small entity and others.
• Designs (Amendment) Rules, 2008- It amended the rules (of 2001) as to service of notice, amount of costs that could be claimed and added class of products for which a design could be registered.
• Design (Amendment) Rules, 2021- There were total 8 amendments in the existing rules. The amended rules are aimed at making the rules according to ‘Startup culture’. 

IPR laws of India: 

The Law on the subject is covered by the Copyright Act; the Trade and Merchandise Marks Act; Patents Act and the Designs Act. These are mainly based on the English law on the subject. The law is poised for fundamental changes to meet the international commitment of the Indian Government under the TRIPS/WTO Agreement.

Copyright Act: 

Copyright deals with the artistic rights of the intellectual authors. The copyright law deals with the basic types of invention, mainly regarding mass communication. The 1957 Copyright Act protects from unauthorized use original literary, dramatic, musical and artistic works, including cinematographic films including sound recordings. There is no copyright protection for ideas, procedures, methods of operation or mathematical concepts as such. In the case of artistic works, section 14 of the Copyright Act mentions:

1. a) To reproduce the work in any material from including storing of it in any medium by electronic or other means, depiction in three dimensions of a two dimensional work and depiction in two dimensions of a three dimensional work,
2. b) Communicating the work to the public,
3. c) Issuing copies of work to the public which are not already in existence,
4. d) Including work in any cinematograph films,
5. e) Making adaptation of the work, and to do any of the above acts in relation to an adaptation of the work.

Trademarks Right: 

Trademark rights are legally protected in India under the Trademark Act, 1999 and even under the passing off remedy under common law. The Controller General of Patents, Designs, and Trademarks is responsible for enforcing these rights under the Act. The Trademark Act, 1999 deals with the protection, registration, and prevention of trademark fraud. It also deals with the trademark holder’s rights, infringement damages, redress for the affected as well as modes of trademark transition.

Trademark is defined in the Trademark Act, 1999 as, “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colors.”  Such a mark may include numerous things such as signatures, names, labels, headings etc.

Patent: 

Similar to Trademarks, copyright, design and geographical indications, Patent is also an Intellectual Property which is protected under the Law and the rightful owner of the Patent can claim rights and authorities under the Law for a limited period. In India, the Law of Patent is primarily governed by the Patent Act of 1970. The word “Patent” refers to a monopoly right over an invention. Not all inventions are patentable nor it is essential to protect inventions solely through patent. The final product that results from an invention may be protected through other forms of intellectual property rights. The statutory definition of Patent under the Patent Act as a Patent for any invention granted under the Act

Industrial Design: the Designs Act, 2000 protects certain designs. The features of shape, configuration, pattern, ornament or composition of lines or colors applied to any ‘article’ whether in two or three dimensional forms (or both), by an industrial process which appeals to the eye can be registered under the said Act. The Designs Act 2000 brought into force in May 2001 entitles an applicant to apply for registration in more than one class. However, registration is granted for only one class. Furthermore detailed classification of designs has been incorporated conforming to the international regime. Copyright in the design under the 2000 Act would be protected for a period of 10 years from the date of registration.

Geographical Indication:

The Geographical Indication of Goods (Registration and Protection) Act, 1999, was enacted to register and protect geographical indicia of goods that originate from or are manufactured in a particular territory, region or even locality. These goods include agricultural, natural or manufactured goods that are distinct from similar products due to quality, reputation or any other characteristic that is essentially attributable to their geographical origin. Under the Act, such distinctive geographical indicia can be protected by registration. The Act thus facilitates promotion of Indian goods when exported overseas and in turn protects consumers from deception.

An application for registration of a geographical indication can be made by any authority, organization or association of persons representing the interest of the producers of the concerned goods. Registration would entitle a registered proprietor, or a duly authorized user, to the exclusive right of usage of that particular geographical indication with respect to the goods for which it is registered and to obtain relief for any infringement thereof. It may be pointed out however, that non-registration does not mean non-protection of a rightful user. Registration affords better protection in an action for infringement.

The validity of bona fide registration of a geographical indication as a trade mark prior to the coming into force of the Act will not be affected by this enactment and will be treated as valid under the laws relating to trade marks.

What is a design?

Section 2 clause (d) of the Design act, 2000 gives a detailed definition of design under the ambit of this act for the purpose of registration. It means only the features of shape, configuration, pattern, ornament or composition of lines or colors 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 a design does not include a trademark (a trademark serves as an important link between the product and the originator or maker of that product so that the customer can relate), also a design does not include the mode or principle of construction. The major focus is upon the visual appearance of the aesthetic feature of an article. These designs also bind the government as they bind any other ordinary person. So, it’s always beneficial to register a design.

Essentials of Design:

Checkpoints which can be considered a design:

1. Should be new or original
2. Design must be unique, a Prior publication is not acceptable
3. The design must not be contrary to the order and morality
4. It should be related to features of shape, configuration, pattern or ornamentation applied to the article.
5. The design should be applicable on any article by industrial process.
6. Any mode or principle of construction or operation or anything which is in substance a mere mechanical device would not be registered under this act.
7. The design should not include any trade mark or property mark or artistic works. 

Registration:

Any person whether citizen of India or not can file for the registration for design. Person, here in this case, would be any individual, legal entity and claiming to be proprietor. Legal representative or assignee. 

Application for the registration can be filed separately or jointly. 

As per the provisions any proprietor who is seeking registration of a design which is original and unpublished previously in any country which does not seem to be contrary to any law and order of that country can file an application for registration. A proprietor as per Section 2(j) includes that person who

1. is the author of that design
2. acquired design for a valid consideration and
3. Any person to whom the design has been devolved from the original proprietor.

In case there is more than one author than the design must be applied by the joint authors only. 

Items that cannot be registered under this act:

• Signs, emblems or flags of any country.
• Size of any article, if changed.
• Structures and buildings.
• Integrated circuits’ layout designs.
• Trade variations.
• Any principle or mode of construction of any article such as labels, tokens, cartoons, cards, etc. 
• Books, calendars, certificates, jackets, forms-and other documents, greeting cards, maps and plan cards, postcards, leaflets, stamps, medals, dressmaking patterns.
• A mechanical contrivance.
• Workshop alterations of components of an assembly.
• Parts of any article which is not manufactured and sold separately.

A Controller General of Patents is appointed under the Trade & Merchandise Marks Act, 1958. It is an authority appointed by the Central Government to carry out the purposes of the Act. He decides whether to allow registration of a Design or to refuse it and all the matters related to practical aspects of designs. The Controller has power to hear any person who makes a claim before him but he must give the applicant an opportunity of being heard. Section 3 of the Act deals with the information about the Controller.  

Chapter 2 of the Design Act deals with the registration of designs and the procedure to be followed for the same. An application for the registration shall be made in the patent office in the prescribed form along with the prescribed fee. The class in which the design is to be registered must be specified in the application and the article(s) to which it is to be applied. There are separate applications which need to be filed for each class of article. The controller will give the application for examining it so as to check whether the design is capable of being registered or not. If everything seems in line with the prescribed manner then the controller will accept the application and proceed further.

Section 5 of the act makes it clear that  a design may not be registered in more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Controller may decide the question. India has entered into the Locarno agreement as per which the designs are registered under the Act. It classifies goods for the purpose of registering them which helps in Design searches. It divides designs into different classes which are mainly function-oriented. The controller can even refuse to register any design presented to him for registration; but any person, person aggrieved by any such refusal has the right to appeal to the High Court in jurisdiction. (Section 5, clause 4) The design may be registered under a particular class, any questions arising out the class may be answered and dealt with by the Controller. The act gives the Controller enough authority to decide any questions related to the design and his/her decision is considered to be the final decision. In the proceedings before a Controller, a representation could be made through a legal practitioner or through an agent whose name and address had been entered in the registration of patent agents. 

Process of Registration: 

Once the application is submitted, the examination takes place. If all the things are as per the prescribed manner, the certificate is issued. If there are any objections mentioned by the Controller, there can be two things. Firstly, if the objection is made and the application is refused, the registration gets cancelled to which an appeal in the High Court can be made. Secondly, if the objections are mentioned and you are asked to make necessary amendments, the new draft is again examined. If the new draft is as per the given guidelines, it is accepted and the certificate is issued. If the objection does not get removed within three months after the hearing, the application is withdrawn. 

The act provides 10 years of rights to the originator on his/her design which can be further extended to 5 more years. Therefore, in total 15 years of rights is provided under the act. The registration of the design can be cancelled anytime if a petition is filed for the same. There are various grounds as per section 19 of the act, on which the cancellation can take place. 

• It has been published in India or somewhere else before the date of registration.
• The design is not original or new.
• It is not registrable under the Act. The design has been already registered in India previously.
• The design has been registered in India previously.

The application for registration of design, cancellation of design, extending the rights or rectification can be filed at the Head office which is situated in Kolkata or also in the branch offices which are in Delhi, Mumbai and Chennai. 

The Design Rules, latest amendment of 2014 gives us all the forms for application along with the fees for every application. Some form numbers along with the fees are given below: 

Infringement of copyright

Piracy of the registered design is considered to be an infringement of the copyright under this act. It is unlawful for any person to copy someone else’s design. Section 22 of the act lays down the acts that will amount to infringement

(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or 

(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof, or 

(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

If any person is found to act in contravention with the above listed actions, s/he is liable to pay a sum of twenty-five thousand rupees recoverable as a contract debt to the registered proprietor of the design. Or if the proprietor decides to bring a suit for the recovery of damages for any such contravention, and for an injunction against the malicious action, s/he shall pay such damages as may be awarded and would be restrained by injunction. But, the act also suggests that the amount shall not exceed the sum of fifty thousand rupees. It is also important to take in consideration the meaning of fraudulent imitation. Here, the imitation is made with the intention to deceive another person with the knowledge that what is being done is the violation of another person’s rights. The judicial remedy to such a situation is damages along with the injunction as mentioned above. A suit of injunction can also be filed under the Specific Relief Act, 1963

Another important point of this Act is the allowance of priority through conventionIt provides a reciprocal arrangement between a few countries with which India has entered into a convention. Through this, provisions have been made which give priority to the applicant belonging to the countries of the convention over the other applicants.

Conclusion:

The following points can be taken away from this article

1. Definition of the term “design” explained.
2. IPR laws related to design
3. Essentials of Design
4. Introduction of provision for delegation of powers of the Controller to other officers and stipulating statutory duties of examiners.
5. Provision and explanation for application of registration of a design.
6. Items that cannot be registered under this act
7. Infringement
8. Forms and application fees
9. Substitution of Indian classification by internationally followed system of classification.
10. Restoration of lapsed designs.
11. Appeal against orders of the Controller before the High Court
12. Grounds in cancellation proceedings and provision for initiating the cancellation proceedings before the Controller in place of the High Court.
13. Quantum of penalty imposed for infringement of a registered design.
14. Period of registration of 10 years, to be followed by a further extension of five years.
15. Allowance of priority to other convention countries and countries belonging to the group of countries or inter-governmental organizations apart from the United Kingdom and other Commonwealth Countries.