In an era of aesthetic innovation, where products and its packing is constantly evolving, design rights have emerged as effective pillar of intellectual property. A customer is often influenced by his choice of an article not only by its practical efficiency but also by its appearance. A physical appearance really means a design and its primary purpose is to induce the customer into purchasing the article into ornamentation.
The first design legislation enacted in India was the Patterns and Designs Act, 1872. The Patent & Design Protection Act, 1911 also provided for protection of industrial designs, which was eventually repealed with the enactment of the Design Acts, 2000 in compliance with TRIPS. It came into force on 11th May 2001. The Design office is located in Kolkata in the patent office.
The Object of the Design Act is to protect the intellectual property rights of original design with aim to reward the innovator for research and labor applied to evolve a new and original design.
Section 2(d) of The Design Act, 2000 defines Design as the features of the shape, configuration, pattern, ornaments, composition of lines or colours applied to an article, whether two or three dimensional or in both forms by any industrial process or means, whether manual, mechanical or chemical separated or combined, which in the finished article appeals to and judged solely by the eyes.
Design does not incorporate:
- Mode or principal of construction.
- Anything which is in substances a mere mechanical device.
- Any Trade Mark or Property mark or any artistic work.
REGISTRATION OF DESIGN:
Essential ingredient for registration of Design:
- It is new or original.
- It is not published anywhere in the world.
- It must be significantly distinguishable from known design or combination of known designs.
- Not contrary to public order or morality.
The Hon’ble Delhi High Court, in Steelbird Hi-tech India Ltd v. S.P.S. Gambhir stated that in the matter of novelty the eye was to be the ultimate test and the determination had to be on the normal ocular impression. To know its newness or originality, it was necessary that a design identical with or even materially similar to the relevant design should not been published or registered previously.
ILUSTRATION: HOW TO FILE A DESIGN REGISTRATION FOR A TRIANGULAR SHAPED CALCULATOR?
- First step would be to go through the Design journal to check if there is any similar or identical design already registered.
- Form 1 available from IP India which is the Primary Application form containing Applicant Details, Article Name (Calculator in this case), Classification(As per the Locarno classification calculators will fall within the Class 18-01 : Typewriters and Calculating Machines),Proprietorship details , Address for service needs to be filled.
- Representation: Four copies of the visual representations of the triangular shaped calculator needs to be submitted on A4 size paper. Representation shall be the exactly similar drawings, photographs and tracing including computer graphics or specimen of the design.
- Statement of Novelty: The sheet must include a signed statement of Novelty like, the novelty resides on the shape and configuration of the calculator as illustrated
- Application must be submitted along with the prescribed fees which is ₹1,000 for Individual entities and ₹4,000 for large entities.
- An application for registration may be filled in the patent office of Kolkata, Delhi, Chennai or Mumbai.
- On receipt of an application the application, it will be examined by the examiner who conducts a novelty search as to whether the design is registrable under the act and submits the report to controller. The controller is to consider the report of the examiner and if it satisfies the requirement of the Act, the same shall be registered forthwith and a registration certificate shall be issued to the applicant.
INTERPLAY BETWEEN THE DESIGN ACT & THE COPYRIGHT ACT:
By the virtue of Section 11 of the Design Act, Copyright on a registered design shall subsist for a period of 10 years from the date of registration. It may be extended for a second period of 5 years. The total duration of copyright shall not exceed 15 years, after which the design will belong to the public domain.
On perusal of Section 15 of the Copyright Act 1957, Copyright shall not subsist under this Act in any design which is registered under the Design Act, 2000 and Section 15(2) stated that Design which is capable of being registered under the Design Act but has not been registered, copyright shall cease to exist as soon as the article to which the design has been applied has been reproduced more than 50 times by an industrial process.
One needs to mainly check that whether the work in question is purely an artistic work entitled to protection under the Copyright Act or whether it is a design derived from such original artistic work and subjected to an industrial process.
On June 10 2025, Hon’ble Madras High Court in its judgement of Mr.A.Ruthramoorthy vs Mr.P.Moorthy held that we have thus formulated a two-pronged approach in order to crack open the conundrum caused by Section 15(2) of the Copyright Act so as to ascertain whether a work is qualified to be protected by the Designs Act. This test shall consider: (i) whether the work in question is purely an ‘artistic work’ entitled to protection under the Copyright Act or whether it is a ‘design’ derived from such original artistic work and subjected to an industrial process based upon the language in Section 15(2) of the Copyright Act; (ii) if such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied so as to determine its dominant purpose, and then ascertain whether it would qualify for design protection under the Design Act.
The overarching objective is to ensure that rights granted under respective regime of Copyright Act or Design Act serve their intended purpose without unduly encroaching upon the domain of the other.
CANCELLATION OF DESIGN:
Section 19 provides that any interested person may present a petition for the cancellation of a registration of the design on the following grounds:
- Design has been previously registered in India.
- Been published in India or any other country prior to its registration.
- Design is not new or original.
- Not registrable under this Act.
- Not a design as defined under Section 2(d).
In Reckitt Benckiser Ltd v. Wyeth Ltd , the Hon’ble Delhi High Court held that while a previous registration in India would be a ground for cancellation without looking into the aspect of disclosure to the public or publication in general, a design registered in any other country prior to the date of registration in India would also be required to have been disclosed to the public by publication in tangible form or by use or in any other way in order to qualify as a ground for cancellation of subsequent registration in India.
PIRACY OF DESIGN:
Piracy of a design refers to the application of a design or its fraudulent, obvious imitation to any article belonging to the class of article in which the design has been registered for the purpose of publish, sale or import of such article without the written consent of the registered proprietor.
In a recent significant judgement, Trodat Gmbh & Anr vs Addprint India Enterprises Pvt Ltd & Anr, it was held that while examining a charge of design piracy, the Court is not to proceed from the point of view of a person of average intelligence and imperfect recollection, but has to examine the article vis-a vis the registered design as it would appear to an instructed eye, which is aware of the features examining the individual features of the new self-inking stamp of the respondent vis-à-vis of the registered design.
Remedies against piracy:
Section 22(2) provides that if any person acts in contravention of this section, he shall be liable to pay the registered proprietor of the design a sum not exceeding ₹25,000. However, the total sum in respect of one design shall not exceed ₹50,000.
Proprietor may bring a suit for the recovery of damages for any such contravention, and for injunction against the repetition thereof.
-Sayani Kesh, Ductus Legal
DUCTUS EDGE 