The term Design is defined under the Design Act, 2000 which clearly refers to the word design as the features of the shape, configuration, pattern, ornament, composition of lines, colour, or combination thereof applied to any article, whether two-dimensional, three-dimensional or both forms by any industrial process or means, whether manual, mechanical, or chemical separate or combined and which in the finished article appeals to and are judged by the eye. It excludes any mode, principal, construction, or anything else that is in mind. In India, design registrations are granted by the Office of the Controller General of Patents, Designs and Trademarks of the IPO.
Under section 11(a) the registration of a design confers upon the registered proprietor an exclusive right to apply a design to the article in the class in which the design has been registered. A registered design owner is entitled to protection of his intellectual property under the Design Act, 2000. This, therefore, gives the non – registered design owner a potential loss since the unregistered design owner does not have any protection from the infringer who will infringe on their design which is always at risk if not registered duly with all due processes when registering for a design. It is vulnerable to piracy and the proprietor will lose its market worth and profit share of his/her own business.
To register a design, the procedure is carried out in lieu of Rule 10 of the Design Rules, 2001 which enlists the classification of goods with respect to which design registration must occur. The Design Act 2000, provides the rights and remedies to the Registered Proprietor of a Design. Chapter V of the Design Act, 2000 applies to legal proceedings. Section 22 of the Act in particular provides redressal against the grievances faced by a Registered Proprietor in cases of piracy of a registered design.
All designs will be registered except they should not clash with the provisions enlisted in Trademark and Merchandise Marks Act, 1958, Indian Penal Code, 1860 and Copyright Act 1957.
For a creator/innovator, a design acts as a basic structure of the product which they have envisioned. Registering a design is lucrative for any proprietor since it grants the owner of the design the security of getting their design protected from infringement by any other party. Along with the security it provides legal protection and exclusiveness which helps to preserve the authenticity of the design and restrains the other parties to misuse the design.
A design when registered can be used commercially by its owner making it more market- oriented, which allows the owner the safety of their design for ten years with additional renewal of the design for five years. The right over the design expires when it is not renewed under the stipulated time. With the design being registered it helps in building an effective market for industrial growth for the owner as well as the economy where the competition is stiff yet it protects the product design from getting copied. The registration of the design permits the owner to initiate a lawsuit against the design's imitator, ensuring the design owner's market share by retaining exclusivity on the design or industrial product. The
commercial usage of a design by its owner facilitates the production of new assets and makes them intangible which helps the owner in creating new and better revenue streams thus, leading to investment with high returns.
A registered design will help the owner to make its design more relevant than the other unregistered designs in the market since it is novel in nature and gives the owner its competitive edge in their respective markets/fields. This further helps a registered design owner which is registered under a specific patent authority to access its ability to license out their designs to external manufacturers. Registered designs may be sold to any other party for a fee, consideration, or royalty only if the design is market-oriented and survives the competition.
As a registered design takes 3-6 months to be registered by the Patent Office, once it gets the certificate of registration, the owner of the registered design is given the added benefit of being able to render its competitor’s design invalid in due faith of belief that the design is in resonation of their design and can file for invalidity when there are designs of similar products and industrial designs of the same nature which are seeking to be registered.
When a registered design is commercially making a lucrative business, it naturally brings out more labour force which helps the design owner, and the manufacturers to make more and more profits which helps in contributing to the economy and helping more and more people in the longer run.
In the fashion industry, the designs of the garments by the fashion designers are regularly registered in every season. In the automobile industry, the design of the car companies like Tesla, Mercedes, Hyundai etc., are duly registered in order to safeguard from infringers who will try to take advantage of the Registered Proprietor of the design. In the case of Apple vSamsung, the company Apple which manufactures products like phones, laptops, computers etc., filed a lawsuit where it was found that Samsung had willingly infringed Apple’s and utility patents and had also adulterated Apple’s trade dresses related to the iPhone.
The Delhi High Court in Steelbird Hi-Tech India v Asia Fibre Glass Productsgranted a relief of over 96 lakhs as damages to Steelbird Hi-tech India which is a helmet manufacturer against the defendant Asia Fibre Glass Products.
It is pertinent to mention that a party cannot claim more than Rs. 50,000/- in a Design Infringement Suit. However, this cap of Rs. 50,000/- is only applicable when the relief is claimed under section 22 (2) (a). There is no pecuniary restriction on the damages sought by a Registered Proprietor of a design who is seeking a case or a suit for injunction and damages under section 22 (2) (b). In the end, it is the sole discretion of the Court in awarding the damages in lieu of the suit for Injunction.
In cases of a suit filed by the Registered Proprietor for relief under section 22 (2), the Defendant will be at the freedom to take refuge under all grounds of section 19 of the Act for “Cancellation of Registration of Design” as grounds of their defence. Under section 22 (4) states that if the grounds available under section 19 are taken as grounds of defence, then
under such circumstances the suit or case or proceedings will be transferred by Court in which the suit or case or the proceedings will be held in front of the High Court for decision.
In Whirlpool of India Ltd. v Videocon Industries, the Bombay High Court gave its judgement in reference to Section 22 of the Designs Act, 2000 which allows action against “any person” in this section per se. A registered design could only be obliterated, or set aside or a registered owner could be stopped from using such design by an order of Injunction given by the Controller in accordance with section 19 of the Act or in accordance with section 22 in cases of judgement given in High Court. Considering a licensed proprietor does not use his design on an item on sale or in connection with the previously mentioned sale, in that circumstance, another registered proprietor is not permitted to invoke section 22 of the Act.
Therefore, the redressal of the grievances faced by a registered proprietor under section 22 of the Act is restricted to the use of contested designs.
Conservation of Novelty is the essence of Intellectual Property Rights. Although it is not a mandate to register a design under the Designs Act, 2000 if a design goes unregistered then it faces commercial losses on a hefty scale by the unregistered design owner. To have a brand name and value to a design, gathering new customers, and promoting a brand through a design on a global scale are some advantages of registering a design to start with. Some ideas and designs are dynamic and extremely essential hence they require legal protection which is obtained only by Registration of a Design.
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