Introduction

“The details are not the details. They make the design.”

- Charles Eames

In India, Intellectual Property laws play an important role in safeguarding innovation, creativity and business interests. There are different forms of intellectual property rights of which Patents hold a significant place. Patent provide exclusive rights to investors on their inventions and protect them from any unauthorised use. Patents, in India, are broadly classified into – utility and design patents, where Patents Act, 1970 governs utility patents and Designs Act, 2000 governs design patents. While most of us have heard of patents, about a few are fully conversant with design patents. Design is what gives a product or a new invention its appearance.

This article delves into the depth of design patents, dealing with meaning of design as well as design patent, a comparative analysis between design and utility patents and the legal framework governing design patents in India. It will also study the eligibility and design registration process in India in detail.

Meaning of ‘Design’ in Indian Law

In Intellectual Property Rights (IPR), "design" is defined as the visual appearance of a product, incorporating amongst other features, the aspect of shape, configuration, pattern, and colour applied to an article.

Under the Designs Act, 2000, a ‘design’ refers to the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, whether in two-dimensional or three-dimensional forms. The definition excludes any mode or principle of construction, mechanical devices, trademarks as defined in the Trade and Merchandise Marks Act, 1958, property marks are provided in the Indian Penal Code, 1860, and artistic works are provided in the Copyright Act, 1957.

What is a Design Patent?

Design Patent is technically known as ‘Design Registration’. In simpler terms, Design Patent protects the way a thing looks which includes shape, form, design, pattern, configuration, etc. of the product. This kind of intellectual property protection is required in the industries where a product’s appearance and are crucial from setting it apart from competitors. It is crucial to realise that a design patent only protects the product’s aesthetics and not its functionality. Furniture, apparel, electronics, accessories, and so forth are a few examples.

Comparative Analysis of Utility Patent and Design Patent

Legal Framework for Design Protection in India

The Designs Act, 2000 and the Designs Rules, 2001 governs design patent in India.

1. The Designs Act, 2000: This act came into force on 11th May, 2001. The provisions of this act repealed the Designs Act of 1911 which was inspired by the British Patents and Designs Act, 1907. The new act retained most of the provisions of the earlier act in addition to some provisions from the TRIPS Agreement and some other international conventions.

2. The Designs Rules, 2001: These rules were notified on 11th May, 2001 in addition to the provisions of the Designs Act, 2000. They laid down the detailed procedure of the registration of the design patent.

Eligibility Criteria: What Designs Can be Registered?

A design should meet the following criteria to be eligible for registration:

1. Novel & Original: The design must be new and original. It must not have been disclosed to the public anywhere in the world by publication or use prior to the filing date.

2. Visibility in Finished Article: The design must be visible in the final product and judged solely by naked eye.

3. Visual Appeal – Not Functional: The design should not be related to the functionality of the product rather it should be aesthetic.

4. Not Against Public Order or Morality: It must not comprise scandalous and obscene matter.

The Process of Obtaining Design Patent in India

Step 1: Application for Registration

• Who can Apply – Any person claiming to be the proprietor and meeting the eligibility criteria can apply for registration.

• Form & Fee – The application should be filed in the Patent Office in a prescribed form, accompanied by the prescribed fee.

• One Class per Application – A design must be registered in only one class. If any confusion lies regarding the class, the Controller is the one to decide.

Step 2: Examination of the Design

• Controller’s Action – After the filing of the application, it is referred to the examiner for examination.

• Examination Report – The examiner, after assessing whether the design is capable of being registered under the act and the rules, submits a report to the Controller.

Step 3: Refusal or Approval of Registration

• Controller’s Discretion – On the basis of the examination report, it is the discretion of the Controller to either approve or refuse the registration of the design.

• Appeal against Refusal – The applicant may appeal to the High Court if the registration is refused by the Controller.

Step 4: Completion Within Prescribed Time

If the application is not completed within the stipulated time due to the applicant’s default or neglect, it is considered an abandoned application.

Step 5: Date of Registration

Once the registration is completed, the design is considered to be registered from the date of the application.

Step 6: Registration of Design in Respect of Particular Articles

A design may be registered in respect of any or all of the articles comprised in a prescribed class or articles. An article can belong to only one class. Any question therewith shall be determined by the Controller.

Step 7: Publication of Registered Design

• Publication by the Controller – After the registration of the design, the controller publishes the particulars of the design in the prescribed format.

• Public Inspection – Once a design is registered and published, it becomes open to public inspection.

Step 8: Certificate of Registration

• Issuance of Certificate – A certificate of registration is granted to the proprietor of the design by the Controller, upon successful registration of the design.

• Duplicate Certificate – In case of loss or other valid reasons, the Controller may issue one or more copies of the registration.

Step 9: Entry in the Register of Designs

• Register of Designs – A Register of Designs is to be maintained in the Patent Office, which contains the details of the design including name and address of the proprietor and notifications of assignments or transmissions.

• Computerized Record – The register under this section is to be maintained in digital form, such as computer, floppy disks, etc., with proper safeguards.

Remedies in case of Infringement of Registered Design

1. Injunction – A legal ruling to stop an entity from performing action.

2. Damages and Compensation

3. Delivery of Infringing Articles

Legal Pronouncements

1. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. – Supreme Court, in this case, held that the registered design is protected against the infringement. SC in this case also upheld the rights of the proprietor holding the design patent.

2. Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. – In this case, the Delhi High Court protected the unique design of the “waisted bottle”, i.e., the design of Carlberg’s Beer by holding that overall visual impression matters instead of minute differences.

3. Microfibres Inc. v. Girdhar & Co. Anr. – The Delhi High Court, in this case, laid down that once a design is registered under the Designs Act, 2000, it loses copyright protection.

Conclusion

The design of an item makes it appealing. Thus, registering a design in India is important to protect the aesthetics of a product and prevent its unauthorised use. Understanding the concept of design patents, its registration, enforcement and benefits will help the proprietors distinguish their products from the other products in the marketplace, ensuring a healthy and competitive market.

Author :- Akanksha Tomar, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.