Industrial Designs: Rights in Lapsed Design

Industrial design protection is provided only for the aesthetic feature of a product, not for its functional design. Industrial design laws generally protect designs applied on industrial products which are aesthetic and non-functional. Such designs merely enhance the aesthetic appeal of industrial products. Typically, industrial designs are applied on products like furniture, packaging, watches, textiles and handicrafts. The economic value of these products lies in enhancing their aesthetic appeal to consumers. Designs which are functional are not registrable under the Designs Act, thus if a designer makes an article in a certain shape not to make it appeal to the eye of a consumer but solely to make the article perform a function, then it does not become registrable.

The definition of Design under the new Act has been widened. Under the previous law, the Design registration was granted only for the visual appearance of an article which included shape, configuration pattern, and ornamentation whether in two or three dimensions. Under, the Designs Act 2000, a Design registration can now be obtained for new or original features of shape, configuration pattern, ornamentation or composition of lines or colours as applied to an article, whether in two or three dimensions or both. A Design is something which determines the appearance of an article, or some part of an article. Designs are applied to an article with the objective of ornamenting and beautifying the article. If a particular feature is so applied on an article that it does not appeal to the eye at all and is incapable of attracting a prospective consumer in any manner for the purchase thereof, then such feature will not fall within the scope of a design.[4]

A visual characterization of an article which influences a person to purchase an article in preference to other articles which are identical in function but differ in appearance, such characterization would also meet the criteria of a design. A design must be applied in the article itself as in the case of a shape or configuration which is three-dimensional, e.g., shape of a bottle or flower vase or the case of design which is two dimensional, e.g., design on a sari, bed sheet, wallpaper which serves the purpose of ornamentation. It should be one which catches the eye of the purchaser. In Delhi Metro Plastic Industries v. Galaxy Footwear case, it was held the definitions of “design” in Section 2(5) of the 1911 Act and Section 2(d) of the 2000 Act were slightly different and the present definition had certain additional features. The legislation has amplified the definitions of article and design to confirm them with international accepted definitions for providing wider protection. The definition of article has been broadened to include parts of articles sold separately within its scope. The definition of Design has also been amplified to incorporate the composition of lines and colors to avoid overlapping with Copyright Act, 1957 regarding the definition of design with respect to artistic work.

Introduction

“A thing of beauty is a joy for ever”, these golden words have a very great significance in today’s materialistic world, where the appearance of an article counts more than its utility or quality. Many people blindly choose an article, which catches their eye by the beauty in its design. The concepts of globalization & liberalization have flooded the Indian markets with large variety of products. The consumers are provided with numerous alternatives for any single product. This has made the Indian consumers more selective. Nowadays the producers have to not only prove their product’s reliability but they also have to satisfy the aesthetic appetite of the consumers. The producers spend huge capital in developing innovative designs for catching the recognition of consumers by enhancing the appearance of their products. There are professional designers who put great intellectual effort in creating new & attractive designs. The rationale for design protection is clear from US Supreme court’s decision in the case, Gorhan Mfg .Co .v. White, in which the court stipulated that the essential rationale for design Law are that the design right may enhance the design’s “saleable value”, “may enlarge the demand for it” and may be a “meritorious service to the public”. Design protection will play an important role in the product market, increasing the competitiveness of the manufacturer or vendor of the product, and enhancing quality of societal life. Hence it is necessary to protect designs so as to reward the designer’s creativity and to encourage future contributions. To this end, industrial designs are protected by legislations.

About/History

 In India, previously the law of designs was governed by the Designs Act 1911.Since the enactment of the Design Act, 1911 considerable progress has been made in the field of science and technology. Hence the legal system for the protection of industrial design required to be made more efficient in order to ensure effective protection to registered designs. It was also essential to promote design activity in order to promote the design element in an article of production. The Designs Act, 2000, repealed the Act of 1911 and it aims at protecting the designs in India and bringing the Indian law at par with International law. India’s Design Act, 2000 complies with the articles 25 and 26 of TRIPS agreement which stresses on designs protection.

The new Act has come into existence on 25.05.2000 and the new Act is a consolidating and amending Act relating to the protection of design. From the Statement of Objects and Reasons of the new Act, it appears that the framers of the law became aware of the considerable progress in the field of science and technology which has taken place since the enactment of the old Act in 1911. As such, one of the objects of the new Act was to ensure effective protection to the registered designs. One of the objects was also to ensure that law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity and to remove impediment to the free use of available design. The important purpose of design registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.

A proprietor shall have no right to institute a suit or proceeding in respect of piracy of design or infringement of the copyright, which has been committed between the date on which the design ceased to have effect and the date of restoration of the design.[1] A registration of design will cease to be effective on termination of 10-year period from date of registration if extension fee for further term of five years is not paid before the expiry of original period of 10 years.

However, lapsed designs may be restored provided the following conditions are satisfied:

  1. Application for restoration is filed with prescribed fees within one year from the date of lapse stating the ground for such non-payment of extension fee with sufficient reasons.
  2. If the application for restoration is allowed the proprietor will be required to pay the extension fee and an additional fee prescribed by the Act.[2]

References/Citations:

  1. 81U.S. (14 WALL.)511(S.Ct.,1872) 
  2. IAG Company Ltd. v. Triveni Glass Ltd. 2005 (30) PTC 143
  3. Designs Act 1911
  4. Re. Stenor Ltd v. Whitesides (Clitheroe) Ltd., 63 RPC 81.
  5. Samsonite Corporation v. Vijay Sales 1998 (18) PTC 372 [Del].
  6. 2000PTC 920 (Del).

[1] Section 14 of the Designs Act, 2000.

[2] https://www.obhanandassociates.com/blog/is-lapsed-design-restoration-possible/

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