Elements Of Design Protection In India

By Author: Unimarks
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The main aim of the Design Act is to protect and safeguard the designs which are registrable under the Design Act. Certain elements are required to be present in the product to seek registration of the design. Not every design can be registered and protected under the law. There are certain elements required to be present in the product design to be eligible for registration.

This article shall discuss the important elements of design and how the judiciary has interpreted those elements and defined them in landmark cases.

Design as per Section 2(d):
One of the prime most requirements for a design to be registered is that it should fall under the definition of design laid down in the Act under Section 2(d). The following elements fall under the definition of design:

1.Features of shape, configuration
2.Patterns
3.Composition of lines or colors

Which are applied to any

1.Two dimensional or three dimensional
2.Using any process- manual. chemical or mechanical
3.Separate or combined

Which are appealable to eyes or solely judged by eyes.

Novelty ...
... and Originality

The term novelty and originality here mean the application of texts, patterns, lines, images, or a combination of either or all into creating a design that can be distinguished from other designs. Elements taken from natural objects or any other material source can be new and original.

In M/s BrightoAutoIndustries vs. Shri Raj Chawla, the term “originality” was defined as the author’s original creation. A design is said to be novel if a normal prudent man can differentiate it from the existing design.

The changes can be made in the entire product or even a part of it; however, such changes should be significant enough to make the design different from the existing prior art. The part of the design or the design itself will be considered original if, by viewing the product, it does not resemble any other available product. “Mere changes will constitute a new design if those changes are substantial in nature.” This was held in the case of M/s B Chawla & Sons v Bright Auto Industries.

The Court further held in Pentel Kabushiki Kaisha vs. M/s Arora Stationers “that mere superficial changes in the design will make the design novel or original.” Therefore, Under the following circumstances, a design is said to be novel:

1. It should not have been disclosed in public before the filing date of the ordinary application. In the case of the reciprocity application, it should not have been disclosed before the priority date filing.
2. It should be distinguishable from the already existing design or combination of designs known in public.

The term “publication” is not precisely defined in the statute. The controller opined in the case of Venus Industries Vs. Magpie Exports held that any design would fall under the meaning of “published” if made available to any person in India who is allowed to use or disclose it to the public.

Pro tip: Natural objects or articles like trees, diamonds, fish, plants, leaves, animals, etc., can represent the design, and such design will be considered novel or origination if the entire design appears to be novel.

In Hello Mineral Water Pvt Ltd Vs. Thermoking California Pure, the Court held that “There must be significant element or combination of one or more elements different from anything found in any prior structure.”

To ascertain whether the design is novel or not, the examiner conducts a novelty search of the proposed design- article-wise, class-wise and compares it with a different database. After a thorough novelty search, the examiner prepares a novelty search report to determine if the application can be accepted or not.

In Wimco Ltd v. Meena Match Industries, the Court opined that “disclosure to even a single person can constitute publication.”

The exception to the disclosure requirement:

The following situation shall not invalidate the registration of the design under the Design Act, 2000

Suppose the proprietor discloses the design in good faith to any other person, and that person discloses the design to constitute a breach of good faith. In that case, it will not invalidate the design’s registration.

It was held in Kemp and company v. Prima Plastics LTD. that “the disclosure of design if made in good faith by the lawful proprietor to any third person shall not constitute publication.”

1. When the proprietor accepts the first confidential order for the articles, which shall have the new design inputs before registration, it will not constitute publication of design.
2. If the designs have been showcased in any exhibition, which shall fall under the purview of Section 21 Of The Designs Act,2000.
3. If the design description is published during or after the exhibition but not before the exhibition.
4. If any third person published or describes the design during or after the exhibition without the lawful proprietor’s consent.

However, to claim protection under the following situations, the applicant must notify the controller as per FORM 8 describing the intention to showcase the design in the exhibition and file for the registration of design within six months from the date of exhibition or publication of designs.

Evidentiary value: In deciding the novelty of a design, EVIDENCE GIVEN BY THE TRADE EXPERTS can be admissible under the Court of Law.

Appealable to eye:
The design should be applied to the article so that it is solely judged by the eyes and its visual appearance only. In the case of Amp vs. Utilux, the Court stated: “design to be registered, it should be eye-appealable and its features to be externally visible.”

Should not be contrary to public order and morality:
Any prohibited design under any of the Central Government or state government or any institution authorized will not be given registration under the Designs Act, 2000. The designs that cause a breach of public order or are contrary to the nation’s morality or the design of such a nature that can hurt the sentiments of the people will be rejected from the registration at the first instance itself.

Should not be prejudicial to the security of India
Any design that can cause prejudice to the security of the country cannot be registered and published. The term “Security of India” connotes those designs or applications of design that can lead to war or contribute to any military establishment or other emergencies.

In such situations, if the controller feels that any design can be prejudicial to the security of the country, the proposed design will be sent to the defense authorization, and based on their opinion, the application will be considered or rejected.

The bottom line:

In Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd, where it was held that a design invented for the very first time by the author and never been reproduced, registered, or published anywhere in India or outside India can be novel or original.

The design should not be substantially similar to any other known designs. It is not necessary that the entire design must be new. Even if any of its significant parts are novel, it will be fulfilling the criterion of novelty. The eye is the ultimate judge to conclude the novelty of a design.

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