Originality under Design Law: Judicial Trends

Introduction and Scope

Designs Act is designed specifically for safeguarding and protecting the designs which are original and novel in nature. These original designs later produced for other purposes provide a particular product the look as a representation used as a tactic of attraction and business. That particular design is used for business as attracting the customers is later registered to get a copyright over the original design under the law. Hence, later that particular originality design of them cannot be copied by others as its registered the ownership in the form of copyright already.

Under section 2(g) of the Designs Act, 2000[1] it refers to the originality of design from where the author of the design is originated from. Here the phrase original design means any other in the form of the pre-existing design can still be considered as an original work of the author. There are provisions for various circumstances under the designs act to what originality of design and novel or not is proved. The act in detail provides about the examinations, comparisons for the same to find out the original author. The process has examiners, controllers, publications for the same. The Designs Act, 2000 currently governs the issues related to design registration and piracy of the designs which are registered under the Indian laws. Design registrations are particularly useful since, many a time, a customer’s purchase decision is based on the product aesthetics, brand value, design which consists of what the shape, look, colour combination, dimension of the product they buy or invest in. therefore, a design plays a crucial role in the market for making its mark and uniqueness in others eyes.

Therefore, as intellectual property law is considered for the rapid evolving of law in fields of patent, copyrights as well. It is observed as a fact that among others copyright law is an important requirement where the one which other commentators like to use to is a sin quo non of the copyright protection laws itself. The Indian design rights have always been clear at achieve the level subjectively.

Design act laws (history)-

When coming to design rights India is one the few countries to adopt this concept. Design law is considered to be a landmark legislation in the field of Intellectual property rights. Which lays down rules and regulations pertaining to registration of a particular design to protect it from breach.

The design act is different from copyright act as it doesn’t protect the artistic work, only the design registered is protected under the design act. Vice versa the copyright act doesn’t include design in any form of protecting it. This was even held in the case of Microfibres Inc v. Girdhar co. and Anr.[2], that copyright law has no insight of protecting the design as the design law is specifically for it.

The Hague convention international provides for the International registration of designs and a regulation for the same in other countries. They lay few rules for the registration of a design to be protected under the act. Like the basic criteria is the design should be original, shouldn’t be from any prior publication, visible on the article and few other rules.

Originality under design law in India and judicial cases –

Speaking about India in specific, The design law in India defines a design under the Design Act, 2000 as “any shape, configuration, pattern, or composition of lines or colour in a article in any dimensional form, in any industrial process whether mechanical or whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any trademark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Mar Act, 1958 or the property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in clause (c) section 2 of the copyright act of 1957”. This is the definition under the design act, 2000.

This was from the amended enactment that is the prior act of design, the design act,1911. This was amended in 2000 and after which there was a development and growth in the field of technology. And it was a necessity for a new law to protect the designs in India effectively, thus to bring the Indian law in standard with the international law. Therefore, the new design act of 2000 has rescinding the old act.

Well design and its originality is very important as a design is something which is used to attract the customers towards their innovation making it look unique from others.  A design is also considered as an asset which adds more value to their brand. They are breaches for this as they are many new brands in the market daily establishing their identity or company, hence a design is at threat every time as others try to infringe a similar design for their company or brand. This can be protected if the particular design is registered under the design act. They have rules accordingly before registering a particular design for the company or what so ever under section 4 of the act deals with such rules before registering it. Apart from what section 4 of the act says, it is important for a design to be unique from others before getting it registered under the act for protecting it. The originality of a design is protected in this way as every new design under the act is procured and is protected in every way by the law. The law for protecting a particular design has a time period fixed which is upto ten years from the date of registration, the registered one of the designs gets the copyright in the design for this time period and after the expire or the date nearing by they can file an application notice to extend their time period so that they can have the same design for more period of time.

Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd[3] in this case the Supreme court verdict was declared any design invented for the first by the original author and has never been copied again or registered in India under copyright of the author then it still can be determined as to be an original one according to the law as observed in this case analysis.

In the case of M/s Brighto Auto Industries Vs Shri Raj Chawla[4] (1976), the Bombay high court held that the originality of design under the section2(G) of the act means to the original creation of the author and even though the prime parts of it are novel it can still be considered as the original design or the novelty in all the aspects of the design under the law.

These two cases have helped me understand the ambit of section 2 clause G of the design act, 2000 along with knowing the originality of design under the law in judicial trends.

Piracy Issues of A Registered Design:

Infringement of a copyright in design is termed as “Piracy of a registered Design” according to the regulations in India. It is against the law for any person during the existence of copyright to do the following mentioned acts without the consent or a proper license of the registered proprietor of the design and using it would be considered unlawful as it is piracy of a design.

If a copyright of any design exists then it shall not be lawful for any person who-

• “for any purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
• to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or
• knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article”.

The above situations are considered as unlawful acts and they are punishable for the same offence. Piracy of a design is considered as an unlawful act under the copyright and design act. For instance, in a case judgment was made regarding the piracy issue, in the case of Veeplast Houseware pvt ltd V. Bonjour[5] a design piracy was done a similar design was not considered as an act of imitation. The court held that a customer view point would matter more in finding if the design of a product is similar or imitated, and if they mistake the product as another then it would be considered as infringement according to the act.

In the case Ttk Prestige Ltd vs Kcm Appliances Private Limited[6], the case involved design infringement demonstrating the current application of the Design Act. Prestige held a registered design of specific shape, configuration, or pattern of their ‘Svachh’ pressure cooker design, including its features. Prestige alleged that KCM’s ‘Impex Dripless’ pressure cooker design infringed upon their registered design. The Delhi High Court issued an ex parte order in favor of Prestige. This case is an example of how design registration can be used to protect the unique appearance of a product.

If any person who does such unlawful act has to bear the consequences according to the section of the act-

• they have to pay a sum of compensation to the original registered proprietor of the design, amount not exceedingly more than twenty-five thousand rupees recoverable as a contract debt, or
• and if the proprietor of the design chooses to file a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof to pay such damages as may be awarded to be safe from such injunction.

Infringement of copyright in a design –

The following persons may be infringers of copyright in a design in few circumstances as follows under the copyright infringement act: –

• “a person who has applied the design of fraudulent or obvious imitation thereof to the article for the purpose of sale without the license or consent of the proprietor.
• a person who has caused to be applied the design or its imitation as aforesaid.
• a person who has imported for the purpose of sale a pirated article without the consent of the registered proprietor; and
• a person who has published or exposed for sale a pirated article knowing that it is pirated article”.

A prior suit can be initiated in copyright act but when it comes to the design infringement; there can be no suit or any proceeding for relief be initiated according to the regulations of the Designs Act, 2000 in specific courts. Therefore, no suit can be instituted in any court of law below the court of District Judge. Adding on, the suit for infringement of design, the recovery of damage for that can be filed only in a court above the district judge, that is a suit should not be filed in any court below the court of District Judge only in the design infringement cases.

The Delhi High Court case of Crocs Inc. v. Relaxo Footwears Ltd[7]. serves as a significant example of design infringement under Indian Design Law. In this case, Crocs, a renowned American footwear company, filed a lawsuit against Relaxo Footwears, an Indian footwear brand. The lawsuit alleged that Relaxo’s designs for certain footwear infringed upon Crocs’ registered designs. Crocs, presumably, held registered designs for the specific shape, configuration, or pattern of their footwear, likely the well-known clog design. The court, upon examination, determined that Relaxo’s footwear designs exhibited substantial similarities to the registered designs owned by Crocs. This similarity, as per the court’s judgment, constituted infringement of Crocs’ design rights under the Design Act.

Judicial remedy –

The judicial remedy for a design infringement under the Act is produced for damages along with an injunction issued against the person. If any person acts in contravention of the rights of the registered design holder, he shall be liable to the following judicial remedies under the act:

• “to pay damages to the registered proprietor of the design
• if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof to pay such damages as may be awarded and to be restrained by injunction accordingly”.

Conclusion and Suggestions

A selling design is an upper hand in the present-day world. The benefits of enrolling a design lies in taking mileage over contending items, keeping others from utilizing design, keeping choices open for conceding of permit to other people, keeping away from interval order emerging out of a suit recorded proprietor of earlier enlisted same/comparative design. The essential intention of design law it to encourage and defend the design component of mechanical creation. It is likewise thought about to support imaginative practice in the field of ventures. The smooth enlistment measure and the improved test for encroachment would uphold designers in getting and utilizing enrolled designs in India like nothing anyone’s ever seen previously. In any case, there are sure necessities to be satisfied to enlist the design back to the presentation. Hence, later that particular originality design of them cannot be copied by others as its registered the ownership in the form of copyright already. An earlier notification must be outfitted to the regulator in the recommended way by the exhibitor displaying the design or article encapsulating the design or by the distributer distributing a depiction of the design. A utilization of enrolment of the design must be recorded inside a half year of the date of the show of the design or distribution of the portrayal of the design.

My suggestions on the originality of design law are that if the judicial trends are increased in number as the decisions for such under the act in India are made it would be easier and more appropriate in establishing the design law in India by par to the International laws where the increasing significance of design law in India is more needed. It is a significant fact that the Patents is an important intellectual property where any organization prime focuses on, the Design in itself holds significant place in the commercial value of a product market but is also a main important law in India which needs more significance and recognition. A proven fact is that Design as an IP holds higher value because customers are more associated to a product branded value these days than with a company or a particular quality standard so, the design of any company or the brand aesthetics is important. So, they have to get their design lawfully registered under the design act, 2000. For companies, the design is the simplest way of differentiating one’s products from other similar company selling product in competition. As a result, it becomes important to protect the design from being copied or infringed by others under the law. Thus, it is pertinent to note that businesses and companies are taking active step to protect the aesthetic value of their products under the Designs Act, 2000. Design as an intellectual property right holds as much value as any other subject matter under the roof of intellectual property rights in India specifically improving these acts help in development.

 Bibliography

1. S.R. Myneni, LAW OF COPYRIGHT, 210-299 (New era law publication, 2018).
2. B.L. WADEHRA, LAWS RELATING TO INTELLECTUAL PROPERTY, 269-322 (5^th ed. 2018).
3. EBC’s book on Designs Act, 2000[Amended upto GSR 925(E), dt. 30-12-2014 and as of 5-12-2020] Bare Act (edition 19^th 2021).
4. Suchi rai, India: Industrial Design Protection in India: The Designs Act, 2000 article published on, 26^th November, 2018.
5. Konpal Rae and Sunil Tyagi, Design Protection in India article published on, 14 feb, 2012.
6. L.Wadehra, BOOK ON Law Relating to Intellectual Property,(5^th edition 2017).
7. Naraynan, book name Intellectual Property Laws, (3^rdedition 2018).

[1] Section 2 (G) of the Designs act, 2000

[2] Microfibers Inc. v. Girdhar Co. and Anr, 2006 (32) PTC 157.

[3] 2008 (37) PTC 1 (SC).

[4] ILR 1978 Delhi 120.

[5] Veelpast Houseware private ltd V. Bonjour, 2011 SCC OnLine Del 2558, ILR (2011) 5 Del 753, (2011) 46 PTC 479.

[6] Ttk Prestige Ltd vs Kcm Appliances Private Limited, 2023 DHC 2494.

[7] Crocs Inc. v. Relaxo Footwears Ltd; 2019 DHC 1133.