 The need for extending the statutory

protection to the registered industrial designs,

encouragement of design activities and the
promotion of the design element in an article of
production.
 The Design Act,2000- It is not to allow the
protection of the registered design beyond
what is necessary to create the required
incentive for design activity.
 Sec.2(d)"Design" means only the features of
shape, configuration, pattern, ornament or
composition of lines or colours applied to any
article whether in two dimensional or three
dimensional or in both forms, by any industrial
process or means, 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
mode or principle of construction or anything
which is in substance a mere mechanical
device.
 In this case, the designs of electrical terminal
for washing machine were held by House of
Lords as invalid because the designs were
dictated by function.
 Only Eye Appeal
 The essential ingredients of originality is that
the design must be new or original but the
degree of originality in design does not need to
be high.
 The design should originate from the author
and therefore the copied design will not be
considered as original
 Design in question must not bear similarity or
resemblance with the other designs.
 The novelty of design means the design must
be different in visual appearance from the
existing designs, in the eye of those who have
the knowledge of existing trade practices.
 The court will decide on facts and degree of
similarity and with the help of expert evidence
if required.
 (a) “article” means any article of manufacture
and any substance, artificial, or partly artificial
and partly natural and includes any part of an
article capable of being made and sold
separately;
 (g) “original”, in relation to a design, means
originating from the author of such design and
includes the cases which though old in
themselves yet are new in their application; (h)
“Patent Office” means the patent office
 1. Design is meant to produce an article by
industrial process or means (manual,
mechanical, chemical etc.).
 2) Design is not the article itself but the
conceptual design containing the features of a
shape, configuration, pattern, composition of
lines etc.
 3) Design is to be judged solely by the eye
which is put in the form of finished article.
 4) The subject matter of a Design is not a
copyright that falls under the Copyright Act or
a trademark under the Trademark Act.
 Sec.4.A design which
 (a) is not new or original; or
 b) has been disclosed to the public anywhere
in India or in any other country by publication
in tangible form or by use or in any other way
prior to the filing date, or where applicable, the
priority date of the application for registration;
or
 (c) is not significantly distinguishable from
known designs or combination of known
designs; or
 It was held by the Calcutta High Court that
mere publication of designs, specifications,
drawings by a foreign patent office would not
in itself constitute prior publication thus
making a design registered in India susceptible
to cancellation.
 Dabur India Ltd. v. Amit Jain [2009 (39) PTC 104
(Del) (DB)], the Delhi High Court concurred
with this viewpoint of Calcutta High Court.
 It provided guidelines as to what amounts to
'prior publication' under The Designs Act, 2000
(“the Act”). The Design Act provides that ‘prior
publication’ before registration can be a ground
for cancellation of a Design. The court was
therefore asked to clarify meaning of ‘prior
publication’.
 In terms of what constitute an ‘original’
design, the bench clarified that new or original
is ordinarily understood to mean such designs
which are not well-known and do not exist in
public domain.
 The court clarified publication of a design in
the form of photographs or explicit pictures
illustrations in a magazine, catalogue, book,
newspaper etc. that clearly depict the
application of the design on the same article,
with the same visual effect would amount to
prior disclosure or publication.
 The bench concluded that what amounts to
publication is a question of fact to be decided
as per the evidence led in each case. Thus, mere
existence of a design in the records of a
Registrar of Design in a convention country
may not amount to publication in all cases.
 There are two kinds of exceptions which do not
amount to prior publication.
 If any exhibitor exhibits the design or article or
publishes a description of design elsewhere
during or after the period of holding any
industrial or other exhibition provided : 1. The
Central government must extend the operation
of sec.21 of the Design Act to such exhibition-
The exhibitor gives prior notice to the
controller and application is to be made within
six months from the date of first exhibiting
design or article or publishing description of
the design.
 Sec.16 of the Design Act,2000- if it is made by
the proprietor in good faith to a third person or
to a person or with whom he had trade
relation or commercial relations.
 The registration of design will be permitted
provided the design is applied to the article. In
relation to registrable design , the term applied
to any article implies that the design and article
must bear separate independent existence of
their own so that the design could be identified
from the article.
 Sec.3.Registration of Design:(1) The Controller
General of Patents, Designs and Trade Marks
appointed under sub-section (1) of section 4 of
the Trade and Merchandise Marks Act, 1958
shall be the Controller of Designs for the
purposes of this Act.
 Sec. 5. (1) The Controller may, on the
application of any person claiming to be the
proprietor of any new or original design not
previously published in any country and which
is not contrary to public order or morality,
register the design under this Act.
 Sec.11 of the Designs Rules 2001
 Since the registration of design is permitted in
not more than one class of article, if the
applicant intends to register the same design in
more than one class of article , separate
application is required to be submitted for each
class of article and the application shall contain
the number or the number of the registration
or registrations already effected.
Sec.11(2) of the Designs Rule,2001- The applicant
in his application for registration is required to
state that the class in which the design is to be
registered and article to which it is to be applied.
 Sec.6 (1) A design may be registered in respect
of any or all of the articles comprised in a
prescribed class of articles. Registration on to
be in (2) Any question arising as to the class
within which any article falls shall be
determined by the Controller whose decision in
the matter shall be final.
 The article shall be classified as specified in the
third schedule and the Controller is the sole
authority to determine the class within which
article falls.
 Sec.5 Ordinary application. An ordinary
application does not claim priority.
 Sec.44.Reciprocity Application: A reciprocity
application claims priority of an application
filed previously in a convention country. Such
an application shall be filed in India within six
months from the date of filing in convention
country. This period of six months is not
extendable
 Rule-18- The application to be examined by the
examinees-Amendment if any will be informed -3
months
 Sec.21 of the Design Rules-2001
 If any applicant does not complete the process
after filing the application within 6 months
from the date of application due to his neglect
or default , the application for registration will
be deemed to be abandoned.
 Sec.9 of the Designs Act,2000
 The processing of the application of
registration of the design is completed with the
grant of certificate of registration to the
proprietor of the design was when registered
by the Controller.
 Metro Plastic Industries v. Galaxy Footwear
1998(18) PTC 476
 It was held that the certificate of registration is
to be tried and tested in the laboratory of
courts. It may be disputed by various grounds
like prior publication, lack of originality etc.,
 Certificate does not establish a conclusive
 It is not possible to accept that factum of
registration of design in favour of plaintiffs by
itself is sufficient to entitle the plaintiff to get
interim injunction against the defendant. Even
after the issue of certificate of registration , the
validity of design can be challenged on various
grounds and if it is found that the design in
question was not registrable at the time of
giving certificate of registration by the
Controller, the plaintiff will be refused relief
prayed by him.
 Interlego AG v. Tyco Industries-1988 RPC 342.
 The term eye appeal is described as the appeal
which is created by distinctiveness of shape,
pattern or ornament as calculated to influence
the customer’s choice. In summary, a design
may acquire eye appeal for its distinct visual
appearance which attract the customers.
 Not by the function or by the artistic quality of
design.
 Rule 7 of the Designs Rules,2001
 After the registration , one or more views of
the representation of the design , the
particulars of the application and the article to
which the design is applied will be published
by the Controller in the official Gazette and
thereafter the design will be open for public
inspection.
 Sec.11(1) of the Designs Act,2000
 The design registered under the Designs Act
2000 remains in force initially during ten years
from the date of registration.
 Sec.11(2) of the Designs Act,2000
 Extension of 5 years from the expiration of
original period of ten years.
 Therefore on expiry of 15 years the design
registered under the Act becomes public
property and usable by any person.
 The Scope of copyright under the Designs Act
2000 is restricted when compared to the
copyright of design under the Copyright
Act,1957.
 The Copyright under the Designs Act means
the exclusive rights to apply the design to any
article in any class in which the design
registered.
 The Copyright under the Copyright Act 1957
is automatic from the point the work is fixed in
any tangible form.
 The copyright in design under the Designs Act
does not have any application in relation to
copyright under Copyright Act.
 Sec.19. Cancellation of registration.—(1) Any person
interested may present a petition for the cancellation of
the registration of a design at any time after the
registration of the design, to the Controller on any of
the following grounds, namely:—(a) that the design
has been previously registered in India; or
 (b)that it has been published in India or in any other
country prior to the date of registration; or
 (c) that the design is not a new or original design; or
 (d)that the design is not registerable under this Act; or
 (e) that it is not a design as defined under clause (d) of
section 2.
 (2) An appeal shall lie from any order of the Controller
under this section to the High Court, and the
Controller may at any time refer any such petition to
the High Court, and the High Court shall decide any
petition so referred.
 The first plaintiff, Dart, a US based company
and the second plaintiff, Tupperware Indian
Pvt. Ltd. (TIPL) filed a suit for permanent
injunction in the Delhi High Court against
Techno Plast, the proprietor of the mark
“Signoware”. The plaintiffs claimed that
ownership to the know-how, intellectual
property rights and trade secrets in its designs
used for the manufacture of Tupperware
products.
 The plaintiffs alleged that they were a world
famous company with immense goodwill and
reputation and the defendant company copied
their product designs which amount to design
infringement, copyright infringement, passing
off, copying designs by reverse engineering,
unfair competition and unfair trade practices.
The defendants, on the other hand, claimed
that the products were distinct in terms of
trade name, appearance, colour scheme and a
product of their own skill and knowledge and
also that the designs were in public domain.
 As to the claim of design infringement, the
court looked into the meaning of “publication”
and noted that it meant the availability of
knowledge or awareness about a particular
design. Registration was only prima facie
evidence of novelty and originality and the
designs lacked originality as the designs had
published in the 1989 book, “The Tupperware
Cook”. The designs lacked originality as they
were substantially similar to those published
earlier. Therefore, they were not entitled to
injunction on this ground.
 The court rejected the claim of copyright
infringement as the claims clearly fell within
the ambit of the Designs Act and copyright
claims in industrial drawings and designs, to
be used for manufacturing processes were not
maintainable. The copyright ceases to exist
once the design has been applied and
reproduced over 50 times. However, since
there were serious evidential doubts in proving
that the copyright survived design registration,
the court did not injunct the defendants.
 As to the claim of passing off, the single judge
held that the situation was actually contrary.
As per a report, the defendant’s salesmen made
representations to the customers not that their
products were Tupperware products, but that
they were as good in quality and appearance,
yet half the price of Tupperware. Thus, the
defendants were not passing off their goods;
rather they were merely puffing up their
products by claiming superior quality.
 Firstly, the court agreed with the analysis of the single
judge that the designs were prima facie in public
domain and lacked novelty and hence, could not be
protected by the Designs Act despite registration.
 Secondly, the court held that the question of asserting a
copyright infringement claim independently cannot
arise at all when the design protection subsists, but
infringement has not been prima facie established.
However, the court went on to discuss the issue as an
arguendo. It observed that the language of Section 15
of the Copyright Act makes it clear that copyright does
not subsist in a registered design as this design
acquires a commercial element on mass reproduction
which is not the case with an artistic work.
 The appellant manufactures and sells
upholstery fabrics with designs derived from
the original and unique artistic works either
conceptualized or drawn by its employees or
by assignation of the copyright in such artistic
works to the appellant by the original artists.
 The respondents are also manufacturers of
upholstery fabrics and the learned Single Judge
in the judgment challenged in this court has
held that the upholstery fabrics of the
respondent do incorporate/reflect the designs
founded upon the appellant's artistic works or
a substantial reproduction thereof.
 The grievance of the appellant arises from the premise
that the learned Single Judge held that the designs in
question were capable of being registered under
the Designs Act 2000 and consequently the appellant
was not entitled to seek protection under the copyright
law as the designs had not been registered under the
Design's Act.
 In India, there are special legislations
governing the protection of different nature of
rights. In so far as the industrial designs are
concerned, the protection is provided under
the Designs Act . f. Fabric designs on textile
goods have been classified as proper subject
matter of design protection by inclusion as a
specific class in the rules framed under
the Designs Act. Such protection is provided
under clause 05 of the New Design Rules, 2001.
 Section 15 of the Copyright Act is in two parts. The first
part i.e. sub- section (1) states that copyright shall not
subsist under the Copyright Act in any design which is
registered under the Designs Act Consequently once
the design is created and got registered under
the Designs Act, whether or not the design is
eventually applied to an article by an industrial
process, the design loses its protection as an artistic
work under the Copyright Act. Therefore, subject to
whatever rights that are available under the Designs
Act the registered design holder cannot claim
protection or complain of copyright infringement in
respect of the registered Design under the Copyright
Act.
 If the design is registered under the Designs Act, the
Design would lose its copyright protection under
the Copyright Act. If it is a design registrable under
the Designs Act but has not so been registered, the
Design would continue to enjoy copyright protection
under the Act so long as the threshold limit of its
application on an article by an industrial process for
more than 50 times is reached. But once that limit is
crossed, it would lose its copyright protection under
the Copyright Act. This interpretation would
harmonize the Copyright and the Designs Act in
accordance with the legislative intent.
 The Court held that while design protection of 15 years
shall be granted to the products themselves, the
drawings of the products shall be protected by
copyright, irrespective of the intention of the artist to
commercially manufacture the product which was
drawn. The court further held as to Section 2(c) of the
Copyright Act, “This definition has a very wide
connotation as it is not circumscribed by any limitation of
the work possessing any artistic quality. Even an abstract
work, such as a few lines or curves arbitrarily drawn would
qualify as an artistic work.” Therefore, unless a work of
art is capable of design protection and has been
registered as a design, or should have been registered
as a design, the copyright in the underlying artistic
work subsists independently of design rights.
 Section 22 in the Designs Act, 2000
 22. Piracy of registered design.—(1)During the
existence of copyright in any design it shall not
be lawful for any person—(a) for the 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 licence or written consent of the
registered proprietor, or to do anything with a
view to enable the design to be so applied; or
 (b) 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
 (c) 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
 (2) If any person acts in contravention of this
section, he shall be liable for every
contravention—(a) to pay to the registered
proprietor of the design a sum not exceeding
twenty-five thousand rupees recoverable as a
contract debt, or
 b) 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: Provided that the total sum
recoverable in respect of any one design under
clause (a) shall not exceed fifty thousand
rupees: Provided further that no suit or any
other proceeding for relief under this sub-
section shall be instituted in any court below
the court of District Judge.
 Officine Lovato SPA V.Pravinbhai Jaggivandas
Mehta 2006(32) PTC 422
 If the design was registered previously in
India but it was not declared by the applicant
or brought to the notice to the controller at the
time of filling of application for registration,
registration will be cancelled.
 Brighto Auto Industries vs Raj Chawla on 24
December, 1976
 B.Chawla & Sons a firm owned by Raj Chawla,
is manufacturing rear view mirrors. Their
design of this mirror was registered at No.
139585 in class I under the Designs Act, 1911 on
28-2-1972. The petition preferred by Messrs
Brighto Auto Industries, a partnership firm,
engaged in manufacture of various articles,
including rear view mirrors, for the
cancellation of the aforesaid design.
 It has been urged that Messrs B. Chawla &
Sons' design was not a new design, that it had
no originality about it, that such designs were
common in the market and that the
respondents made a false claim as to their
being originators of the said design before the
Controller of Patents and Designs to obtain the
impugned registration.
 Whether the design referred to in the petition
is liable to be cancelled for the reason stated by
the petitioner?
 cancelled
 He has been seeing auto mirrors rectangular,
circular and round in shape since his
childhood, that the respondents' mirror is a
common type rectangular mirror with a slight
curve on the upper side and mirrors with
curves on the upper side were available in the
market before the registration obtained by the
respondents, that there is no novelty or
newness in the respondents' design
 Sec.13(2) If the copyright in design is lapsed due
to non-renewal , the owner of the registered
design is not entitled to bring the suit for
infringement against third party.
Castrol India Ltd v. Tide Water Oil Co(I)
Ltd.,(1996)(16) PTC 202
Dissimilarities in Colour-Similarity by the
Imitation of the registered design
Mohd. Abdul Karim v. Mohd Yasin & Anr AIR
1934 All
Infringement-Suit by Proprietor of design
 In IA No. 10928/2002, under Order 39 Rules 1
& 2 of Code of Civil Procedure, plaintiffs seek
an ad-interim injunction restraining the
defendant from manufacturing, selling or
offering for sale the tooth brushes which
infringe the plaintiffs registered design No.
170554. Vide IAs No. 4541/2003
 The plaintiffs have claimed that they have
obtained registrations of the said design in
several parts of the world as mentioned in
paragraph 6 of the plaint but the tooth brush
Annexure B has not been so far manufactured
or sold in India. They have pleaded that it has
come to their notice that the defendant is
offering for sale the tooth brushes under the
brand name 'Anchor Flexi Grip' with a design
which infringes the plaintiff's aforesaid
registered design.
 They have managed to get, design No. 170445
registered in their favor by introducing
insignificant and small changes which do not
introduce any novelty or a new design in their
toothbrush and the new design is a mere
fraudulent imitation of the old designs. The
distinctive features of the design in question
and earlier designs which are in public domain
are almost identical and obvious imitation.