The purpose of the Designs Act is to safeguard and protect the designs which are original and novel. Such a design can be applied to a specific article to be manufactured by Industrial processes or means. An article embodying novel and original design provides that product with an aesthetic look that may potentially attract the customers. Novelty and originality of design are essential for getting that design registered to get copyright over that design.
Novelty:
A design is novel when it is not disclosed anywhere before the date of filing for ordinary applications. The date of reference for reciprocity applications is the priority date of the application for registration.
A design may be novel if it can be differentiated from pre-existing designs or a combination of designs. A design should not be published or used anywhere before the date of filing or priority date.
Originality:
Section 2(g) of the Act defines originality of design which is originating from the author of the design. An industrial design can be considered to be original even if they are known previously but are new in their application. A pre-existing design that is new in its form can be considered as an original work of the author. For example, a flower vase in the shape of the Eiffel Tower can be registered for serving different purposes even though the shape of the Eiffel Tower is well known.
Disclosure of Design
Section 16 of the Act mentions certain circumstances where disclosure of a design cannot be rendered as a publication to alter the status of the novelty of that design. Disclosure of a design cannot be considered as a publication of design in cases where the proprietor of the design imparts his design to a person in good faith, and that person discloses the design by using or publishing it in breach of good faith. Acknowledgment of first and confidential order for registration of articles incorporating a novel or original textile design cannot be considered as a publication of disclosure of the design.
Exhibition of the design prior to registration
Section 21 of the Act mentions circumstances where an exhibition of a design cannot prevent it from getting registration. The exhibition of a design or an article embodying the novel design without the prior consent of the proprietor shall not prohibit the registration of such design if the design is displayed in an industrial exhibition or exhibition to which the provisions of Section 21 of the Designs Act, 2000 have been extended. The publication of the description of the design during the period of exhibition or subsequently shall not create hindrance to the registration of the design.
However, there are certain requirements to be fulfilled to register the design posterior to the exhibition. A prior notice has to be furnished to the controller in the prescribed manner by the exhibitor exhibiting the design or article embodying the design or by the publisher publishing a description of the design. An application of registration of the design has to be filed within six months of the date of the exhibition of the design or publication of the description of the design.
In order to find out whether a design is novel or not, the examiner conducts a novelty search, article-wise or class-wise, by meticulously going through various databases and compares the design in consideration with the published designs to find out distinguishable features. If the design in consideration is not novel, then the previous publications are cited in the search report and sent to the controller.
Case Laws
The concept of novelty and originality has been clarified in the case of Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd where it was held that a design which has been invented for the very first time by the author and has never been reproduced, registered or published anywhere in India or outside India could be considered to be novel or original.
In the case of M/s BrightoAutoIndustries Vs Shri Raj Chawla, it was held that “originality” under this Act means an original creation of the author. A design can be considered a novel if it can be distinguished from the existing design. In other words, the design should not be substantially similar to any other known designs. It is not necessary that the entire design has to be new. Even if any of its significant parts are novel, it will be considered to be fulfilling the criterion of novelty. The eye is considered to be the ultimate judge to conclude the novelty of a design.
The court held in the case of Hello Mineral Water Pvt Ltd Vs Thermoking California Pure held that in order to comply with the requirement of novelty, a mere new novel shape or form is not enough. There has to be some element or combination of elements different from anything found in any prior structure.
The term “publication” has not been defined in the Act. The controller in the case of Venus Industries Vs MagppieExpots held that any design would be considered to be published if it has been made available to any person in India who is free to use or disclose it.
