What constitutes a Design under the Designs Act?
Something that has an impact on the appearance of an article or a part of an article can be said to be a design. An article embodying novel and original design provides that product with an aesthetic look that may potentially grab the attention of the customers.
The definition of “Design” is mentioned in Section 2(d) of the Designs Act, 2000. Design under the Act basically constitutes features of shape, configuration, pattern, ornament or composition of lines or colors coated on any article which may be in 2D or 3D form or in both the forms. The design may be applied to the article by industrial process or means which may be manual, mechanical or chemical, separate or combined. The article shall not be any mere mode, the principle of construction, or anything which is a mere mechanical device in substance.
The aforementioned constituents of design applied to the article are judged solely by the eye and should be appealing. Any trademark as defined in Section 2(zb) of the Trademarks Act, 1999, or any property mark such as the mark used by the Indian Railways on their goods as mentioned in Section 479 of Indian Penal Code, 1960 or any artistic works defined in Section 2(c) of the Copyrights Act, 1957 lies beyond the purview of design.
Let us delve in to what can be registrable and can not be registrable under the Designs Act.
What designs can be registered?
A design that is covered under section 2(d) of the Act and conforms to the requirement of novelty, originality, and is not prejudicial to the public order or morality or security of India can be registered under the provisions of the Designs Act, 2000 and Designs Rules, 2001.
– Section 2(d) defines the scope of designs under the Designs Act.
– Section 4 of the Designs Act, 2000, briefly explains the terms “novelty” and “originality”. A design is said to be novel when it is disclosed to the public neither in India nor in any other country prior to the date of filing for ordinary applications.
– Section 2(g) of the Act defines originality of design as the design which is originally created by the author. A design can be considered to be original if they are known previously but are new in their application.
– Section 5(1) of the Act explicitly mentions that for the purpose of registration a design should not be contrary to the public order and morality. The controller may refuse to register a design if it is prejudicial to the public order and morality by virtue of section 35 of the Act.
– Laying reference on Section 46 of the Act a design cannot be registered if it is prejudicial to the interest of the security of India. In case a design registered under the Designs Act is found against the interest of the security of India, the controller may even cancel the registration of such design.
Section 46(b) of the Act broadly describes what all designs could be prejudicial to the security of India. Application of any features mentioned in section 2(d) of the Act, to any article which may be used for war or has been fabricated directly or indirectly for the purposes of military establishment or war or other emergencies in international relations.
What designs cannot be registered?
If the article on which the design has been applied is a mere mechanical device, mode, or principle of construction, the design cannot be registered. Any trademark as defined in Section 2(zb) of the Trademarks Act, 1999, or any property mark as mentioned in Section 479 of Indian Penal Code, 1960 or any artistic works defined in Section 2(c) of the Copyrights Act, 1957 lies beyond the purview of design. Any creation of artistic craftsmanship, or artistic architectural design of a structure or building, or any painting, sculpture, drawing, map, chart, plan, diagram, an engraving or a photograph even though they possess artistic quality cannot be registered under the provisions of the Designs Act, 2000 and Designs Rules, 2001.
Some non-registrable designs mentioned in the Manual of Designs Practice and Procedure are books jackets book jackets, calendars, certificates, forms, and documents, dressmaking patterns, greeting cards, leaflets, maps, and plan cards, postcards, stamps and medals, labels, tokens, cards, and cartoons. The rationale behind keeping the aforementioned designs outside the ambit of design is the fact that once the design is removed the articles cease to exist.
Significant Case Laws
In the case of Sifam Electrical Instrument Co Ltd V Sangamo Weston Ltd., it was observed that any integral part of an article could not be registered under the Act if it does not possess a unique identity.
In the case of Glaxo Smithkline CH GmbH & Co. v. Anchor Health & Beautycare P. ltd. it was held that a mere mechanical device lies beyond the purview of designs and hence cannot be registered.
The term “mechanical device” has been clarified in the case of Kestos Ltd. v. Kempat Ltd. & Kemp. A shape in which all the features are determined by the functions of the article can be considered as a merely mechanical device.
The test of “influencing customer preference” was evolved in the case of Amp. V. Utilux. It was clarified that design should be appealing to the eyes of the customer and not the court. The ultimate judge is the eyes of the customer or consumer.
In the case of Narumal Khemchand v. The Bombay Co., Ltd. It was clarified that a trademark infringement suit cannot be instituted against a party copying design on the account of the fact that trademarks cannot be registered under the Designs Act.
