DESIGNS: THE DESIGN ACT, 2000

DESIGNS:

THE DESIGN ACT 2000

Mini Cooper

The original Mini influenced a generation of car designers.

The Mini is a design classic that came about because of restrictions in fuel supply during the 1950s caused by the Suez crisis. Designer Alec Issigonis was tasked with designing a more frugal car than the large cars of the day, aiming to compete with increasingly popular German bubble cars like the original VW Beetle - itself a design classic. The original design became a true British icon, influencing a generation of car designers, and was revolutionary at the time. Its distinctively diminutive contours remain hugely popular today.

Coke’s Bottle

Coke's bottle needed to be distinctive and instantly recognisable - even in the dark.

Instantly recognisable, the Coca-Cola contour bottle is a masterpiece in industrial design that dates back to 1915 when the Coca-Cola Company asked its bottle suppliers to design a new bottle that would be distinctive and instantly recognisable - even in the dark. Designer Earl R. Dean took up the challenge, and following instructions issued by his boss, aimed to develop a design based on the ingredients of the drink. Unable to find any reference images for either the coca leaf or the Kola nut, Dean instead used an image of a cocoa pod from his encyclopedia as inspiration, leading to the iconic ribbed bottle shape we know and love today.

Vespa Scooter

The Vespa is a globally recognised icon of the Italian design aesthetic

The classic Vespa scooter design is associated heavily with the Italian design aesthetic, but it was actually heavily influenced by pre-World-War-II Cushman scooters made in the US and shipped to Italy by the Allies to act as field transport for paratroopers and marines during the war. It wasn't until Paggio involved aeronautical engineer Corradino D'Ascanio that the now-familiar scooter shape, missing the central supporting spar and allowing the rider to step through the bike to get on and off.  

Hasselblad Camera

Hasselblad's 500C Camera was its anchor product for four decades.

During World War II, the Swedish government, tasked Victor Hasselblad with designing a camera that mirrored a German aerial surveillance camera recovered from a downed plane. This camera was refined over the following years, eventually spawning the iconic 500C in the late 1950s. 

Such was the popularity of the camera; it became the anchor product for the Hasselblad company for the next four decades and was used by NASA during Apollo missions to the moon.  

Eames’ Lounge Chair

The classic chair design has continued to be popular since its 1950s launch

An unrivalled 1950s classic, Charles and Ray Eames' lounge chair and the ottoman combo was the couple's first attempt at high-end furniture. Fashioned from moulded plywood and leather, it was distinctive among luxury counterparts for being very comfortable as well as stylish. Constantly in production since its launch, the classic industrial design forms part of the permanent collection at MoMA in New York.

iPod/iPhone/iPad

 iOS devices: beautiful and truly game-changing

Three indisputably game-changing product lines by arguably the world's most iconic and celebrated industrial designer, Sir Jonathan Ive - all of which could easily have made a list on their own. It all started back in 2001 with the original iPod; the first iPhone was released in 2007; the iPad followed three years later, and finally the iPad Mini in 2012.

Mac

Apple's designs have consistently made other desktops look bland and boring

Despite squeezing all of its iOS devices into one entry, Cupertino's finest still made the list twice. Spearheading the reinvention of Apple in the late '90s, the all-in-one, brightly-coloured translucent computer made its rivals' beige boxes look crushingly ordinary. Since then, its evolution has seen it grow sleeker, slim, and minimalist, but no less iconic.

Maglites

Many Maglites have become collectables.

Introduced in 1979 with krypton or xenon bulbs and variable-width beams, many Maglites have become collectable items thanks to their limited-run special editions and custom paint schemes. They now use LED bulbs, and thanks to their power and durability are the flashlight of choice for many police forces. Until recently, this included the LAPD - until their double-use as a baton became controversial

Bergmönch Bike

This mountain bike can be transformed into a backpack for uphill climbs

Hurtling down steep, rocky terrain on a mountain bike is a powerful adrenaline rush, but reaching the summit in the first place can be a slow, painful slog. However, the ascent is the best bit for a mountaineer, while the downward leg is a killer on the knees. This lets you do both by transforming a bike into a backpack to let you carry it easily.

Points to ponder….

• A design appeals solely to the eye.
• The eye must be the eye of a customer. 
• Designs that are functional cannot be registered under The Design Act. 
• Law protects the creator of a new design so that he is not deprived of his reward if others apply his designs to their goods without his permission.

Designs Act , 2000

The Law promotes design activity so that consumers get a better–made product that looks attractive and is pleasing to the eyes. 

In the absence of an effective law, infringement may be rampant and designers will have almost no incentive to initiate and develop new designs.

Criteria for registration:

1. The design should be new or original, not previously published or used in any country before the date of application for registration. (Novelty & Originality)

2. The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Thus, designs of industrial plans, layouts and installations are not registerable under the Act.

3. The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act. (Of course, they have copyright protection!)

4. The features of the design in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state.

5. Any mode or principle of construction or operation or anything, which is in substance a mere mechanical device, would not be a registrable design. For instance, a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. 

However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect thereof is required to be inserted on its representation, provided there are other registrable features in the design.

6. The design should not include any trademark or property mark or artistic works.

Designs that cannot be registered under the Act

1. A design that is not new or original; or 

2. Design that has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or 

3. Design is not significantly distinguishable from known designs or a combination of known designs; or 

4. A Design that comprises or contains scandalous or obscene matter, shall not be registered.

Non Registrable Designs

An illustrative list of non-registrable designs is as under:

1. book jackets, calendars, certificates, forms and other documents.
2. dressmaking patterns, greeting cards, leaflets, maps and plan cards.
3. post cards, stamps and medals.
4. labels, tokens, cards and cartoons.
5. any principle or mode of construction of an article.
6. mere workshop alterations of components of an assembly.
7. mere change in size of article.
8. flags, emblems or signs of any country.
9. layout designs of integrated circuits.

Artistic work which is not the subject matter of registration

An artistic work, as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration. The section2(c) reads as follows: "Artistic works" means: 

A painting, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality. 

An work of architecture and 

Any other work of artistic craftsmanship.

Provisions of Copyright Act as Applied to a Design

A creator of a design shall keep in mind the following provisions of the Copyright Act, 1957:

1. Copyright shall not subsist under the Copyright Act in any design which is registered under the Designs Act.
2. Copyright in any design, which is capable of being registered but which has not been so registered shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process, by the owner of the copyright, or with his license, by any other person.

Duration of the registration of a design 

Initially ten years from the date of registration, but in cases where the claim to priority has been allowed the duration is ten years from the priority date. 

This initial period of registration may be extended by a further period of 5 years on an application made in Form-3, by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Registration.

Classification of goods mentioned in the Third Schedule of Design Rules, 2001

In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. 

The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. 

This classification has been made on the basis of the Articles on which the design is applied.

STEPS TO FILE AN APPLICATION FOR INDUSTRIAL DESIGN 

Step 1 Finding out whether any registration already exists Registration number is known, Form No.-6 filed along with the prescribed fees of Rs. 500. If the representation of the article or the specimen of the article is filed Form No.-7 along with the prescribed fees of Rs. 1,000 is required. 

Step 2 Preparing a representation of the design It should be prepared on white A4 size paper of durable quality. 

Step 3 Identifying the class of design 32 classes and most of the classes are further divided into sub-classes. 

Step 4 Providing a statement of novelty:  A statement of novelty should be included in the representation of a design as per the Act in order to specify the claim.

Step 5 Including a disclaimer If the ornamental pattern on an article is likely to be confused with a trademark, suggests any mechanical action or contains words, letters, numerals, etc., a disclaimer should be included in the representation. 

Step 6 Claiming a priority date This is the date of filing of the application in any of such countries provided the application is made in India within six months. 

Step 7 Determining the fee to be paid Application for the registration of a design is Rs 1,000 and for renewal, it is Rs. 2, 000. 

Step 8 Ensuring all enclosures are attached File an application only after ensuring that all enclosures and fee in the required numbers are attached. Applications can be filed in either the Design Office in Kolkata or the branch offices of the Patent office in Delhi, Mumbai or Chennai.

Step 9 Complying with objections* (if any) If the Design Office seeks additional information or clarifications after preliminary examination, please ensure that these are provided promptly. 

Step 10 Providing full details While filing an application make sure that all contact details and addresses are clearly and legibly filled in.

Revocation….

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 registrable under this Act; or

(e) it is not a design as defined under clause (d) of section 2. 

Piracy of Registered Design

The following activities are considered to be infringement:

1. to apply for the purpose of sale the design or any fraudulent imitation of it to any article in any class of articles in which the design is registered;

2. to import for sale any article to which the design or fraudulent or obvious imitation of it, has been applied;

3. to publish or to expose for sale knowing that the design or any fraudulent or obvious imitation of it has been applied to it. 

Penalties

A registered proprietor can institute a suit for injunction as well as recovery of damages against any person engaged in piracy of the registered design. 

Such legal proceedings can be instituted from the date of registration and till the expiry of copyright. 

However, in the case of a reciprocity application, the registered proprietor can claim damages only from the actual date on which the design is registered in India.

If any person commits piracy of a registered design, he shall be liable to pay a sum not exceeding 25,000/- recoverable as a contract debt. However, the total sum recoverable in respect of any one design shall not exceed 50,000/-.

The suit for injunction/damages shall not be instituted in any Court below the Court of District Judge.

CASES

Ampro Food Products v. Ashok Biscuit Works, AIR 1973 AP 17

The appellant manufactured biscuits with AP embossed on them. The respondent also manufactured biscuits with identical design except that letters AB were embossed on them, in place of AP. The suit claimed an injunction bringing a charge of piracy of the design. Issuing a temporary injunction, the Court held that in such cases the defence cannot argue that the appellant’s registered design was not new or original if no steps had been taken earlier seeking cancellation of the registration of the design.

Hindustan Lever Ltd. V. Nirma Pvt. Ltd., AIR 1992 Bom 195

The plaintiff alleged infringement of its registered trademark, passing off, and infringement of the copyrights in original artistic work and sought a permanent injunction to restrain the defendant from using the impinged carton in relation to soaps or detergent powder.

The defence took the plea that the said label was, in fact, a design that could be registered under the Designs Act, and the fact that it was not so registered makes copyrights if any, under the copyright Act non-existent when the article to which the design has been applied was reproduced fifty times by industrial process. The Court ruled that a label to be put on a carton for the goods is not a design.

Assignment of Designs

For an assignment to be valid, it must be in writing and the agreement between the parties concerned has to be reduced to the form of an instrument embodying all the terms and conditions governing their rights and obligation, and the application for registration of title under such instrument is filed in the prescribed manner with the Controller within the stipulated time- that being within six months from the execution of the instrument.