In the modernizing world where every person utilizes the benefits of his or her intellectual property, it is equally important for him to protect the same under the law. The Designs Act, 2000 protects the rights of the proprietor upon registration of his industrial design under this Act. As per Section 2(d) of the Act, ‘design’ is defined as features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article by an industrial process or means. This definition is similar to the definition of design in the U.K. Section 1 (2) of the UK Registered Designs Act, 1949 defines ‘design’ as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture or materials of the product or its ornamentation.[1]
It is mandatory for a design to be registered under the Act to seek protection under it. Therefore registration protects industrial designs from being copied and falsely imitated. The design should be novel in order to seek protection under the law.
However, neither the Paris Convention nor the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides any specific standard for the novelty of design patents. In fact, it is within the discretion of each sovereign state to decide what standard to choose for this purpose. Every sovereign state that uses a patent right for the protection of designs may choose an appropriate novelty standard based on its own development. For example, Article 102 (a) of the U.S. Patent Act provides: Loss of novelty means that the invention was known or used by others in this country, or patented or described in a printed publication at home or abroad, before the invention thereof by the applicant for patent1. Australia’s Design Act which took effect after revision on June 17, 2004, provides: An industrial design is novel if the design filed for registration has not been used in this country or disclosed to the public anywhere in the world prior to the filing date of the application.
In India, for a design to be registered under this Designs Act, 2000 it has to meet certain requirements. These have been mentioned under Section 4 of the Act, which states that
1. A design should be new or original,
2. Should not be disclosed to the public anywhere in India or in any other country by
a. Publication in tangible form
b. Use, or
c. In any other way
Prior to the filing or the priority date of the application.
3. Should be distinguishable from known designs or combination of known designs, and
4. Should not include any scandalous or obscene matter.
This is similar to Article 23 of the China’s Patent Law which states that “In this Law, prior design refers to the one that has been publicly disclosed in publications in the country or abroad, or have been publicly used or made known to the public by any other means before the date of filing”.[2]
A design in order to be registrable must be both new and original. As per Section 2(g) of the Indian Designs Act, a design is considered to be original if originating from the author of the design, and includes the cases which though old in themselves yet are new in their application. The novelty or originality of a particular part of the article may be sufficient to impart the character of novelty and originality to the whole. A combination of known designs may be considered novel if the appearance of the combination as a whole is new. A combination of two or more old features may be registrable if the combination is not an obvious bit is new and original.
Color may form an element in a design but color or coloring as such does not constitute design, unless the change of color creates a new pattern or ornament. A composition of lines or colors can constitute or design under the new definition.
While deciding the question of novelty or originality the evidence of experts in the trade is admissible. The introduction of ordinary trade variants into an old design cannot make it new or original.[3]
Therefore yet another important factor to be considered in order to constitute a novel design it should have not been published prior to the registration. It is pertinent at this point to take into consideration Section 16 of the Act, which states the circumstances wherein disclosure of a design shall not be deemed to be a publication of design. These circumstances are:
- Before registration if proprietor discloses the design to any other person, in such circumstances as would make it contrary to good faith for that other person to disclose the design. However, that other person discloses the design in breach of good faith;
- Acceptance of first and confidential order, before registration, for articles bearing a new or original textile design intended for registration.
Further Section 21 of the Indian Designs Act states the provisions as the exhibition under which designs is not invalidated or prevented from registration;
- If a design or an article to which a design is applied has been exhibited in an exhibition to which the provisions of Section 21 of the Designs Act, 2000 have been extended by the Central Government by notification in the official Gazette; or
- If a description of a design is published, during or after the period of holding of such exhibition; or
- If any person exhibits the design or the article to which the design is applied or publishes a description of the design during or after the exhibition without seeking any consent of the proprietor.
However, in order to avail the benefit of the Section 21, the proprietor has to give a notice in Form-9 to the Controller before exhibiting the design, and consequently file the application for registration of design within a period of six months from the date of first exhibiting the design or publishing the description.[4]
The Delhi High Court has made a legal interpretation as to what amounts to “publication” under the Act, while deciding the case of Reckitt Benkiser India Ltd v. Wyeth Ltd.[5]The analysis of the case has been made below:
Introduction
Reckitt had claimed infringement by Wyeth of the design registered by Reckitt, having Design No.193988, dated December 5, 2003, under Class 99-00 with respect to an S-shaped spatula that was to be used for applying a cream for hair removal. However, Wyeth had contended that Reckitt’s design lacked originality insofar as the same had also been registered, published as well as used in countries other than India before the Indian registration had taken place in reality. In addition, Wyeth also alleged of Reckitt having suppressed material facts such as this prior registration in foreign countries of the design under consideration.[6]
Issues and Decision of Full Bench of Delhi High Court
In order to arrive at a decision, the Full bench of Delhi High Court Comprising of HON’BLE MR. JUSTICE SANJIV KHANNA, HON’BLE MR. JUSTICE VALMIKI J. MEHTA, HON’BLE MR. JUSTICE S.P. GARG, discussed the following four major issues;
Whether a design previously registered abroad is a ground under Section 19(1) (A) of the Act for cancellation of a design subsequently registered in India?
While answering the issue the Court deemed it necessary to make a comparison between Sections 51A of the Designs Act 1911 with the Section 19 of the present Act to reveal a change in the approach of the legislature while dealing with the two separate grounds of cancellation of a registered design. These grounds of cancellation are;
1. Prior Publication [Section 19(1)(b)], which was not a ground for cancellation earlier, but has now become a valid ground of cancellation
2. Prior Registration [Section 19(1) (a)], whereby under both the Acts was deemed to be a ground for cancellation only if registered in India and not abroad.
Therefore the Court held that only a previously registered Indian design can be a ground for cancellation of subsequent registration in India and that a foreign registered design cannot under Section 19(1)(a) be a ground for seeking cancellation of registered Design in India. The court also held that once a foreign registered design is registered in India within six months of the date of an application made in the convention country abroad, it becomes a design registered in India with an earlier prior date.
What are the consequences of failure to apply for registration in India within six months of making of an application in convention country?
The Court held that if any person who has applied for registration in a convention country abroad fails to make an application for registration of the design in India within six months from the date on which the design in India within six months from the date on which the design was applied for in a convention country, then such an application will lose its entitlement to priority and the date of registration recorded in such cases would be the date on which the design application has been made in India.
What is the meaning of the expression “prior publication” under Section 19(1) (b) and 4(b) of the Act?
Since the Act does not define the term ‘published ‘or ‘publication’, the Court keeping in view the earlier judgments stated that publication can be defined as “being opposed to one which is kept secret” and as ”something which is made available in the public domain”.
The Court noted that publication under Section 4(b) was not a mere publication but publication in a “tangible form” or “by use” or “in any other way”. Thereafter, in order to address the issue determining the extent there should be a publication to fulfill the “tangible form” or “by use or any other form” requirement, the Court laid down the doctrine of “Sufficient Visual Clarity”.
Whether documents existing in the records of Registrar of Designs in a convention country abroad which are open to public inspection result in prior publication?
The Court held that such documents would not amount to prior publication. Here the test of “Sufficient Visual Clarity” was applied, wherein it sated that if the publication contains only the configuration, pattern, ornamentation and the like it would not amount to publication as given under Section 4(b), however if the publication clearly depicts the application of such features of design on a particular article then it would amount to publication as under Section 4(b).
Edited by Dhruval Singh
Approved & Published – Sakshi Raje
References
- https://www.lakshmisri.com/News-and-Publications/Archives/Publication/Cancellation-of-registered-design-Is-prior-registration-abroad-a-valid-ground
- http://www.chinaipmagazine.com/en/journal-show.asp?id=261
- http://www.legalservicesindia.com/article/article/novelty-under-the-designs-act-2000-2291-1.html
- http://www.ssrana.in/Intellectual%20Property/Designs/novelty-of-a-design-in-India.aspx
- https://spicyip.com/2010/10/reckitt-benckiser-india-ltd-v-wyeth-ltd.html
[1] https://www.lakshmisri.com/News-and-Publications/Archives/Publication/Cancellation-of-registered-design-Is-prior-registration-abroad-a-valid-ground.
[2] http://www.chinaipmagazine.com/en/journal-show.asp?id=261
[3] http://www.legalservicesindia.com/article/article/novelty-under-the-designs-act-2000-2291-1.html
[4] http://www.ssrana.in/Intellectual%20Property/Designs/novelty-of-a-design-in-India.aspx
[5] (FAO(OS) No. 458/2009)
[6] https://spicyip.com/2010/10/reckitt-benckiser-india-ltd-v-wyeth-ltd.html
