Design registration is a crucial aspect of intellectual property law, ensuring that unique and original creations are protected from unauthorized use. A design is eligible for registration only if it is new or original. This article delves into the nuances of novelty and originality, critical components in the registration process, as outlined in the relevant provisions as well as some important case laws.
Novelty: Ensuring Uniqueness in Design
The concept of novelty is fundamental in determining the eligibility of a design for registration. A design is considered new if it has not been disclosed to the public before the filing date or priority date. This non-disclosure must be absolute, meaning the design should not have been made public in any form—whether through publication, use, or any other means – in India or any other country.
1. Newness Defined: A design is new if it has not been previously disclosed. It must be significantly distinguishable from known designs or combinations of known designs.
2. Exceptions to Publication: Certain disclosures do not count as prior publication:
– If the design was disclosed in good faith to another person who then breaches that faith.
– If the design was part of a confidential order for new or original textile designs.
3. Exhibition Protections: Designs exhibited in official exhibitions (as extended by Section 21 of the Designs Act, 2000) are not considered published if:
– The proprietor notified the Controller using Form-9 before the exhibition.
– The registration application was filed within six months of the exhibition or publication date.
Originality: The Unique Creation of the Designer
Originality in design means the creation must originate from the author and can include new applications of existing ideas. For example, the concept of a flower vase or ashtray shaped like the Taj Mahal, if conceived for the first time, is considered original and registrable, despite the Taj Mahal itself being centuries old.
1. Author’s Creation: Original designs must originate from the designer.
2. New Application of Old Ideas: Designs that apply old concepts in new ways can be deemed original.
Novelty Search and Examination
The Examiner’s role includes conducting a novelty search to verify the design’s uniqueness. This search is class-wise or article-wise to identify if the design is significantly different from existing ones. If the design lacks novelty, the Examiner will cite previous designs in a report to the Controller.
1. Prior Registration Disclosure: If the design is already registered in another class by the same applicant, this must be disclosed in Form-1. If omitted, the Examiner will raise objections to predate the application, not on novelty grounds.
2. Cross-Article Registration: A design registered for one article can be registered for another, provided the applicant owns the previously registered design. The copyright term will be aligned with the earlier registration.
Consideration of Public Order, Morality, and Security
Designs contrary to public order or morality, or prejudicial to the security of India, are not registrable. The Examiner assesses these aspects and reports to the Controller.
1. Public Order and Morality: Designs must not contravene public order or morality.
2. Security of India: Designs related to military or war articles are scrutinized, and if found prejudicial, are referred to the Defence Research Development Organisation.
Landmark Judgements in Design Law
Reckitt Benckiser (India) Ltd. v. Wyeth Ltd.
Facts: Reckitt Benckiser registered an S-shaped spatula design, which was contested by Wyeth Ltd. Wyeth argued that the design was not original as it had already been registered abroad and that this fact was suppressed.
Judgment: The Court ruled that if a design has been previously disclosed, whether in India or elsewhere, as specified in Section 4(b) of the Design Act, its Indian registration can be nullified. This case underscores that prior disclosure can be used as a defense against infringement claims under Section 22(3).
Sree Vishnu Bottles v. The State Of Tamil Nadu
Facts: The petitioners, who had been transporting empty beer bottles across state borders for 30 years, faced disruption due to accusations of design piracy under Section 22 of the Designs Act. This disruption occurred because some of the bottles were registered designs.
Judgment: The High Court found the petitioners’ request for unrestricted transport too vague and declined to issue a blanket order, highlighting the specificity required in legal relief related to registered designs.
M/s S K Industries v. Dipak Ghosh
Facts: The plaintiff alleged that the defendant copied their jelly cup design.
Judgment: The Court found that the cup design lacked novelty and originality, as it was a common type used by many manufacturers. This ruling emphasized the necessity for a design to have distinctiveness and originality to qualify for protection under the Design Act.
M/S. Whirlpool Of India Ltd. v. M/S. Videocon Industries Ltd.
Facts: Whirlpool registered two designs, which Videocon replicated in their own registered design. Videocon argued that their design registration protected them from infringement and passing off claims.
Judgment: The Court observed the clear similarity between the designs and ruled that Videocon was liable for both infringement and passing off, reinforcing that even registered designs can infringe if they closely imitate others.
Rajesh Masrani v. Tahiliani Design Pvt. Ltd.
Facts: Tahiliani Design Pvt. Ltd. accused the defendant of copying their garment drawings, registered as artistic works under the Copyright Act, 1957. The defendant argued that the lack of registration under the Design Act invalidated the claim.
Judgment: The Court held that it is unnecessary to register a work under the Design Act to maintain an infringement suit under the Copyright Act, affirming that copyright protection applies even to unregistered works.
Recent Pertinent Judgements
Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd.
Facts: Carlsberg sought to restrain Som Distilleries from using a similar beer bottle design, claiming infringement of its registered design.
Judgment: The Delhi High Court ruled in favor of Carlsberg, emphasizing that the protection of registered designs is critical to prevent consumer confusion and protect brand identity. The Court ordered an injunction against Som Distilleries from using the infringing design, underscoring the importance of maintaining the distinctiveness of registered designs in the market.
Gorbatschow Wodka KG v. John Distilleries Ltd.
Facts: Gorbatschow Wodka alleged that John Distilleries’ vodka bottle design was an imitation of its unique bottle design, which was registered and widely recognized.
Judgment: The Bombay High Court found that John Distilleries’ bottle design was strikingly similar to Gorbatschow Wodka’s and amounted to design infringement. The Court issued an injunction against John Distilleries, reinforcing the principle that registered designs must be protected from imitation to uphold the rights of the original designer.
Neha International v. Jindal Drugs Pvt. Ltd.
Facts: Neha International claimed that Jindal Drugs was infringing on its registered design for pharmaceutical packaging.
Judgment: The Delhi High Court held that Jindal Drugs’ packaging was not significantly different from Neha International’s registered design. The Court emphasized the importance of protecting innovative packaging designs in the pharmaceutical industry to ensure market differentiation and consumer protection.
These recent judgments further illustrate the Indian judiciary’s commitment to upholding the rights of design registrants, ensuring that original designs are protected from infringement and maintaining the integrity of the market.
Registration Process
Upon examination, if a design meets all criteria, it is registered and published in the Patent Office Journal. If objections arise, they are communicated to the applicant, who must address them within specified time frames. Failure to comply results in application withdrawal.
1. Report Consideration: The Controller reviews the Examiner’s report and decides on registration.
2. Objections and Amendments: Applicants must address objections within three to nine months.
3. Registration and Publication: Successful applications are registered and published, with the registration date reflecting the application filing date.
Register of Designs
All registered designs are entered in the Register of Designs maintained at the Patent Office, Kolkata. This register is publicly accessible both in physical form and as an e-register on the official website.
Register Details:
The register includes:
- Names and addresses of proprietors.
- Registration number.
- Class.
- Dates of filing in India and, if applicable, in a Convention Country.
- Renewal of copyright.
- Assignments and transmissions of registered designs.
- Any other matters affecting the design’s validity or proprietorship.
Certificate of Registration
Upon registration, the Controller issues a certificate of registration to the proprietor. This certificate is sent by registered post to the service address; hand delivery is not permitted.
Conclusion
Design registration is critical to protect intellectual property, ensuring that novel and original designs are safeguarded against unauthorized use. Through landmark and recent judgments, the Indian judiciary has consistently reinforced the principles of novelty and originality, ensuring that the integrity of registered designs is maintained. The detailed examination and registration process further secure the rights of design proprietors, contributing to the advancement and innovation in various industries.
Link : https://www.linkedin.com/company/kumar-sardana-associates-ksa
