Following Article discusses the laws under which Application to Register a Design can be filed.
For the visual aspect of a Design to be protected, there are two options available under Indian Law. It can either be Registered under the Designs Act 2000 or the Copyright Act 1957. The Applicant for Registration needs to choose between the different kind of protection provided under both the laws, since once Registered under the Designs Act 2000, it cannot be protected under the Copyright Act. Protection under both the laws dont subsist simultaneously. What is the difference between both kinds of protection ? Let’s understand.
Protection under the Designs Act 2000
Under the Design Act 2000, the visual image of a Design, that which appeals to the eye , is the subject matter of protection . It is about what the products looks like and not its process of manufacture. If instead of design of a product, the Novelty lies is in the product itself or process to manufacture, the same cannot be Registered under the Design Act, instead protection can be availed under the Patents Act 1970.
Definition of “design” as per section 2(d ) of the Design Act 2000 means:
only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark or property mark under Indian Penal Code or any artistic work under Copyright Act,
The essentials of a Design to get protection under Design Act can be summarized as:
a. The protection is granted to the visual features of the end product
b. The visual design can be two dimensional or three dimensional or in both forms
c. The design needs to be applied to the article by industrial process
Thus, the protection by way of monopoly rights under Design Act applies to only those designs that which are applicable to manufactured article. Monopoly provided to such design is confined to the design of the Article and not to the Article itself
Section 4 of Designs Act details, what are not registrable and accordingly, to be Registered a Design must be,
a. New and original
b. Should not be disclosed to the public anywhere in the world prior to date of filing or priority date of the Application
c. Should be significantly different from prior known designs
d. Should not contain scandalous or obscene matter or be contrary to public order or morality.
Is Registration of Design mandatory ? If Registered what is the duration of protection provided under the Design Act 2000 ?
Section 11 of the Designs Act makes Registration mandatory to avail protection. The duration of protection is ten years from the date of Registration, which can be extended to five more years by making an Application in prescribed manner alongwith fees.
Protection under the Copyright Act 1957
What if a Design is not registered under the Designs Act,Is there an automatic protection under Copyright Act or registration under Copyright Act is mandatory?This question can be addressed by looking at two scenarios,
Let’s first take a case where the Industrial Design is eligible for Registration under the Designs Act, but was not Registered, based on law as laid down under section 15 of the Copyright Act, in such a case copyright will automatically subsist under the Copyrights Act, but what is the timeframe of such a right? This is vital aspect, since in such cases the copyright ceases to exist after the design applied to the article by an industrial process is reproduced for fifty times.
Section 15 :
Special provision regarding Copyright in designs registered or capable of being registered under the Designs Act, 2000 (16 of 2000).—
(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 2000 .
(2) Copyright in any design, which is capable of being registered under the Designs Act, 2000 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 licence, by any other person.
Now let’s take a second scenario of those Industrial Designs which are not registrable under the Designs Act, in such cases the protection under Copyright Act does exist under the category of “Artistic work” but the work must qualify what is laid down under section 2(c) and must be an original work as laid down under section 13.
Section 2(c) of the Copyright Act defines “Artistic Work” as under:
“artistic work” means,—
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work possesses artistic quality;
(ii) a work of architecture; and
(iii) any other work of artistic craftsmanship
Next important question is, how important is getting the work Registered under the Copyright Act?
Cases such as “Nav Sahitya Prakash v Anand Kumar AIR 1981 All 200” or the 2002 decision of Bombay Highcourt in “Asian Paints (I) Ltd. V Jaikishan Paints & Allied Products“ and many other decisions have ruled in favour of Registration being optional. Registration is not mandatory for enforcing copyright, copyright subsists as soon as the work is created, but Registration does provide to be a prima facie evidence in courts. Hence, although it is not obligatory for an author to get his work registered under the Copyright Act, it surely is advisable.
To summarize the above discussion, it is clear that when the design is novel and created with the aim of applying it on an industrially produced article with commercial intent, Registration of such an Industrial Design falls under the Design Act.
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