IPR Assignment

Student’s Name: ADARSH MEHER

Enrolment No: 18FLICDDN01063
Batch Name & Year: BBA-LL.B. (Hons.)
Subject-IPR
Project Title: Assignment 1- Design
protection in India..

Submitted by Submitted to
ADARSH MEHER Samriddhi Singh
BBA-LL.B.(Hons) 2018-2023 Assistant Professor
SECTION B

1
Contents
Introduction...........................................................................................................................................2
Meaning and Definition of Design under the Designs Act, 1911...........................................................3
Nature of Copyright protection in Designs............................................................................................4
Eligibility Criteria for the Design Registration........................................................................................4
(i) New or Original Design..................................................................................................................5
(ii) Prior Registration..........................................................................................................................5
(iii) Prior Publication..........................................................................................................................5
Piracy of registered design or infringement of copyright in registered designs....................................6
Remedies against the piracy of registered design.................................................................................7
Interlocutory injunction under Civil Procedure Code............................................................................8
Conclusions............................................................................................................................................8

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Introduction
In order to catch the attention of buyers, an article must be visually attractive. Visual
attraction thus enhances its marketability. A bad appearance of an article may have an
adverse impact on its marketability. In ancient times also, the craftsmen and artisans chose a
shape or pattern to make the articles attractive to the eye of the buyers by employing their
personal skill.

After the industrial revolution, it became possible to give mass articles a unique shape by
industrial process. Today, manufacturers are paying adequate attention to the designs of the
articles they produce. For this purpose they invest substantial capital and carry out research.
Legal protection becomes necessary for the creation of new designs and their application to
articles. The protection now afforded to designs in India by Design Protection Act, 1911 has
proved to be inadequate and obsolete.

The first designs legislation enacted in India was the Patterns and Designs Protection Act,
1872 which extended to the inventors of new patterns and designs in British India the
exclusive privilege of making, selling and using the invention in India or authorizing others
to do so for a very much short duration of time. Later the Invention and Designs Act, 1888
was enacted to consolidate and amend the law relating to the protection of inventions and
designs.1

In the United Kingdom the Patents and Designs Act was enacted in 1907. It became the basis
of the Indian Patents and Designs Act, 1911. Later in 1970 the Patents Act repealing
provisions relating to patents in the Indian Patents and Designs Act, 1911 was enacted by the
Parliament. The provisions relating to designs in the Indian Patents and Designs Act, 1911,
were allowed to continue under the new title Designs Act, 1911 with some consequential
amendments. There is no post-independence Designs Act to protect new designs.

1
1 Prof. Krishana Swami Ponnuswami, "Design Protection in India: The Designs Act, 1911", Paper presented at
WIPO National Workshop on Intellectual Property Teaching, University of Delhi, 1991, p. 3 

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Meaning and Definition of Design under the Designs Act, 1911
The Act defines2 "design" to mean only the features of shape, configuration, pattern or
ornament applied to any article 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. It is clear from the definition that design means the features of
shape, configuration, pattern or ornament applied to an article and not the article itself. The
design makes the article attractive for sale and is part and parcel of the article3 itself. The
design must be such that in the finished article the features of it "appeal to and are judged
solely by the eye". A good subject of design must be visually appealing, though it need not be
an artistic work or possess artistic merit.

The following items such as a mode of construction, mechanical device or property mark are
not covered by the definition of design in the Act4:

(i) A mode or principle of construction cannot be registered as a design. The reason for
excluding the mode or principle of construction from the scope of the definition of design
is that one cannot claim monopoly merely for a method or principle of construction by
the purported registration of a design;
(ii) a mechanical device or in other words a functional design is not capable of
registration.
(iii) any trade mark as defined in Section 2(1)(v) of the Trade and Merchandise Marks
Act, 1958.
(iv) a property mark as defined in the Section 479 of the Indian Penal Code, 1860.

Obviously these excluded items do not get the protection afforded by the Act.

Nature of Copyright protection in Designs

On the registration of a design under the Act the proprietor of the design acquires the
following rights:

(i) The exclusive right to apply the design to any article in any class in which the design
is registered;
(ii) the exclusive right to publish or expose, or cause to be published or exposed, any
article in any class of goods in which the design is registered to which such design is
applied; and
(iii) the exclusive right to import for the purposes of sale any article belonging to the class
in which the design is registered and having applied to it that design.
2
Section 2(5) of the Designs Act, 1911 defines designs as follows: "Design" means only the features of shape,
configuration, pattern or ornament applied to any article 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 as defined in clause (v) of sub-section (1) of Section 2
of the Trade and Merchandise Marks Act, 1958, or property mark as defined in Section 479 of the Indian Penal
Code
3
See Section 2(2) of the Designs Act. The term 'article' is defined to mean "any article of manufacture and any
substance, artificial or natural, or partly artificial and partly natural". 
4
See Section 2(5) of the Designs Act

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When a design is registered, the registered proprietor of the design shall, subject to the
provisions of this Act, have copyright in the design for five years from the date of
registration. If an application is made to the controller and the prescribed fee is paid, the term
of protection may be extended for five years and further for five more years on the fulfilment
of same formalities. The protection of design cannot be obtained for more than fifteen years
by registration under the Act.5

Eligibility Criteria for the Design Registration

A design qualifies for protection only if-

(i) it is new or original;

(ii) it has not been previously registered in India; and
(iii) it has not been previously published in India.
(i) New or Original Design

Earlier the test was 'new and original' but by an amendment (Act 7 of 1930), the test was
changed to 'new or original' and it has now become easier to register a design under the Act.6

The word 'new' in relation to a design means a design which is completely new in the sense
that it is invented or created for the first time and was hitherto unknown. The word 'original'
in relation to a design may mean a new application of an existing or known design to a new
subject-matter, provided that the same design has not been applied to an article in the same
class or to an article in the different class which is similar in character or purposes.

In Gammeter v. Controller of Patents and Designs7 the Calcutta High Court ruled that the test
of novelty was the eye of the judge who must place the two designs side by side and see
whether the one for which novelty was claimed was in fact new. It further observed that it
was a matter of first impression.

In the case of Haji Sayed Sikander Shah Sayed Habib Shah v. Mian Rahim Bakhsh Mian
Fakir Mohd.8, the Peshawar Court cancelled the registration of the design of a cap on the
ground that it was used long before the registration for such caps, though it was applied in a
new manner. It was apparently cancelled as there was no significant difference between the
former design and the new design of the cap.

(ii) Prior Registration

A design is not registrable, if the same design or a substantially similar design has been
previously registered in India. But a registered proprietor may apply for the registration of
that design in any other class or classes. Thus, where a design has been registered in one or
more classes of goods, the application of the proprietor of the design to register it in some one
or more other classes shall not be refused, nor shall the registration thereof be invalidated-

5
Section 47 of the Designs Act 
6
Pravin Anand, n. 6, p. 460 
7
AIR 1919 Cal 887 
8
AIR 1940 Pesh 38

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 (a) On the ground of the design not being a new or original one, by reason only that it
was so previously registered; or
(b) On the ground of the design having been previously published in India, by reason
only that it has been applied to goods of any class in which it was so previously
registered.
(iii) Prior Publication

A priori prior publication of a design in India bars its subsequent registration. The words 'in
India' was not originally there but were subsequently inserted by Act 32 of 1950 and have
created some confusion. There are two views on the import of the words 'in India'. According
to the first view the expression 'new or original' is not qualified by the words 'in India' and if
a foreign product is sought to be copied and registered in India, the design is not valid since it
is not new or original. According to second view, there is no reason to invalidate the
registration of a design which has published outside India. On this view, it is perfectly
legitimate to import an article and register it in India.

The courts in India have adopted the former view while granting injunctions in a number of
cases. But Professor K. Ponnuswami who is an expert on intellectual property argues that
publication of the design outside India does not bar its subsequent registration in India.

Generally, for the purposes of Section 44 a design is said to be published if it is disclosed to

the public and consequently it is within the knowledge of the public and is no longer a secret.
But there are two conditions under the Designs Act under which the prior publication will
neither prevent the design from being registered nor invalidate the registration thereof. Those
conditions are as follows:

(1)  Confidential Disclosures of Design.- Section 49 of the Designs Act provides that (i) the
disclosure of a design by the proprietor to any other person, in such circumstances as would
make it contrary to good faith for that other person to use or publish the design, and the
disclosure of a design in breach of good faith by any person other than the proprietor of the
design, and (ii) the acceptance of a first and confidential order for goods bearing a new or
original textile design intended for registration, shall not be deemed to be a publication of the
design sufficient to invalidate the copyright thereof if registration thereof is obtained
subsequently to the disclosure or acceptance.

(2)  Display of Design in Exhibition.- Designs Act provides for special provision regarding
the display of design in exhibition. Section 52 provides that the exhibition of a design, or of
any article to which a design is applied, at an industrial or other exhibition, of the publication
of a description of the design, during the period of the holding of the exhibition, or the
exhibition of the design or the article or the publication of a description of the design by any
person elsewhere during or after the period of the holding of the exhibition, without the
privity or consent of the proprietor, shall not prevent the design from being registered or
invalidate the registration thereof. There are however three conditions which are to be
fulfilled in order to avail the benefits enumerated in Section 52. These are: -

(i) the provisions of Section 52 have been extended to such exhibition by the Central
Government by notification in the Official Gazette;
(ii) the exhibitor exhibiting the design or article, or publishing a description of the design
must give to the controller previous notice in the prescribed form; and

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 (iii) the application for registration of design must be made within a period of six months
from the date of first exhibiting the design or article or publishing a description of the
design.

Piracy of registered design or infringement of copyright in registered

designs
Section 53(1) of the Designs Act lays down that the following three acts committed by a
person other than the registered proprietor of that design amounts to piracy. These are:

(i) for the purpose of sale to apply or cause to be applied to any article in any class of
goods in which the design is registered the design or any fraudulent or obvious imitation
thereof, except with the licence or written consent of the registered proprietor, or to do
anything with a view to enable the design to be so applied; or
(ii) to import for the purposes of sale, without the consent of the registered proprietor, any
article belonging to the class in which the design has been registered, and having applied
to it the design or any fraudulent or obvious imitation thereof; or
(iii) knowing that the design or any fraudulent or obvious imitation thereof has been
applied to any article in any class of goods in which the design is registered without the
consent of the registered proprietor, to publish or expose or cause to be published or
exposed for sale that article.

The provisions of this section will only be applicable during the existence of copyright in
design. It is necessary that the acts constituting piracy have been done for the purpose of sale
and not merely for private or personal use. It is further required that the forbidden acts have
been done in relation to any article in any class of goods in which the design is registered and
not in relation to other class of goods.

Remedies against the piracy of registered design

Two alternative remedies are available against the piracy of registered design under Section
53(2)(a) and Section 53(2)(b). The proprietor has to elect one of these two remedies.

Section 53(2)(a) provides that if any person acts in contravention of Section 53, he shall be
liable to pay the registered proprietor of the design a sum not exceeding Rs 500 for every
contravention recoverable as a contract debt. But the total sum recoverable in respect of any
one design shall not exceed Rs 1000.

Section 53(2)(b) provides that the proprietor may bring a suit for the recovery of damages for
any such contravention, and for an injunction against the repetition thereof. In case he
succeeds, he will be entitled to recover such damages as may be awarded by the court and
restrain the defendant in terms of the injunction granted by the court.

As mentioned earlier, a plaintiff cannot avail both the remedies. He has to choose one. The
Bombay High Court in Calico Printers Association Ltd. v. Gosho Kabushiki Kaisha Ltd.9
ruled that the defendant has a right to ask the plaintiff to elect between the remedies available
to him under Sections 53(2)(a) and 53(2)(b) at an early stage of the trial.
9
AIR 1936 Bom 408 

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A plaintiff cannot have an account of the profits made by the defendant in lieu of a claim for
the payment of Rs 1000 or for a claim of damages.

In a suit for infringement the defendant can take following defences : (a) he can deny that
there was any infringement as alleged, or (b) contend that the design applied by him was
materially different from the registered design, or (c) that he applied the design with the
consent of the registered proprietor of the design, or (d) that the plaintiff is not the proprietor
of the design, or (e) that the registration of the design is invalid as in fact there was no design
as claimed within the definition under Section 2(5), or (f) the design was not new or original
or had been previously registered or published in India.

In the case of Mohammed Abdul Kareem v. Mohammed Yasin10the Allahabad High Court

held that entry of a person's name in the register as the proprietor did not conclusively make
him the registered proprietor. This can be rebutted by adducing evidence to the contrary. This
principle was confirmed in Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd.11 In this case
the Delhi High Court rejected the argument of plaintiff that it was not open to the defendant
to attack the validity of the registration which could be done only in a separate action for
cancellation of the registration.

Interlocutory injunction under Civil Procedure Code

In addition to remedies provided in Sections 53(2)(a) and 53(2)(b), the plaintiff may seek
interlocutory injunction pendente liteunder CPC, Order 39 Rules 1 and 2. The principles
applicable to the grant of interlocutory injunction in the case of a design are the same as are
applicable in the case of a patent.12

The plaintiff must make out a prima facie case and show that the balance of convenience is in
his favour. An interlocutory injunction will not normally be granted where damages will
provide an adequate remedy, should the plaintiff's claim succeed. The Delhi High Court
in Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd. held that the court will not grant an
interlocutory injunction unless satisfied that there is a real probability of the plaintiff
succeeding on conclusion of the trial of the suit. Interlocutory injunction will not be granted if
there are substantial grounds for attacking the validity of the registration.

Interlocutory injunction will also be denied if the defendant gives an undertaking to keep an
account if he is a person of substance and the undertaking will give the relief which the
plaintiff requires.

In Bansal Plastic Industries v. Neeraj Toys Industries13 the court stated that granting a

temporary injunction is in the discretion of the court which is to be exercised in accordance
with reason and sound principles.

10
AIR 1934 All 798
11
AIR 1985 Del 136
12
P. Narayanan, Intellectual Property Law (Calcutta : Eastern Law House Private Ltd.) 1990, p. 123
13
14 IPLR 75 (Del., 1989) 

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Conclusions
Design protection law contained in the Designs Act, 1911 is in fact the leftover part of
Patents and Designs Act, 1911. The patent provisions which were repealed from the Patents
and Designs Act, 1911 were incorporated in the Patent Act, 1970 after a thorough revision on
the basis of expert committee report and legislative debates. But unfortunately no such
exercise was undertaken in respect of design law.

The Designs Act, 1911 is outdated in many respects and inadequate to meet the growing
demands for design protection in India. The main deficiencies of the existing legislation
which require immediate attention are outlined below.

The definition of design under the Designs Act, 1911 is inadequate. Functional designs
should also be included in the definition to make it effective. One can claim better rights
under copyright law in functional or mechanical design but not under the Designs Act.14

Registration of design is allowed to class to which goods belong and not to particular goods,
while in the United Kingdom, registrations are given in respect of particular goods. Remedies
under the Designs Act are neither adequate nor effective. Under Section 53(2)(a) of the Act,
the infringer is liable to pay the proprietor a sum, not exceeding Rs 1000 in the aggregate as a
contract debt which in fact is inadequate. It is felt that no sum need be fixed in the Act and
damages should be granted on the basis of the nature of infringement.

Unlike patent annual report, there is no provision for annual report on designs.

Finally, serious attention should be given to secure international protection for the proprietors
of Indian design. At present as we are not parties to the Paris Convention for the Protection of
Industrial Property, such international protection can only be secured by bilateral
arrangements such as we have with U.K. and others as commonwealth States. With the
globalisation of our economy and with increased international trade and investment, it will be
necessary to secure for our designs protection in the industrialised nations, and designs are
very important aspect of competitiveness. 

14
John Richard Brady v. Chemical Process Equipment (P) Ltd., AIR 1987 Del 372