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Published by Enhelion, 2020-07-05 02:17:29

Module 8

Module 8

MODULE 8

DESIGN LAW IN INDIA

8.1 RATIONALE FOR PROTECTION OF DESIGN

“A thing of beauty is a joy forever". These words are of tremendous importance in today's
materialistic globe. Today, the existence of an article is more essential than its usefulness or
quality. Globalization and liberalization have flooded the markets with a multitude of
products. Each newspaper now has a range of decisions, making it more selective for Indian
customers. This has made Indian consumers more selective. According to a statement given
by Sotheby's auction house, “the market for contemporary Indian art has turned “bullish and
aggressive”.

Tyeb Mehta, a Mumbai-based painter, sold his triptych in 2002 at Christie's in New York for
over a quarter-million bucks. It was an Indian artist's fresh record for a painting. Later, in
2005, Mehta sold his big Mahishasura canvas for $1.58 million.1

Design registration has become more common and courts are now adjudicating on design
security and registration efficiently and in a time-bound manner. Protecting industrial design
is essential as it enhances the economy of a nation and also promotes creativity in the
manufacturing industries.

Through important capital investment and legal research, adequate attention is paid to the
design of producers. It is vital to provide legal protection for these models to guarantee a
decent return on investment. An efficient scheme guarantees fair competition, honest
procedures in trade and encourages products more aesthetically. The legal system, to which
he is subject, should protect anyone who has applied intellectual labor and ability and
produced a design.2

In India, the urgent need to protect new designs was felt as early as the 18th century, when
the Patterns and Designs Protection Act of 1872 was first enacted in the legislation. The Act
provided the inventors of new patterns and design in India, the exclusive privilege of making,

1 Tyeb Mehta's ‘Kali' sells for record Rs. 5.72 crores, The Economic Times, available at:
https://economictimes.indiatimes.com/tyeb-mehtas-kali-sells-for-record-rs-5-72-
crore/articleshow/8945660.cms?from=mdr (last visited on Sept 6th, 2019).
2 V.K. Ahuja, ‘Law Relating to Intellectual Property Rights’, (LexisNexis 2013).

selling and using the invention in India or authorizing others to do so for a shorter duration of
time.

This Act was followed by the Inventions and Designs Act, 1888 which consolidated and
amended the law relating to the protection of inventions and designs and contained a
provision relating to design in a separate part. The Act of 1888 was replaced by the British
Patent and Designs Act, 1907 which became the basis of the Indian Patent and Designs Act,
1911. The Patents Act, 1970 repealed the patent provisions of the 1911 Act. The Designs Act,
2000 repealed the Designs Act, 1911. The Act came into force on 11th May 2001.

Considerable progress has been made in the field of science and technology ever since the
enactment of the Designs Act, 1911 took place. With this progress, India has truly
industrialized and revolutionized. Astonishingly, all of this has been possible in just seventy-
three years of our independence.

However, the legal protection of industrial designs must be made more efficient to improve
efficiency in the protection of registered designs.3 With design registration, new avenues for
investments and innovations have taken place.

With the inception of Make in India project by the Hon’ble Prime Minister Shri Narendra
Modi in 2014, it was envisaged by the present government to bring an increase in the share of
manufacturing in the country’s gross domestic product.

To make these visions possible, funds were collected from all sectors and eventually the
cumulative Foreign Direct Investment (FDI) in India's manufacturing sector reached $73.70
billion during April 2017- December 2017. With such an increase in investment, new designs
started to come up and thus this compels a nation to have an efficient design protection law.
Absence of a proper design protection law exposes a design to piracy and the proprietor
stands to lose market as well as profit.

8.2 NOVELTY AND ORIGINALITY

For a design to be registrable, it must be both- new and original and not published in India or
elsewhere. What amounts to publication is discussed in Chapter 13.

3 Dr. B.L. Wadehra, ‘Law Relating to Intellectual Property’, (Universal Law Publishing 2007).

A design's novelty and originality are not demolished merely because it has been taken from
a prevalent human source. For example, a paperweight replica of the empire state building is
not considered original. However, a paperweight in the shape of an animal may be new and
original.4

In the case of Pilot Penn Co. vs. Gujarat Ind. P. Ltd, 5 the court held that design could not be
deemed fit for registration unless it was new and original and not of a pre-existing common
type. Also, it should not be registered if it contains a scandalous or obscene matter.

The Supreme Court in the case of Bharat Glass Tube Limited vs. Gopal Glass Works
Limited,6 held that in section 4, the expression “new or original” means that it had been
invented for the first time or it has not been reproduced by anyone.

In the current situation, the court ruled that the design intended to be reproduced in a glass
sheet was registered and that there was no proof to show that this design was previously to be
placed on a glass in India or any other part of the nation, or in Germany or even in the United
Kingdom, so that it was first registered in India, which is a fresh and original design.7

8.2.1 Test of Novelty

In 1872, Gorham Co vs. White 8 set up a test to determine design patent infringement called
the "normal observer test," which states that if an ordinary observer considers a design to be
sufficiently comparable to another to lead the observer to buy it on the assumption that it was
the other, that design infringes.

This technique seemed to be too simple, however, and it led to the court's worry that the
defendant might be held responsible for prior art designs that looked significantly comparable
to the patented design. This test was practically impossible to apply and was launched in
1984 by the Federal Circuit as the "point of novelty test". It required that the device in
contention must contain substantially the same points of novelty as that of the patented design
that distinguished it from the prior art.

Unfortunately, a lot of confusion was created in situations where a design patent had
numerous features that could be considered as points of novelty. This was even more in

4 Dr. S.K. Singh, ‘Intellectual Property Rights Laws’, (Central Law Agency 2013).
5 AIR 1967 Mad 215.
6 Appeal (civil) 3185 of 2008.
7 Ibid.
8 81 U.S. (14 Wall.) 511 (1872).

situations where the design patent had a combination of features that were shown in multiple
prior art references.9

However, in 2008, in the case of Egyptian Goddess Inc., v. Swisa Inc., 10the two divided tests
were brought in question when Egyptian Goddess, Inc. contended that Swisa Inc. infringed
their patent on a nail buffer design. This case was a major reason for design patent owners to
celebrate.

By disposing of the long-standing "novelty test point," the Federal Circuit structured design
patent breach assessment, which needed the patentee to point out precisely how his patented
design differed from previous art. This is a major case law and the whole of this case must be
discussed.

Egyptian Goddess is a Texas-based business selling products for nail, hair care, and body
goods. The United States Patent and Trademark Office on December 12, 2002, granted the
Egyptian Goddess patent number D467, 389, which claims the "ornamental design for a nail
buffer". The nail buffer is rectangular in shape and has nail buffing surfaces on three of its
four sides.11

Egyptian Goddess sued Swisa Inc. and Dror Swisa, also touts for beauty care products, in the
Northern District of Texas for infringing Swisa's own four-sided rectangular nail buffer. The
U.S District Court for Northern District of Texas granted summary judgment for Swisa.

The District Court gave their rationale that the defendant's buffer did not incorporate the one
point of novelty that Egyptian Goddess's design had over the prior art. Swisa nail buffer had
buffer pads on all four sides of its product instead of three.12

An appeal was filed by Egyptian Goddess, and a panel of the Federal Circuit affirmed.
Given the many unanswered issues concerning the breach of design patents, and the insistene
of Egyptian Goddess that the novelty test point should be abandoned.13

In the case of Lawman Armor Corporation v. Winner International 14, a Federal Circuit panel
affirmed the summary court judgment of non- infringement of a design patent for a vehicle

9 Ibid.
10 543 F.3d 665 (2008).
11 Ibid.
12 Ibid.
13 Ibid.
14 No. 05-1253 (Fed. Cir. Feb. 22, 2006).

steering wheel lock assembly given by a district court. Lawman recognized eight novelty
points of the patented design in the district court, to which Winner replied by defining patents
representing each of these eight points.

Accordingly, the district court agreed that the points of novelty were found in the prior art
and granted summary judgment of non-infringement. The panel finds that Lawman did not
attempt to show that the district court erred in its decision providing that the eight points of
novelty are disclosed in the prior art.

The Federal Circuit panel rejects Lawman's argument that there was no suggestion to
combine the prior art elements to achieve the patented design, essentially arguing that the
combination of the prior art elements is itself a ninth point of novelty. This decision
maintains the long-standing "point of novelty" design patent infringement test, namely, that
an accused device must appropriate the novel features of the patented design, specifically
those features that distinguish it from the prior art.

The structure should be substantially different from all the pre-existing models applied to an
article.15 What constitutes as substantial depends upon the facts of the case. A trade variant is
some adornment which is known, and sometimes, though not always, used in connection with
a particular class of article or class of work. 16

Sometimes a small variation in the details of a design may be enough to distinguish design
from an existing design, whereas in some cases the two designs may not be distinguished by
large changes in detail. A qualified employee produced mere modifications in a workshop.

The court has to look at these designs with an instructed eye and see whether any substantial
difference exists.17 The eye is the ultimate arbiter in the matter of novelty and determination
has to rest on the general impression.18 It is the preliminary test for novelty. The Calcutta
High Court, in the case of Gammeter vs. Controller of Patents and Designs 19 held 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 new.

15 Dr. M.K. Bhandari, ‘Law Relating to Intellectual Property Rights’ (Central Law Publications 2017).
16 Ravinder Kumar Gupta vs. Ravi Raj Gupta and Others 29 (1986) DLT 190.
17 Ibid.
18 B. Chawala v. Bright Auto Industries AIR 1981 Del 95.
19 48 Ind Cas 437.

A design which contains some elements which constitute a striking feature making an
immediate appeal to the eye would suffice to prove ample novelty and originality.20 Novelty
alone is not sufficient, there should be sufficient originality as well otherwise a design cannot
be deemed fit for registration. It should not be fraudulent or an evident imitation of a current
design, otherwise it will be regarded as a pirated copy.21

There's no need for the whole design to be fresh. It's more than sufficient for some of it to be
new or original. If the mixture as a whole appears new, a mixture of renowned models can be
regarded novel. 22

It is also essential that the previous art and design differ substantially. For example, with
regard to a collar and other clothing items that are in steady and daily use, there must be a
clear distinction between what is to be recorded as a fresh design and what already exists. If
the design includes a trifling distinction, such as stud difference, and it is taken as a justifiable
reason for registering the design, then no one could have produced collar by his servants in
his own house without running the danger of violation.23

It is also not available to the manufacturer to take one or more major characteristics of
various goods already on the market and to obtain copyright in the licensed design by
registering the design shows simply a mixture of these characteristics and without requiring
any actual mental exercise for its manufacturing. If any such design could be monopolized,
industries would be unduly hampered. It would be extremely oppressive. The mixture as a
whole must create something fresh or original. A good subject matter must be established for
valid registration.

Colour may be part of the design, but it cannot be the topic of the design itself unless the
colour change generates a fresh pattern or ornament, registration is denied. If this is not the
case then for a design consisting of a pattern it would be impossible to secure effective
protection.

20 Mathew Swain vs. Thomas Barker.
21 Shramana Ganguly, ‘Cello is restrained by the Court from selling, Symphony look-alike Air Coolers’, The
Hindu Business Lines (2015), available at: https://www.thehindubusinessline.com/companies/hc-restrains-wim-
plast-from-copying-symphony-designs/article7007611.ece. (Last visited Sept 14, 2019).
22 Sherwood vs. Decorative Art Title [1887] 4 RPC 207.
23 Supra note 3.

Designs which are applied in textile fabrics or wallpaper hangings contain various colours.
However, they are not registered with respect to the colours or colour combinations which
have been used, they are registered for the patterns which are independent of the colours
used. It is a common practice in the textile and wallpaper trade to print the same design in
varying sets of colours. 24
The novelty or originality of a design is to be judged by the experts in the field.25 There
should be some mental application involved when conceiving new design.26 It is necessary to
have a mental conception expressed in a physical form which did not exist before but
originated in the constructive brain of its owner and which must not be in a trivial or
infinitesimal degree but in a significant degree. 27

8.3 DEFINITIONS AND CONCEPTS AS PER THE DESIGN ACT, 2000

8.3.1. Design

“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 trademark 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 or any artistic work as
defined in clause (c) of section 2 of the Copyright Act, 1957” 28

24 Textile Printing, Wikipedia, https://en.wikipedia.org/wiki/Textile_printing.
25 Ibid.
26 Rotela Auto Components Private Ltd. vs. Jaspal Singh 95 (2002) DLT 830.
27 Simmons v Mathieson & Cold (1911) 28 RPC 486.
28 Design Act, 2000, (n.16), sec. 2 (d).

8.3.2. Article

“means any article of manufacture and any substance, artificial, or partly artificial and
partly natural and includes any part of an article capable of being made and sold
separately”.29

An article must be able to be manufactured and sold on its own in the sense that it has its own
commercial identity on the market and not as part of another article. There was no previous
wording "Capable of being produced and received individually," present in the definition
provided in the 1957 Act. 30

An article must be capable of being made and sold on its own in the sense that it has its own
commercial identity in the market of its own and not when incorporated as a part of another
article. The words "Capable of being made and sold separately', present in the definition
given in the 1957 Act, were not there earlier. 31

In Marico Limited v. Raj Oil Mills Limited32, the court noted that the term "capable of being
produced and sold individually" includes the cases not only of the article on which it is
possible to make a design article, but also of being sold individually. Thus, such articles
which is separate from the other parts of the goods and is registered separately as a design if
intended and or desired by the owner of the registered article, as being capable of being sold,
can be sold separately in the matter. That is why it can be registered under this act.

8.3.3. Controller

“Means the Controller-General of Patents, Designs and Trade Marks referred to in Section
3”. 33

A design registration request shall be submitted to the Design Controller. The Design
Controller may register a design upon its owner's request, provided that its fresh or original
design has not been earlier published in the country and is not contrary to public order or

29 Design Act, 2000, (n.16), sec. 2 (a).
30 Supra note 2.
31 Ibid.
32AIR 2008 Bom 111.
33 Design Act, 2000, (n.16), sec. 3.

morality. Before registration, the Controller shall refer the request for examination to an
examiner as to whether such design can be registered and consider the examiner's report. 34

The application is to be made in the prescribed form and is to be accompanied by the
prescribed fee. The application shall be filed in the patent office. An incomplete application
shall be deemed to have been abandoned. 35

No more than one class must register a design. In case of doubts, the Controller may decide
the class in which a design should be registered. The Controller, if he believes fit, may refuse
to register any design. The aggrieved individual may, however, appeal to the High Court in
such a situation. When the design is registered, the Controller shall give the registration
certificate to the design owner. The Controller has the authority to issue instructions to
replace the request, etc.36

8.3.4. Copyright

“Means the exclusive right to apply a design to any article in any class in which the design is
registered;”37

This implies that if the design is enrolled in one class with regard to several papers, the owner
of such design shall have the exclusive right to apply the design to all of them. The term
"copyright" as defined in the Designs Act, 2000 is to be contrasted with the term "copyright"
granted to the author of an original literary, dramatic, musical or artistic work under the 1957
Copyright Act.

The copyright in the above-mentioned works protects the works from being copied or
reproduced, whereas the design registration gives the registered owner not merely the
exclusive right to copy or reproduce the design, but a monopoly to produce articles of the
class in which the design is registered.38

8.3.5. Legal Representative

“Means a person who in law represents the estate of a deceased person;” 39

34 Supra note 2.
35 Supra note 2.
36 Ibid.
37 Design Act, 2000, (n.16), sec. 2 (c).
38 Supra note 2.
39 Design Act, 2000, (n.16), sec. 2 (f).

8.3.6. Original

“In relation to a design, means originating from the author of such design and includes the
cases which though old in themselves yet are new in their application”40

8.3.7. Patent Office

“Means the patent office referred to in section 74 of the Patents Act, 1970.”41

Section 74 of the Patents Act, 1970 says:

(1) For the purposes of this Act, there shall be an office which shall be known as the patent
office.
(2) The Central Government may, by notification in the Official Gazette, specify the name of
the Patent Office.
(3) The head office of the patent office shall be at such place as the Central Government may
specify, and for the purpose of facilitating the registration of patents there may be
established, at such other places as the Central Government may think fit, branch offices of
the patent office.
(4) There shall be a seal of the patent office.42

The patent office maintains the design register. The register shall enter the names and
addresses of the owners of registered designs, notifications of assignments and transmissions
of registered designs, and the prescribed manner. Such registers can be maintained in whole
or in part on computer floppies or diskettes, subject to the prescribed safeguards.43

8.3.8. Piracy of Registered Design

Infringement of a design copyright is called "Registered Design Piracy." Without the consent
or license of the registered owner of the design, it is not permissible for any person to
perform the following acts. Section 22 of the Designs Act, 2000 stipulates that the following
acts constitute piracy:

(1) Publishing or exposing for sale any article of the class concerned on which the design or
any fraudulent or obvious imitation has been enacted.

40 Design Act, 2000, (n.16), sec. 2 (g).
41 Design Act, 2000, (n.16), sec. 2 (h).
42 The Patents Act, 1970, (n.39), sec. 74.
43 Design Act, 2000, (n.16), sec. 2 (h).

(2) Any class of products covered by the registration, design or imitation thereof shall apply
or trigger the design which is registered to apply.

(3) Any item belonging to the class in which the design has been registered and to which the
design or its fraudulent or obvious imitation has been applied for sale.44

Indeed, any illegitimate application of the registered design or fraudulent or obvious imitation
of it in any document covered by the business registration or importation for the sale of such
products is piracy or infringement of the copyright in the design.

8.3.9. Fraudulent and Obvious Imitation

A distinction is made between ‘fraudulent’ and ‘obvious imitation'. The only prevalent
variable between the two is that imitations should be in both. Thus, the structure implemented
must be an approximation of the registered design even in the event of false execution. The
mimic was produced in fraud to deceive another individual knowing that what is being
performed is a breach of the freedom of another individual.

Where, even if the image is rather messy and not evident, fake reproduction is formed, the
Court will label it as a copyright infringement in the layout. Exact duplication must take
place, imitating the registered design. To create piracy, nothing less than imitation is
adequate. 45

Fraudulent imitation must mean: “If a man who knows that the pattern is a registered design
goes and imitates it, and does so without sufficient invention on his part, it would be a
fraudulent imitation if it were, in fact, an imitation (the exact copy of the registered
design).”46

8.3.10. Set

Means a number of articles of the same general character that are usually sold together or
intended to be used together, all of which have the same design, with or without modification,
not sufficient to alter the character or significantly affect its identity. Examples-Tea laid, meal
set, collection of furniture, etc.

44 Design Act, 2000, (n.16), sec. 22.
45 Supra note 3.
46 Ibid.

8.4 REGISTRABLE DESIGNS

There are certain requirements which need to be fulfilled to get a design registered. In case
you fail to complete these requirements, then your application may be rejected. As discussed
above in the test of novelty, according to the Designs Act, 2000 for a design to be registrable,
the following conditions need to be met-

8.4.1 The design should be new and original

As discussed above, designs are not registrable, unless they are ‘new' and ‘original', not
previously published in India or another country. It should be substantially different from all
the other pre-existing designs applied to the class of article. Ordinary trade variants or
superficial variants are not sufficient. A design to be new, it should be invented or created for
the first time and was hitherto unknown or known design applied to the new subject matter.

• The novelty may reside in the application of a known shape or pattern of a subject matter.

• The design shall be related to the physical features applied to an article like shape, pattern
or configuration, etc.

In the article itself, a design must be incorporated as in the case of a three-dimensional shape
or configuration, e.g. the shape of a bottle or flower vase, or a two-dimensional design case,
e.g. a bed sheet design, a wallpaper for decoration purposes. The structure has to be added to
the paper itself.47

However, in the case of Glaxo Smithkline Consumer Healthcare GmbH & Co. v. Anchor
Health & Beautycare Private Limited,48 the court found that the design registered in favor of
the complainant was a virtual reproduction of the earlier designs of the complainant that
appeared to have gone into the public domain.

The court discovered that three modifications as noted by the complainant did not constitute a
fresh design and were simply non-inventive or innovative trade differences. In the event of
Simmons v. Mathison and Co Ltd.49, the complainant as the proprietor of a registered design
for the form and structure of the carriage of children brought an action against the accused of
the supposed breach.

47 Ibid.
48 2004 (29) PTC 72 Del.
49 (1911) 28 R.P.C. 486.

While denying the violation, the defendants claimed that the registered design of the plaintiff
was invalid on grounds of anticipation and established at the trial that they had manufactured
the style of the perambulators of which the plaintiff complained separately and without any
knowledge of the plaintiff’s design though bearing a resemblance in general outline to those
made by the plaintiff in accordance with his design.

8.4.2 The features of the design shall be solely judged by the eyes. Further, that means
design must be visible in the finished article

A design should solely be judged by the eye. The visual appeal of an article must be the eye
of the consumer. The eye must be the eye of the consumer on the visual test. The words
"judged solely by the eye" must be intended to exclude those instances where a customer
might choose a product not because of its appearance, but because of the shape it has been
made. 50

There must be a unique, unique or striking look that draws customers like a magnet. The
customer should in no sense be influenced by the suitability of the article for any particular
purpose. 51 It is vital to apply the design to a specific article. In the article itself, it must be
incorporated as in the case of a three-dimensional shape or configuration, e.g. the shape of a
bottle or flower vase that serves the purpose of decoration.

In the case of Amp Inc. vs. Utilise Pty, The House of Lords set out the following principles-

(1) The features must be extremely visible to have eye appeal (the electrical connector at
issue was an internal component of a washing machine); where a feature is internal to the
article for which it is registered, the covering must be transparent.

(2) The characteristic shall appeal to the customer's eye;

(3) The eye appeal need neither be artistic nor aesthetic, provided that some appeal is created
by the distinctiveness of the shape, pattern or ornamentation calculated to influence the
customer’s choice.

50 Manoj K. Singh & Suchi Rai, ‘An Overview of Design Protection in India’, Intellectual Property Law

Updates (2019), available at:

http://www.manupatrafast.in/NewsletterArchives/listing/SAIPTech%20Singh%20Associates/2018/Nov/IPR-
November-18.pdf (last visited on Sept 6th, 2019).
51P. Narayanan, ‘Intellectual Property Law’, (Eastern Law House 2001).

In the case of Simmons v Mathieson & Cold, the court held that novelty should be judged by
the eye of an instructed person, i.e. the individual should be aware of the prevalent
commercial expertise and use in the class of papers to which the design relates.

For instance, if spikes on running shoes ' soles are common practice by putting spikes on the
soles, a man does not make a new or original design from old running shoes. The working
world, however, has the right to choose, at will, from ordinary trade versions, and no design
registration can prevent an ordinary employee from using such knowledge of the trade.

No design can be tagged "new or original" unless it can be distinguished from the previously
existing designs, and is different from ordinary trade variants. In the Crocs case, the plaintiff's
design was registered in different countries, but they never got the benefit of such registration
as the court thoroughly went through the argument of it being a new and innovative design
for the product.

The court reasoned that to be new and original there should be a significant change in the
existing design.52

8.4.3 The design should not have been disclosed to the public anywhere before its
publication

The design should not have published anywhere in India or any other country by publication
in tangible form or in any other way before the filing of the application. Display of designs in
fashion show would amount to publication.

However, if the Central Government so notifies then, exhibition of a design in an industrial or
other exhibition, would not amount to publication provided that prior notice is given to
Controller of Patents and Designs and an application for registration is made within six
months of the date of the first exhibition. 53

Publication can occur in two types:

(i) Publication in prior document.

(ii) Publication in prior user.

52 Industrial Designs- Design Protection & Originality, Banana IP, available at: https://www.bananaip.com/ip-
news-center/industrial-designs-design-protection-originality/ (last visited on Sept 6th, 2019).
53 Design Act, 2000, (n.16), sec. 21.

Publication in a prior document would result when the design has already been published in
any easily available document. For example, two dress designers working in different
boutiques develop a similar floral print for the ladies.

The design is made on a piece of paper by one of the designers in a boutique and it forms part
of the inventory of designs of the boutique. If the second designer applies for registration of
the design, her application will not be considered since the design has already been published
in a document (the inventory of design in the boutique of the first designer). 54

Publication in prior use would result, for instance, when a fashion designer before putting
down the design in paper exhibits the design in a fashion show where the clothes with the
design in question have been put to sale. There would be prior use of the design which would
disentitle the design from registration on the ground of publication by prior use. 55

Private or secret use or experimental use of design will not amount to publication. Similarly,
if any design is disclosed by the proprietor to any other person in good faith and then that is
not considered as a publication. 56

In the case of National Trading Co. vs. Monica Chawla,57the Delhi High Court ruled that if
the design is revealed to any individual member of the public who had no other duty to
maintain it as a secret then it would amount to pre-publication.

In the case of M / s Domestic Appliances versus M / s. Globe Super Parts, the Delhi High
Court ruled that the manufacture and sale of the item for which design was subsequently
registered were pre-published before the date of registration and quashed the design
registration.

8.4.4 The design must not be functional in nature

Functional or mechanical devices cannot be registered. While pattern or ornament would
normally be implemented in an article; the paper itself becomes the shape and setup. In that
sense, design is related to the article's non-functional characteristics.

54 Supra note 3.
55 Ibid.
56 M/S. Kemp & Company & Another vs. M/S. Prima Plastics Ltd 1999 (1) BomCR 239.
57 AIR 1994 Delhi 309.

Thus, a design with functional attributes cannot be recorded under the Designs Act by the
required corollary. In the case of Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., it was
held that the defendants were not guilty of the breach of the design of the plaintiff as it was
functional since the advertisement of the plaintiff emphasized the functional nature of the
characteristics.

In the case of Kestos Ltd. v. Kempat Ltd, the court observed that “ a mere mechanical is a
shape in which all the features are dictated solely by the function or functions which the
article has to perform”. It was further held by the House of Lords that where a design would
perform a particular function, but the designer had also added some features of shape that
appealed to the eye and was additional to or supplementary to the function the design could
be registered. 58

In the event of Glaxco Smithkline Healthcare Consumer vs. Amigo Brushes Private Ltd. &
Anr.,59 the tribunal ruled that the handle portion of the toothbrush alone could not be
designed registered and furthermore.

8.4.5 A design can also be tested if it is against public order or morality

Section 35, 46 of the Designs Act, 2000 gives the Controller of Designs discretion over what
would be contrary to the country's public order, morality, or safety. The designer should
guarantee that the country's government order, morality or safety is not violated by his
designs. It shouldn't break the peace and harm people's feelings. It should not go against any
legal subsistence.

The idea of a design being contrary to morality introduces the issue of the relationship
between law and morality.

8.4.6 The design also should not contain any obscene or scandalous matter

Under the Designs Act, 2000, a design containing scandalous or obscene matter cannot be
registered. It may be refused to register by the Controller. The parameters for determining

58 Kestos LD. vs. Kempat LD. and Vivian Fitch Kemp and in the Matter of Registered Design No. 725, 716 of
Kestos LD., Reports of Patent, Design and Trade Marks Cases, Volume 53, Issue 6, available at:
https://doi.org/10.1093/rpc/53.6.139 (last visited on Sept 14th, 2019).
59 109 (2004) DLT 41.

whether a design compromise or contain scandalous or obscene matter should be determined
from the Indian society view as the significance of scandalous or obscene is different from
society to culture.
Scandalous according to Black Law Dictionary is defined as-
"A matter that is either grossly disgraceful (or defamatory) and irrelevant to the action or
defense".
Obscene according to Black Law Dictionary is defined as-
“Extremely offensive under contemporary community standards of morality and decency;
grossly repugnant to the generally accepted notions of what is appropriate”.
What can be registered as a layout is broadly defined. It may be about the item as a whole or
just a portion of the item. For example, a mobile phone's entire shape might be new, or it
might be that the antenna's shape alone is new, so commercially it's important to protect the
antenna's shape by itself. Suppose a model covers the mobile phone then you'd like to
safeguard that model as well.

Features of a commodity that can be protected include:

1.) Colours and patterns

2.) Packaging, such as printed food cartons.

3.) The get-up of the product.

4.) Typographic typefaces

5.) Graphical user interfaces

7) Texture and/or ornamentation

8.5 NON REGISTRABLE DESIGNS

Designs that are primarily literary or artistic character are not protected under the Designs
Act. These will include:

• books, calendars, certificates, forms, and other documents, dressmaking patterns, greeting
cards, leaflets, maps and plan cards, postcards, stamps, medals.
• Labels, tokens, cards, cartoons.
• Any principle or mode of construction of an article.
• Mere mechanical contrivance.
• Buildings and structures.
• Parts of articles not manufactured and sold separately.
• Variations commonly used in the trade.
• Mere workshop alterations of components of an assembly.
• Mere change in the size of the article.
• Flags, emblems or signs of any country.
• Layout designs of integrated circuits.60

60 Tushar Verma, ‘Salient Features of Design Act, 2000’, I pleaders (2018), available at:
https://blog.ipleaders.in/salient-features-design-act-2000/ (last visited on Sept 19, 2019).


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