In the case of a design which is capable of registration under the Designs Act, but not so registered, copyright will subsist under the Copyright Act, 1957, but it will cease to exist 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.
The protection given under the Designs Act is not copyright protection but a true monopoly based on statute. Although there is an area of overlap between the Copyright Act and Designs Act in respect of designs, the two statutes do not give co-terminus protection as regards the subject matter.
Designs which are functional are not registrable under the Designs Act. Thus if a designer makes an article in a certain shape not in order to make it appeal to the eye of the customer but solely to make the article work or to perform functional requirements, no registrable design exists.
The essential purpose of design law it to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries.
The existing legislation on industrial designs in India is contained in the New Designs Act, 2000 and this Act will serve its purpose well in the rapid changes in technology and international developments.
India has also achieved a mature status in the field of industrial designs and in view of globalization of the economy, the present legislation is aligned with the changed technical and commercial scenario and made to conform to international trends in design administration.
This replacement Act is also aimed to infarct a more detailed classification of design to conform to the international system and to take care of the proliferation of design related activities in various fields.
Obligations envisaged in respect of industrial designs are that independently created designs that are new or original shall be protected.
Individual governments have been given the option to exclude from protection, designs dictated by technical or functional considerations, as against aesthetic consideration which constitutes the coverage of industrial designs.
The right accruing to the right holder is the right to prevent third parties not having his consent from making, selling or importing articles being or embodying a design, which is a copy or substantially a copy of the protected design when such acts are undertaken for commercial purposes. The duration of protection is to be not less than 10 years.
Designs Act, 2000 is the new law relating to Industrial Designs, which repeals and replaces the earlier Designs Act, 1911.
A ‘design’ is defined to mean only the features of shape, configuration, pattern ornament or composition of lines or colors applied to any two or three dimensional article by any manual, mechanical or chemical, industrial process or means, 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 or artistic work. Unlike the trademark, a design covers the whole body of the goods and is part and parcel of the goods themselves.
A proprietor of new and original design can apply for registration. Functional designs are not registrable.
There are certain designs which can qualify for registration both under the Designs Act and the Copyright Act, and they cannot be applied at the same time for protection of the same subject matter.
Section 2(d) of the Act defines “design” which means only the features of shape, configuration, pattern, ornament or composition of lines or colors 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 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.
A design must have individuality of appearance, which makes it not merely visible but noticed although it need not possess any artistic merit. An industrial design is different from a trade mark.
If after the expiry of the monopoly period, the design is not used by other traders it might in course of time become distinctive of the goods of the original proprietor and acquire significance as a trade mark. In such circumstance it can be protected from copying by others by a passing off action.
A design is something which is applied to an article and is not the article itself. A piece of paper on which a pattern is drawn cannot be a subject-matter of registration of design.
But a piece of paper on which is drawn a three dimensional object with the pattern shown in it may be registered as a design because here the design is a representation of the article, on which the pattern is applied.
Similarly if the drawing is that of an article like a bottle, vase, chair, table, a motor body it would be registrable as a design if it is novel.
Here what may be registered is the shape of an article and the drawing on the paper is only a convenient representation of the shape of the article. However, a wall paper or Christmas cracker is an article of manufacture within the meaning of the definition.