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PROTECTION OF UNREGISTERED DESIGNS IN INDIA


Introduction

As understood in general parlance, a design is a drawing or a model of specifications of a physical article or product and is understood to mean an article’s or product’s overall structure. A couch will be considered to have a fine industrial design when it is relaxing and has a good appearance. 
As per the Oxford Dictionary meaning of the term ‘design’, it is: “a plan or a drawing produced to show the look and functioning or workings of a building, garment, or another object before it is made”. [1] From an intellectual property law viewpoint, an industrial design relates only to the artistic or aesthetic feature of an article or a product. To word it differently, it refers only to the appearance of the couch. Thus, though the design of a product may have technical or functional aspects, industrial design, as understood with regards to intellectual property law, refers merely to the aesthetic or artistic personality of a product.

Why designs require protection?
Protecting the industrial design of a product becomes an important aspect of the business strategy of any enterprise or manufacturer because the design of a particular product gives the product an attractive form and makes it appealing to the consumers. Thus, an industrial design adds value to a product and may even act as its unique selling point. 
An owner of an industrial design protects it by registering it with the appropriate authorities (at national and international level) and obtains an exclusive right to prevent its unlawful manufacturing or use by others, without his prior consent. Mentioned below are a few advantages of affording protection to industrial designs:
i. Prevention of industrial design from being copied by others especially the competitors, which in-turn strengthens the competitive position of the owner;
ii. Contribution towards obtaining the return on investment made in creating and marketing the relevant product based upon the industrial design, which in-turn enhances the profits of the owner;
iii. Industrial designs are business assets that enhance the commercial value of a business enterprise and its products. The more successful a design, the higher is its value to the business enterprise;
iv. Assignment of rights in industrial design via licensing may be made by the owner in favour of others for a fee. By licensing the industrial design, the owner may be able to penetrate markets that he is otherwise unable to capture on his own; and
v. The protection of industrial designs promotes fair competition and good trade practices.
Protection of designs in the trading world is not a matter which could be taken up casually, as it may lead to misleading the consumers and may cost a huge amount of money to the trader whose design rights are infringed to make an undue gain. In the famous Samsung-apple design dispute, Apple Inc. v. Samsung Electronics Co.[2] The United States Supreme Court under the US Patent Act awarded nearly $400 million to Apple on December 6, 2016, in an on-going lawsuit regarding the design of smartphones. 
An industrial design may or may not be registered by its rightful owner. The question now arises, as to whether and if yes, then to what extent, protection is afforded to unregistered industrial designs. This paper limits the discussion to the protection of unregistered designs in India. Before we go into details, let us first understand the rationale behind protecting an unregistered industrial design.

Unregistered designs and their protection
The purpose of unregistered design right has been expressly discussed in the famous case of Farmers Build v Carrier Bulk Materials Handling. [3] The court in this case has stated that the purpose of unregistered design right is “to provide limited protection against unfair misappropriation of time, skill and effort expended by the author of the design in the creation of his work…The intended effect of this is to reward and encourage design effort”. 

Protection of unregistered designs in India
A copyright protects original works of authorship. One automatically gets copyright in a design which he has created and ‘fixed’ in a tangible form such as on a paper, cloth or a digital medium, etc. It is to be highlighted here that the use of a design is not needed in business to have copyright protection; the essential requirement being that it must have been created by the author or the creator or owner of such design.
Under Intellectual property laws, protection is provided for some works under both copyright and design law. The key provision dealing with the protection of unregistered design in India is section 15 of the Copyright Act, 1957. 

Analysis of Section 15 of Copyright Act, 1957
Section 15 of the Copyright Act, 1957 provides that copyright shall not subsist in any design which is there registered under the Designs Act, 1911. [4] Further, sub-section (2) of the said section 15 provides as under:
“Copyright in any design, which is capable of being registered under the Designs Act, 1911, 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 license, by any other person.” [5] 
Here, the expression ‘design which is capable of being registered but which has not been registered’ signifies an unregistered design. Thus, it implies that copyright protection subsists in unregistered design rights but the copyright protection shall cease to subsist if an article on which such unregistered design right has been applied, has been rightfully reproduced more than 50 times. 
Position in Law
i. Under the Copyright Act, an ‘artistic work’ is defined as “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”. Further, in terms of section 14(c) (i) of the Act, the author of the copyrighted work (including an artistic work) has a right to reproduce the work in any material form including depiction in 2D or 3D. [6]
ii. In terms of the Design Act, the term ‘Design’ 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…” The definition specifically excludes ‘artistic work’ defined by the Copyright Act, from its purview. [7]
iii. Section 15 of the Copyright Act, as discussed above, provides that copyright protection in an unregistered design shall cease the moment the 51st copy of article containing such unregistered design, is reproduced. 
Debating upon the issue of copyright protection in unregistered design, the Bombay High Court in the case of Pranda Jewelry Pvt. Ltd. v. Aarya [8] tried to explain the position by giving the following illustration in its judgment:
“If a painting, say Hussain’s painting of a horse, is simply reproduced in any medium, i.e. on paper, canvass or even a cloth, and in any form, i.e. in two or three dimensions, whether by an industrial process or otherwise, it will continue to enjoy full copyright in such reproduction under the Copyright Act. [9] But if the painting is used as a motif to produce, say, sarees, the industrial application, namely, use as a motif in a saree, would lose copyright protection, if not registered as a design under the Designs Act, 2000, after more than fifty applications. The difference between the former use and the latter use is that what is reproduced is an artistic work itself in the former, and what is produced in the latter case is an article, which is not by itself an artistic work.” [10] 
In the case of Microfibers v. Girdhar and Co.[11] the Delhi High Court while interpreting section 15 of the Copyright Act held that the copyright in the original work would survive even after the design was applied more than 50 times; however, only the copyright in the applied design would terminate. The court stated as under:
“…..While the original painting would indeed be entitled to the copyright protection, the commercial/industrial manifestation of such paintings such as the design derived from and founded upon the original painting for the purpose of industrial production of furnishings would only be covered by the limitations placed in Section 15 of the Copyright Act and would get protection if registered as a design under the Designs Act but would enjoy a lesser period of protection in case of a registered design.” [12]
In the case of Ritika Private Limited v. Biba Apparels Private Limited[13] the Delhi High Court on 23 March 2016 delivered the judgment on the same interpretation, [14] as given in the Microfibres case. In this case, the Plaintiff claimed to be the first owner of the copyright in the artistic works related to certain garments, the designs of which were not registered under the Designs Act, 2000. The Court concluded that the suit was barred by Section 15(2) of the Copyright Act, 1957 as the Plaintiff’s copyright in the said works had ceased to exist, as the same has been reproduced more than 50 times. Therefore, Ritu Kumar by reproducing the said designs on its apparels, more than 50 times, was not only disentitled to design protection but also disentitled to enforce its copyright in the original drawing of the design. [15] 

Trademark and Designs
As discussed above, a design may be eligible for more than one kind of protection. A trademark as an IPR protects a word or words, name, logo, symbol, aspect of packaging, picture, or drawing and is used in trade to differentiate between the source of goods or services of one person from that of another[16]. Design as an IPR protects any novel and innovative ornamental design of an article i.e. the physical and external appearance of an article. Thus, when a product is manufactured, it is given a name so as to differentiate it from other similar products in the market, and in order to make its appearance exclusive and attractive, it is designed and ornamented in a particular manner. Such a name may be trademarked and the appearance may also be protected.
Thus, in certain situations, both forms of protection may be available to protect a single design. For instance, the Coca-Cola contour bottle (with grooves [18] ) was covered by a design patent [18] as well as trademarks protection in the United States. The design patent has now expired but the trademark protection still subsists. Later, it sought a trademark in Europe to protect the shape of one of its bottles (without grooves); the European Trademark Organisation rejected the application stating that the bottle does not possess sufficient distinctive capacity to qualify for trademark protection. 
Conclusion
In several countries, designs are protected in the form of both registered and unregistered design rights. People are generally not very familiar with unregistered design rights which arise automatically and do not require registration. Unregistered design rights have the potential to provide legal rights to avert unauthorized replication of industrial designs free of charge. For the reason of possible hardship in imposing unregistered design rights, it is still considered prudent to register designs if feasible. Nonetheless, where industrial design is revealed to the public [19] under the applicable law, it is significant to note that the unregistered design rights may continue to exist in such designs and the creator may still be capable of preventing copying of his designs by some other person.

References
[1] Mewborn, Amanda. “IEs Hold the Keys to Effective Design.” ISE ; Industrial and Systems Engineering at Work, vol. 46, no. 7, Institute of Industrial and Systems Engineers (IISE), July 2014, p. 24.
[2] 35 U. S. C., S. 289
[3] [1999] RPC 461, 480
[4] Overlapping IP Protection: Call for Caution, Available here
[5] Copyright manual on registration of artistic works and incidental issues, Available here 
[6] Ibid.
[7] IPR – INDIA, Available here
[8] SUIT NO. 2477 OF 2011 
[9] Delhi HC decodes the copyright and design conundrum, Available here
[10] Guest Post – Solomon & Co. – ‘Jewellery Design’: An Intellectual Property Asset, Available here
[11] 128 (2006) DLT 238, 2006 (32) PTC 157 Del. 
[12] Ritu Kumar v. Biba: Designs free at 50? | SpicyIP., Available here
[13] CS(OS) No.182/2011 
[14] Section 15(2) of Copyright Act
[15] Ibid
[16]  SSRANA & CO. Intellectual property and Corporate law firm, Available here 
[17]  U.S. Patent D48,160, now expired
[18]  U.S. Patent D48,160, now expired
[19]  Without obtaining registration

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