COPYRIGHT IN REGISTERED DESIGNS AND CANCELLATION OF REGISTERED DESIGNS UNDER THE DESIGNS ACT, 2000 & OVERLAPPING OF REMEDIES UNDER TRADEMARK AND DESIGNS ACT

COPYRIGHT IN REGISTERED DESIGNS AND CANCELLATION OF REGISTERED DESIGNS UNDER THE DESIGNS ACT, 2000 & OVERLAPPING OF REMEDIES UNDER TRADEMARK AND DESIGNS ACT

COPYRIGHT PROTECTION IN INDUSTRIAL DESIGNS

Section 2(c) of the Designs Act, 2000 provides that “copyright” means the exclusive right to apply a design to any article in any class in which the design is registered. This means that if a design is registered in respect of several articles, the proprietor of the design shall have the right to apply the design to all those articles.

The copyright used under the Copyright Act, 1957 is different from the meaning of the copyright mentioned under the Designs Act, 2000. In the present act it means protection from the use of the design registered in the name of the owner by any third person without the permission/ consent of the owner.

COPYRIGHT ON REGISTRATION OF DESIGN AND DURATION OF REGISTRATION: SECTION 11

On registration of a design, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration. If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copy-right for a second period of five years from the expiration of the original period of ten years. Thus, the maximum period a design can be registered is 15 years and on expiry of 15 years the design shall fall within public domain.

In the case of Parle Products Private Limited v. Surya Food & Agro Limited (Date of Judgment: 9 September, 2008) the Madras High Court held that  The purpose of the Designs Act is to protect novel designs devised to be applied to particular articles to be manufactured and marketed commercially. The main concern is what the finished article is to look like and not with what it does and the monopoly provided for the Proprietor is effected by according not, as in the case of ordinary copyright, a right to prevent direct reproduction of the image registered as the design but the right, over much more limited period, to prevent the manufacture and sale of articles of a design not substantially different from the registered design and the stress is therefore upon the visual image conveyed by the manufactured article. It cannot be denied that the ‘copyright’ in an industrial design is governed by the Designs Act, 2000. If a design is registered under that Act, it is not eligible for protection under the Copyright Act. However, in the case of a design which is capable of being registered under the Designs Act, but no so registered, copyright will subsist under the Copyright Act, but it will cease to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or with his license by any other person. The Designs Act, unlike the Copyright Act, gives monopoly protection in the strict sense of the word rather than mere protection against copying as under the Copyright Act and though there is an area of overlap between the Copyright Act and the Designs Act, the two Acts do not give coterminous protection as regards the subject matter, in the considered opinion of this Court.

LAPSED DESIGNS AND THERE RESTORATION: SECTION 12-14

Section 12 provides that where a design has ceased to have effect by reason of failure to pay the fee for the extension of copyright, the proprietor of such design or his legal representative and where the design was held by two or more persons jointly, then, with the leave of the Controller one or more of them without jointing the others, may, within one year from the date on which the design ceased to have effect, make an application for the restoration of the design in the prescribed manner on payment of such fee as may be prescribed. An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.

Section 13 provides if, after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the Controller is satisfied that the failure to pay the fee for extension of the period of copyright was unintentional and that there has been no undue delay in the making of the application, the Controller shall upon payment of any unpaid fee for extension of the period of copyright together with prescribed additional fee restore the registration of design. The Controller may, if he thinks fit as a condition of restoring the design, require that any entry shall be made in the register of any document or matter which under the provision of this Act, has to be entered in the register but which has not been so entered.

Section 14 provides for the rights of proprietor in respect of the restored designs which were lapsed. It states that where the registration of a design is restored, the rights of the registered proprietor shall be subject to such provisions as may be prescribed and to such other provisions as the Controller thinks fit to impose for the protection or compensation of persons who may have begun to avail themselves of, or have taken definite steps by contract or otherwise to avail themselves of, the benefit of applying the design between the date when the registration of the design ceased to have effect and the date of restoration of the registration of the design. No suit or other proceeding shall be commenced in respect of piracy of a registered design or infringement of the copyright in such design committed between the date on which the registration of the design ceased to have effect and the date of the restoration of the design.

CANCELLATION OF DESIGNS: SECTION 19

Section 19 provides certain grounds on which any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller which are as follows:

  • Design has been previously registered in India.
  • Design has been published in India or in any other country prior to the date of registration.
  • Design is not a new or original design.
  • Design is not registerable under this Act.
  • It is not a design as defined under clause (d) of section 2.

Design has been previously registered in India

In the case of Gopal Glass Works Ltd. v. Assistant Controller Of Patents and Designs (2006 (33) PTC 434 Cal) the court held that under the law presently in force in India, specifications, drawings and/ or demonstrations in connection with registration of a design do not per se constitute publications which prohibit future registration of that design. Had publication of design specifications by a registering authority, particularly a registering authority in a foreign country, in connection with registration of a design, in itself, amounted to prior publication, that would hit all future applications in India for registration of designs, prior registration in India would not separately have been made a ground for cancellation of a registered design. Moreover, it is significant that Parliament consciously, made publication in a country other than India a ground of cancellation, in addition to publication in India, but expressly restricted the embargo of prior registration to registration in India. Registration in a country other than India has not been made a ground for the cancellation of a registered design.

Design has been published in India or in any other country prior to the date of registration

The design is considered to be published when it is no longer a secret and has been disclosed to the public. Publication can be of two kinds i.e. publication by a prior user or publication by a prior document.

In the case of The Wimco Limited vs Meena Match Industries (ILR 1984 Delhi 121) it was held that The word “published” used in the Act has not been defined in the Act. Publication within the meaning of the Act means the opposite of being kept secret. It is published if. a design is no longer a secret. There is publication if the design has been disclosed to the public or the public has been put in possession of the design.

In the case of Rotela Auto Components Pvt. Ltd. vs. Jaspal Singh and Ors., 2002 (24) PTC 449 (Del.)  the court held that as far as present Act is concerned, the legislature in its wisdom by incorporating Sub-section (3) of Section 2 of the Act has made every ground, on which registration of a design may be cancelled, available as a ground of defence. The ground on which cancellation can be sought of registration are enumerated in Section 19 of the Act. It may be noticed that the design is a conception, suggestion or idea of a shape and not an article. If is has already been anticipated, it is not new or original. If it has been pre-published, it cannot claim protection as publication before registration defeats the proprietor’s rights to protection under the Act.

In the case of Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd., (AIR 1985 Del 136) It was held that under the designs Act, mere registration of a design abroad would not be a ground for cancellation of design in India unless it is show that the prior design has been published abroad prior to the date of registration. It, thus, follows that prior registration of a design abroad is not a bar. Publication is essentially a question of fact to be decided as per the evidence laid in each case. Existence of a design in the publication record/office of a Registrar of design abroad may or may not, depending on the facts of each case, amount to prior publication.

In the case of Itc Limited vs The Controller of Patents And Designs (Judgment delivered on 6 March, 2017) To constitute prior disclosure by publication to destroy the novelty of a registered design, the publication of the design applied to the same article, would have to be in tangible form. Prior publication of a trade catalogue, brochure, book, journal, magazine or newspaper containing photographs or explicit picture illustrations that clearly depict the application of the design on the same article with the same visual effect would be sufficient. When the novelty of an article is tested against a prior published document, the main factor required to be adjudged is the visual effect and the appeal of the picture illustration.

Design is not a new or original design

In the case of Prayag Chand Agarwal vs. M/s. Mayur Plastics Industries, (72 (1998) DLT 1) the court held that in view of the facts that the broad pattern of the two soles seems to be the same and the entire sole of both the shoes have same patterns, cuts, rigid roofs and lines pattern and in view of the fact that law is well settled that when serious disputed question on various grounds such as prior publication, lack of originality, trade variation is raised in a particular case, no injunction should be granted. Taking into consideration that the impugned design is registered in favor of the plaintiff in the year 1995 and the same having been shown to be in use from 1988 onwards i.e. prior to the registration of plaintiff’s design and plaintiff has prima facie failed to establish that he was the originator of the design, it is difficult to injunct the defendant.

In the case of Glaxo Smithkline Consumer Ltd v.  Anchor Health And Beautycare 2004(29) PTC 72 (Del.) It was held that the design registered in the favour of plaintiff was a virtual reproduction of the plaintiff’s own earlier design and which has already gone in public domain.

In the case of Reckitt Benkiser India Ltd vs Wyeth Ltd. 2013 (54) PTC 90 (Del.) The Delhi High Court held that new, original or novelty of the pattern or design when replicated or applied or fully understood by the eye for being applied to an article is a sine qua non to avail and get benefit of the rights under the Act. This underlying principle is accentuated as well as protected when Section 4(b) and 19 stipulate and provide for rejection/cancellation of registration of a design which has been published in any country prior in point of time. Though publication in India or abroad are enlisted as separate grounds under Section 4 and 19 of the Act, they are in a way interlinked and intertwined with the question of whether design is new or original for determining the meaning of “design” as understood and as defined in Section 2(d) of the Act.

OVERLAPPING OF REMEDIES UNDER TRADEMARKS AND DESIGNS ACT:

Shapes can be either used as trademark or as design under the Designs Act, 2000. Thus, there prima facie exists a conflict/overlapping in the remedies of the two acts. Both the acts have same remedy of passing off available which makes the provisions of Designs Act and Trademarks Act inconsistent.

The duration of Trademark protection under the Trademark Act, 1999 is for an unlimited period provided renewal fee is paid in every 10 years whereas maximum period of protection under the Design Act, 2000 is 15 years.

Thus, the main discrepancy is if a shape that has been registered as a design under the Designs Act, 2000 is being used as a trademark would it defeat its protection under the Designs Act, 2000 or not.

A proprietor cannot avail the remedies under both the acts, he has to choose between these two inconsistent remedies so that necessary balance can be maintained between the two remedies and rights can be adjudicated appropriately.

In the case of Micolube India Limited vs Rakesh Kumar Trading 2013 (55) PTC 1 (DEL.) the court held that the remedy of passing off would continue to be available along with the infringement of registered designs and can be joined with the same in order to prevent consumer confusion which may be caused by the use of trade mark, get up, trade dress or in any other manner excepting the shape of the goods which is or was forming the subject matter of the registration of the Design. The remedy of the passing off in so far as the shape of the article is concerned shall also be available even during currency of the design monopoly or even after the expiry of same to the extent that the claim of the feature of the shape is not covered within the novelty claim under the Design monopoly rights and the said claim of the protection qualifies all the necessary ingredients of the Trade Mark.

In the case of Dabur India Limited vs K.R. Industries (2008) 10 SCC 595 the court held that The fundamental edifice of a suit for infringement under the Designs Act would be the claim of monopoly based on its registration, which is premised on uniqueness, newness and originality of the design. Whereas, the action for passing off is founded on the use of the mark in the trade for sale of goods and/or for offering service; the generation of reputation and goodwill as a consequences of the same; the association of the mark to the goods sold or services offered by the plaintiff and the misrepresentation sought to be created by the defendant by use of the plaintiff’s mark or a mark which is deceptively similar, so as to portray that the goods sold or the services offered by him originate or have their source in the plaintiff. It is trite to say that different causes of action cannot be combined in one suit

In the case of Mohan Lal and Ors. v. Sona Paint &Hardwares and Ors. (AIR 2013 Delhi 143) the court while discussing whether the conception of passing off, as available under the Trade Marks Act, can be joined with the action under the Designs Act when the same is mutually inconsistent with that of remedy under the Designs Act, 2000. The court while answering in affirmative held that a composite suit for infringement of a registered design and a passing off action would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits. The discretion of the court in this matter would necessarily be paramount.

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