According to Section 2 (d) of the Designs Act, 2000, “Design” is the application of any shape, configuration, pattern, ornament, or composition of lines or colours to any object, whether it be two-dimensional, three-dimensional, or both, through any industrial process or means, whether manual, mechanical, or chemical, separate or combined, that result in a finished article that is visually appealing and is only evaluated by the eye.
Rendering a simpler definition of it, a design is any article that is judged solely by the eye based on its appearance, which includes shapes, lines, patterns, colours, or any of the other parameters mentioned above. The law protects not only the designs made by mechanical industrial processes, but also designs made through manual processes.
Designs can be expressed in the form of art, drawings, graphics, etc. These designs, include architectural or engineering blueprints for any type of building, interior designs, etc., which may have been produced by experts.
If a design has already been published, it becomes ineligible for a subsequent publication. If you are attempting to register a digital design, there shouldn’t be any physical copies of it existing on the market. The design must be wholly original and should not be a variation of an already existing design. Changing the design slightly to escape the consequences of passing it off as an original design does not bear any fruit if it is challenged in a Court of Law.
Section 4 of the Designs Act lays down some criteria that must be adhered to in order to get a design registered. The design must be new or original; it must not have been disclosed to the public anywhere in India or in any other country by publication in tangible form; it should be considerably distinct from known designs or combination of known designs; and should not comprise of contemptible or obscene matter.
The first criteria, i.e. the design should be original, has no exceptions or provisos attached to it. A mere variation of an already registered design is not considered as an original design in itself. This stand was upheld recently in an order of the Delhi High Court in the case of Philips Lighting Holding B.V. v. Jai Prakash Agarwal And Anr.
Philips Lighting Holding, the plaintiff, filed two lawsuits to assert its ownership of the “T-Shaped LED Bulb” design. The plaintiff’s attorney claimed that the defendants’ products, including Syska LED Lights, violate its registered design and therefore asked for an injunction against Syska.
According to the Court, the test for determining whether a design is “new” or “original” is to identify and exclude ordinary trade variants in an old design. The court observed that a design identical with or even materially similar to the relevant design should not have previously been published or registered. A minor, trivial, or infinitesimal deviation from the pre-existing design disqualifies the relevant design from registration. The introduced change should be significant. A balance must be struck so that novelty and originality receive statutory recognition while also protecting the interest of trade and the right of those engaged in it to share the common knowledge.
The conclusion that arose from the Court’s order was that mere trade variants of pre-existing designs are not capable of being registered under an application for registration made under Section 5 of the Designs Act, 2000.
CASE TITLE: PHILIPS LIGHTING HOLDING B.V. v. JAI PRAKASH AGARWAL AND ANR.
Citation: 2022 LiveLaw (Del) 631
DISCLAIMER-
The views are that of author’s own and not necessarily the views of IPTSE Academy. This blog is a platform for academic discussions and hence authors have been given flexibility to convey their thought process.
AUTHOR:
Raunaq Bali
Student, Faculty of Law
University of Delhi
Trademarks: The distinction between infringement and passing off – By Raunaq Bali 