India: The Road To A Global Law – Indian Design Laws Analyzed

Last Updated: 31 October 2013
Article by Amaya Singh

When two titans fight, the effects can be far-reaching. The Apple v/s. Samsung global wars are a case in point. The effects have already had widespread repercussions and are a matter of intense debate worldwide – and the Jury is still out!!

One of the major issues in this war is the lesser used aspect of Intellectual Property i.e. Design Laws. In fact, in the verdict in the US in favour of Apple, Design was the key arsenal in its attack.

The 'lit wars' or the litigations have not quite reached the Indian shores. However, this brings us to an interesting aspect of comparison of the Indian Design laws with the laws of other countries and how it holds up.

Historically, the Indian Design law and practice has always veered towards taking literally the concept of 'Copyright in Designs' in comparison to being a Design Patent. Now, though it is moving closer to the concept of Patents, the vestiges of the old methods still remain in practice.

In India what is protected is 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, ........
...... which in the finished article appeal to and are judged solely by the eye".

"Judged solely by the eye" has been interpreted to mean that every design is to be looked at for an "eye appeal", i.e. the aesthetic value of the design needs to be gauged. However, typically any article could have both aesthetic and functional elements. In such cases the definition does not include "....any mode or principle of construction or anything which is in substance a mere mechanical device...".

Meaning thereby, any article, wherein the function dictates the look of the article, cannot be claimed by way of a design protection. While Design is usually concerned with aesthetics, with reference to an article, there are situations wherein the aesthetics and the functions will most obviously be intertwined. There is no concept that defines such situations in the Indian context till now. In fact, for most articles on which the design is applied, the functionality to a great extent defines the shape of the article. It is hard to imagine that an article will be manufactured or created without any purpose and therefore function. The lacuna in the law is in the interpretation of the definition itself! The definition in the Indian context takes "eye appeal" to exclude any form of functionality, i.e. dictated by function, which would be antithetical to the very purpose of the article.

All the jurisdictions such as US, China and Japan, have the concept of Utility Models. Therefore when it comes to enforcement, all the protections sought in the various IPs are combined to cover all aspects of an article.

The way that the US laws deals with this is in the form of the "Design Patent" to protect the way an article looks (35 U.S.C. 171). This has all the trappings of a Patent albeit at a lower threshold than a regular patent. Simultaneously in the US context also there is a concept of Utility Patents which protects the way an article is used and works (35 U.S.C. 101). The law therefore takes care of both the "aesthetics" in the Design Patent and the "utility" or the "functionality" in the Utility Patents. Accordingly, as per US jurisprudence, a situation is envisaged wherein a clear cut separation of functionality from aesthetics or ornamentation is not so easy. In such cases both Utility Patents and/or Design Patents can be filed.

In South Africa, it is dealt with in a different way. The South African law provides protection separately for the functionality and aesthetics. As per the law, prevalent "design" means an aesthetic design or a functional design. Accordingly, by definition, it includes two registrations, one each for both the above aspects. Further the two concepts are defined as:-

"aesthetic design" means any design applied to any article, .........., having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof;

"functional design" means any design applied to any article, .............having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work and a series of mask works; (ACT NO. 195 OF 1993: DESIGNS ACT, 1993.)

One further aspect of the Indian Designs Act is that the protection is granted only for a single embodiment. For a practitioner, though this is good for business, for a right owner, this would entail not only additional cost but also the danger of losing one or more embodiments while claiming priority from a foreign case in India. In US and for an International Registration under WIPO, for example, multiple embodiments are allowable and therefore the obvious effort when these cases are filed in India.

A difficulty faced by right owners claiming priority from EU and International Registrations, is in the change of class -- from Locarno based classification (Ninth Edition) followed in these jurisdictions, to the classification followed in India which uses the 3rd edition of the said classification as its base. This change of class many a times defeats the purpose of the claim for an article. For example whereas in EU the article may be in Class 32, in India since the class is not available, the article would need to be defined as per the Indian Classification, as a result of which the original scope would be upset.

Application of drawings is yet another aspect of consideration. Earlier the Designs Office would not consider any line drawings wherein the lines were not made solid. However in recent times this concept is changing with the 'Manual of Designs Practice & Procedure' a publication of the Indian Patent Office clarifying the usage of dotted lines to depict the unclaimed portions of the design protection. Accordingly, now it would be easier for the Controller to understand the claim of the design and its environment when line drawings are used both as solid and dotted lines. The Manual defines the same as:-

"Dotted lines may be used in representation to indicate those elements of the article for which no protection is sought. Dotted lines identify elements which are not part of the claimed design. In such a case, features of design for which protection is sought must be shown in solid lines in the drawing.

For instance, an ornamentation or surface pattern on an article can be registered. In such a case, the representation shall contain a solid line drawing for the claimed ornamentation or surface pattern, and dotted line for rest of the article."

In US this requirement is more elaborate and includes the usage of surface shading and broken lines to delineate the claimed area. As per 37 CFR 1.152 design drawings is explained as:-

"The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing...".

Claiming of Priority for an application which has passed the 6-month priority period in a foreign jurisdiction and wherein the Priority country has the provision of grace period extension would be a cause of concern for the applicants filing in India. As per the WIPO's proposals, in SCT/27/4, the applicant shall have a 6 months' period from the date of first disclosure of the design to apply for its registration. This would have direct impact on corresponding Indian application with regard to novelty. It can be suggested that for all those countries where provision of disclosure exists, the date of first use or disclosure shall be the date of filing for all practical purposes for applicable laws. In this case, Applicant has to support the date of first use with documentary evidence while filing the application. This step may safeguard the novelty in corresponding Indian Design Application and any other member state where there is no provision of grace period. 

All these above considerations and other such differences led the WIPO to consider the formulation of a draft Design Law Treaty. In the latest round of talks taking place, the member countries are trying to come to a consensus on a draft Design Law Treaty, so as to harmonize the differences in law across borders.

In the WIPO General Assembly Forty-Third (21st Ordinary) Session held in Geneva from September 23 to October 2, 2013 on "Matters Concerning the Convening of a Diplomatic Conference for the Adoption of a Design Law Treaty" the conclusion was as follows:-

"At the outcome of the twenty-ninth session of the SCT, the Chair concluded that "the SCT had made good progress on the draft Articles and draft Rules included in documents SCT/29/2 and 3 and that the work on technical assistance and capacity building had advanced. A number of delegations stated that sufficient progress had been made by the SCT to recommend to the WIPO General Assembly the convening of a diplomatic conference in 2014. Other delegations, expressing the view that there was a need for more progress on technical assistance and capacity building in order to reach a concrete outcome, were of the opinion that the General Assembly would take stock of and consider the text, progress made, and decide on convening a diplomatic conference" (document SCT/29/9, paragraph 10)"1.

In coming to the above conclusions vis-à-vis India, recently by way of notification the Patent Office had run a survey for the submission of comments on annexure VI of SCT/27/4.

As per this a study by the WIPO was conducted in order "to gain a better understanding of the potential impact on users/applicants and national/regional offices of the changes to industrial design law and practice proposed in the draft Articles and draft Rules contained in documents SCT/26/2 and 3. The objective of the study, as per the applicable Terms of Reference (Annex IV of the present document), was to analyze the potential benefits, constraints and costs for SCT Members of the application of above-mentioned draft Articles and Rules, and the impact, if any, of those draft Article and Rules on a number of factors that can be generally described as incentivizing design activities and access to knowledge".

The study was initiated in March 2012, with data collection carried out in April and May, 2012. Requests to complete the questionnaires were circulated to the Industrial Property Offices of all 185 Member States of WIPO and to the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Office of Harmonization for the Internal Market (OHIM) and the Benelux Office of Intellectual Property (BOIP), with responses gained from 52 offices from 25 high-income countries and 28 middle- and low-income countries.2

Both the office and the applicant/user questionnaires reviewed the proposed changes to design law and practice, and sought to gain the views of offices and applicants on the impact of such changes, particularly in terms of design activity and commercialization and in terms of ease, time and cost of registering.

The top changes so sought were as follows:

Change 1 – Choice of Illustration

Change 2 – Reduced Number of Copies of Each Illustration

Change 3 – Registering a Set of Designs

Change 4 – Easier to Gain a Secure Filing Date

Change 5 – Register a Design Six Months After Disclosure

Change 6 – Register a Design 12 Months After Disclosure

Change 7 – Secrecy for Six Months After Filing

Change 8 – Standardizing Information

Change 9 – Simplifying Procedures for Legally Valid Documents

These were then ranked from 1 to 9 as per priority for each member country wherein 1 is the highest and 9 is the least priority as under:-

Fig A.3.1: Relative importance of proposed changes – high-income and middle and low-income countries

Realities of differences in laws, the headaches of both a successful grant of Design as well as enforcement across borders and the slip roads available to infringers using cross border tactics, have led to a situation wherein internationally there has been a move towards harmonization of all forms of Intellectual Property. Patents, through the PCT route, Trademarks through the Madrid Route and now Designs through the Design Law Treaty are all policies aimed at bridging the divide.

As and when such unanimity is reached, it will enable the right owners to correctly structure their design portfolio. However the road is long and arduous, and one which will need to be travelled, overcoming economic and political bottlenecks.




The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Amaya Singh
In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions