Protecting The Look And Feel Of Your Product Under The Designs Act

Introduction

As an ordinary customer, what is the most powerful differentiator between two products that significantly influence your choice of purchase? Yes, it's the product's visual appeal, i.e., the product's "look and feel". This look and feel may include a combination of the product's shape, configuration, pattern, ornamentation, or composition of lines and colours.

Aesthetic aspects of a product that are unique and innovative are a crucial part of their Intellectual Property ("IP"). The industrial design framework specifically governs the protection of this aesthetic aspect. Given the prime importance that the look and feel of a product holds in shaping a customer's choice, strategically deploying design protection is bound to add substantial commercial value to the product, and also mitigate the risks of third-party infringement.

The key requirement for a feature to be considered as a design is that it must be related to the external appearance of the product and appeal solely by the eye, without carrying any functional or technical characteristics – such as its contours, surface decorations, or visual motifs.

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The Designs Act, 2000

In India, the Designs Act, 2000 ("Designs Act") offers a robust legal framework to safeguard the aesthetic aspects of products. A "design" is defined as the "features of shape, configuration, pattern, ornament, or composition of lines or colours applied to an article—whether two-dimensional or three-dimensional—by any industrial process or means.¹"

The object of the Designs Act is to protect new or original designs that have been created arbitrarily to be applied on or capable of being used in relation to a particular article to be manufactured by Industrial Process or means. The Designs Act aims to reward an artisan, creator, or originator of a design by restricting unauthorized use of the design by third parties.

The proprietor of a new or original design can apply for registration of the said design². The term "proprietor" refers to any person for whom author of the design has executed the work in return for a consideration amount, or a person who has acquired the design or the right to apply the design to any article, or the author of the design and any other person upon whom the right in the design has devolved³.

The Designs Act mandates a potential design to meet the following essential requirements, to be registered under the Designs Act:

1. The design should be new or original⁴.
2. The design should not have been published previously in India or any other country before the date of application⁵.
3. The design should be significantly distinguishable from known designs or a combination of known designs⁶.
4. The design should relate to features of shape, configuration, pattern or ornamentation⁷.
5. The proposed design should be applied to or be capable of being applied to any article by any industrial process⁸.
6. The features of the design should appeal solely to the eye and be exclusively judged by the eye without carrying any functionality whatsoever⁹.
7. The design should not include any trademark, property mark or artistic works as defined under the Copyright Act, 1957¹⁰. In simple words, a brand, a logo, a painting, a sculpture, a drawing, a photograph, a work of architecture or of artistic craftsmanship will be excluded from the purview of the Designs Act.
8. The design should not comprise or contain scandalous or obscene matter¹¹.

Some of the famous design registrations in India include the registration for the Apple iPhone, the contour bottle design of Coca-Cola and the classic Rubik's Cube.

Benefits and Effects of Design Registration

Upon registration, the proprietor gains copyright in the design. Therefore, for the period of registration, the holder of the design registration gets the exclusive right to use it for article for which registration has been sought. This exclusivity serves multiple strategic purposes:

1. Ease of Enforcement: Registration of a design provides conclusive evidence of ownership for the said design, thereby making infringement claims easier to contest.
2. Exclusivity and Monopoly in the Market: The registered proprietor of a design can prevent third parties from producing, selling, or importing articles that bear their design. Therefore, in a crowded marketplace with visually similar products, a design registration ensures that third parties do not replicate your product's look and feel to avoid protracted legal proceedings.
3. Aids branding efforts: Gaining a monopoly over a product's look and feel ensures customers associate the design solely and exclusively with the registered proprietor. Such a distinct association significantly strengthens the brand's identity and market presence.
4. Commercial Leverage: A design registration is an asset for a company, which can be licensed or assigned, thereby adding tangible value to a company's IP portfolio.

Once registered, a design enjoys protection for ten years. The protection is further extendable by another five years upon renewal.

Enforcement and Remedies

The Designs Act provides the liabilities of an infringer, effectively serving as the remedies available to a registered proprietor. The proprietor may claim statutory compensation of up to ₹25,000 per act of infringement, subject to a ceiling of ₹50,000 per design, recoverable as a debt.

The Designs Act also allows the proprietor to file a civil suit seeking damages and an injunction to restrain further infringement, with the infringer liable for the court-awarded sum.

Best Practices for Companies and In-House Counsels to protect their Designs

Companies and in-house counsel must adopt proactive measures to safeguard their designs from imitation and ensure their market monopoly in the long run. Some of the ways designs can be protected from going unregistered and being used by third parties without authorization are listed below:

1. Conduct regular audits: Companies must conduct regular audits that identify protectable design elements across their product lines.
2. Preserve novelty: Companies must file applications for the registration of their design before it is disclosed publicly in national and international markets, to preserve novelty and promote the design's exclusivity.
3. Comprehensive IP Protection: Protection under the Designs framework must be combined with a patent, trademark, and copyright regime, wherever applicable, to build a comprehensive IP shield against the company's product, which is often an amalgamation of different IP rights.
4. Regular market survey: The market must be regularly watched and surveyed to identify copycats and potential infringements. IP watch services ensure that unauthorized use of IP is caught in time and seized before causing severe damage to the brand.

Comparative Analysis: Design Registration vis-à-vis Patents, Copyright, and Trade Marks

1. Design Registration vs. Product Patents

Patent and design protection serve distinct purposes in the innovation of products. Technical inventions that demonstrate novelty, inventive step, and industrial applicability are safeguarded under the Patents Act, 1970. This protects the functional or structural aspects of the product.

In contrast, the Designs Act, 2000 protects only the aesthetic features such as the shape, configuration, pattern, or ornamentation of an article that appeal to the eye. Functional or constructional features are expressly excluded. While Patents last 20 years, design registrations last only 10 years, with the option to extend for an additional five years.

2. Design Registration vs. Copyright Protection

The visual aspects of industrial products may also qualify as "artistic works" under the Copyright Act, 1957; however, Section 15 limits the overlap between copyright and design rights. Copyright ceases after a design is registered under the Designs Act. The Delhi High Court has clarified through numerous judgements that designs that are intended for industrial use are classified as "designs" under the Designs Act, rather than "artistic works" under the Copyright Act, if they are likely to be applied to more than 50 articles.

3. Design Registration vs. Trade Mark Protection

Overlap occurs between designs and trademarks, particularly for three-dimensional (3D) shapes such as bottles or packaging. Design protection concerns aesthetic form, whereas a trademark, as defined under the Trade Marks Act, 1999, identifies the product's commercial source.

An effective strategy is to register the design sequentially upon launch, thereby achieving immediate exclusivity. Later, as consumer recognition develops, one may seek 3D trademark registration for potentially perpetual protection.

Conclusion

In the age of design-driven consumerism, protecting the "look and feel" of products is a strategic business decision. Designs, patents, copyrights, and trademarks protect different distinct dimensions of an innovation; and together, a sound IP strategy integrates these tools to secure both short-term exclusivity and long-term brand value. Specifically for in-house counsels, proactive design protection offers an efficient way to protect a brand's creative investments and also safeguard market exclusivity and monopoly of the product. By integrating design registration into the broader IP management framework, companies can transform aesthetics into valuable and enforceable assets.

Footnotes

1 Section 2(d) of the Designs Act, 2000.

2 Section 5 of the Designs Act, 2000.

3 Section 2(j) of the Designs Act, 2000.

4 Section 4 of the Designs Act, 2000.

5 Section 4 of the Designs Act, 2000.

6 Section 4 of the Designs Act, 2000.

7 Section 2(d) of the Designs Act, 2000.

8 Section 2(d) of the Designs Act, 2000.

9 Section 2(d) of the Designs Act, 2000.

10 Section 2(d) of the Designs Act, 2000.

11 Section 2(d) of the Designs Act, 2000.

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.