Have you ever crossed a person who doesn't love owning branded phones, shoes, cars, or jewellery? I don't think so. But for a fact, we can say that many people buy products that are copies of various original brands. Why? Because in today's world filled with technological advancements, people love showcasing their fashion interests or new trends on every platform. But money being a constraint, they will eventually fall into the massive pit of "fakes". For example, many international shoes and cloth brands have a high reputation amongst youngsters, and it is a well-known fact that every consumer's biggest weakness is "low prices". So, we can understand that these companies imitating to be companies that are in good ranks in the market will gain a lot of income by making minor changes in the name and selling their products for relatively low prices as compared to the costs of these international brands imitated. Is there any possibility to stop this, or are these markets going to continue being filled with fake low-quality products resembling the products of reputed companies? In justification, this is a simple case of infringement of design rights.
By the end of this article, one will be able to explore different dimensions of the protection of design rights under the Intellectual Property Rights (IPR).
The exterior design of a commodity makes the product visually alluring and enticing. This design acts as a significant value-adding element which increases the marketability of the merchandise. As marketability is considered to be a factor for the performance of a company, companies will seek for protection of these designs to avert its use by third parties. Notable examples of imitating designs include the shape of the bottle of a favourite beverage, design of mobile phones. The design is a significant factor that helps influence consumer behaviour, which finally creates an impact on the performance of the product in the market. For this protection to be applied, every company must first have an IP (Intellectual Property) strategy.
In areas like Asia, where there is an excellent overabundance of competitors, cheap manufacturing costs conclusively make it a centre for notorious practices, so the need for proper IP strategies in these areas is essential. Ever wondered about the essentiality of this strategy or the need for IP laws? When these laws protect a company's product, it hinders illegitimate products from devaluing the brand. Also, conservation of thee designs will help trigger creativity in the minds of the industrial sectors, expanding commercial activities.
History of Design Rights in India
Heading back to the evolution of the Designs Act in India, first titled as The Patterns and Designs Act, 1872 gave exclusive rights to inventors of new inventions and designs. Due to the realisation of an urgent need to protect new designs hit in India, the enactment of this Act came into being. Later on, the Act succeeded into a consolidated form known as "The Inventions and Designs Act, 1888" which was a transparent replication of the British model of the Act in the United Kingdom.
The Act of 1911 excluded trademark or property mark from the interpretation of the term ‘design'. The Act further provided guidelines to satisfy to get a registered design in India. Duration of rights that were held by the proprietor, fee extensions, period of expiry was further defined. This Act was amended several times after the Indian independence and the British colonial period and finally, Indian Designs Act, 2000 was enacted to make amends to the law relating to the protection of designs and industrial designs and to implement the TRIPS agreement (Trade-Related Aspects of Intellectual Property Rights) to which India was a signatory. India also adopted the system of "first to file, first to get" which meant the inventor of a particular design must apply for the registration of his design at the earliest to prevent others from claiming rights for that specific design. A significant change that was brought about was the exclusion of ‘artistic works' defined in The Indian Copyright Act of 1957, from the definition of ‘design'. This exclusion explained by The High Court of India in Microfibers Inc. v. Girdhar Co. & Anr., that artistic work excluded were the works of paintings and creative works put into industrial use were not excluded from Section 2(d) of the Designs Act of 2000. The object of this decision was to mainly help reward innovators for the labour and research applied to unfold a unique and original design.
International Agreements for protection of Industrial Designs
Many International agreements also helped India improve its security of industrial designs. At the international level, apart from the TRIPS Agreement which helped give the member countries of the WTO to amend their legislation to provide a minimum level of protection to the Industrial designs. There are also three other international treaties that provide general standards of security which were to be provided by the contracting states. The first significant international agreement that covered general rule of protection for industrial designs is the Paris Convention for the Protection of Industrial Property and the second one was the Hague Agreement which concerned the International Registration of Industrial Designs, it governed the WIPO (World Intellectual Property Organization) which provides a global protection system for registering designs. The Locarno Agreement, 1979, also established an international classification for industrial designs. India follows this international classification even though she is not a contracting party of the Hague Agreement.
In countries like India, the requirement of registering for the protection of designs of a product is high as several companies may have similar ideas for one popular product that they are selling.
Crocs Inc. The USA v. Liberty Shoes Ltd. is an infamous and recent case where design infringement discussed in various aspects. The plaintiff filed a suit against Liberty Ltd. on allegations of the defendants infringing their designs that were valid until 28.05.2019. Crocs Inc. had filed cases in various lower courts against different manufacturers as the facts in most cases were directly related to design infringement. As the claims lied at different stages in different courts, they transferred all of the arguments to the Delhi High Court. The court later decided to hear the pending applications and suits together. Major companies who Crocs Inc. alleged of design infringement were Bata India, Coqui, Relaxo Footwear Ltd.
At the time of argument, the court did come in the conclusion that most of the designs of the alleged companies' models were unusually similar to that of the plaintiffs. It was also observed by the court that there were minor changes in the design like colour, placement of perforation. Nevertheless, the court viewed that overall, the aesthetic effects of the products were similar.
The plaintiff also argued that the standard design element used to infringe by the alleged was their signature gaps on the tops of the shoes. Later on, the court found out that the designs of holey soles were available on a public domain from 2002 and 2003, at that time, which makes the registration of the plaintiff's design invalid. So, the court held that the plaintiff's designs could not call to be genuinely inventive because there was the usage of that design in other mediums. Due to this, the court considered the plaintiff's idea not new or original, thus quashing the conviction of the alleged design infringement. So, this case helped us explore another significant area of design and how important it is to register a design of a manufacturer and also make sure that the design invented must not have prior usage to the registration of it in that territory. This way, one can lose the originality and uniqueness of his/her design. Thus, registration of the design of an article is not registrable in India, if it:
- Has been revealed to the public anywhere in India or any other country before the date of its registration, by disclosure of it in a tangible form or using it before the time of its booking;
- Is not original or new;
- Contains obscene or unlawful matter; or
- design is not distinguishable from other known configurations.
The above grounds can be used for the cancellation of a design or its registration and also as a defence in a proceeding of infringement. The court considers these grounds in the above case.
The Designs Act of 2000 is said to be a complete code and protection under this code is legal. This law protects the visual designs of objects that are not purely functional. Section 2(d) of this Act defines design as only the features, pattern, ornament or composition of shapes, lines or colours that applied to any article which is either two dimensional or three dimensional or in both forms. The design must be used to article by any mechanical means, whether in automatic, manual or chemical manner. The finished article must be appealed and judged solely by the eye. The Designs Act also includes protection of industrial designs (also known as patent designs) in India. Another unique feature of this Act is that it provides only civil remedies. Apart from an injunction, the proprietor of the design can recover monetary compensation by damages. Also, infringement of a design can only exist if the design registered under the Act.
The next question that arises, which is also confusing, is the question of distinguishing The Design Act from other Intellectual Property Rights. IPR has one common feature; it gives protection against various usages of a particular commodity or any other characteristic that brings upon value addition and determines the marketability of that product. But when going in depth to this concept, many organisations fail to register their product designs. Why do you ask? They'll reply with “It's copyrighted or patented already, why should I consider going through the hassle of registering my design?”
In the case of Vior (International) Ltd. & Anr. V. Maxycon Health Care Private Ltd., a patented product (Ferric Carboxymaltose: water-soluble iron carbohydrate complex) was used by an unauthorised organisation when the plaintiff had given copyrights to only one company. Pleading that the defendants are manufacturing and selling their patented product and falsely representing it online that the plaintiff had provided them with IP license to manufacture and commercialise the patented product. The court held the defendants liable for unauthorised manufacturing and selling the patented products. It amounts to infringement of the rights of the plaintiff granted under Section 48 of Patents Act, and also the defendants were held liable for the breach of the plaintiff's copyright by candidly copying the information on the plaintiff's website, which was held to be infringement under Section 51 of the Copyright Act of 1957.
From the above case, we can now understand the most and primary distinction between Design Rights and Patent rights and Copyrights. Patent protection is provided only to the functional part of a product which involves an industrial process in inventing it, and copyright protection is similar to design protection, but copyright attaches itself to the original creator of the work. Thus, establishing a difference between the three rights under the IPR.
In our technological era, the concept of innovation and creativity revolves around money and profit. The consumers try to gain maximum satisfaction from the product he buys, while the producer aims only at the accumulation of profits. With a market full of options, products with new and original innovation will the public accept. Due to this, enterprises become vulnerable to the problems of design infringement and piracy. Though there are rigid IP (Intellectual Property) laws that deal with infringement issues, they are still said to be not capable enough to protect intellectual assets of the enterprise. The main intention is obviously to gain monetary value and protection to the industrial design of the enterprise. Once the design is meddled with by another party, there is direct damage in gain and security. The Indian government introduced the National IPR policy, which complies with the World Trade Organization's (WTO) agreement on TRIPS, to keep in check with the issues. This policy has also been keen on increasing awareness for the generation and effective enforcement of IPR. This policy mainly highlights the issue of infringements of Patents, design and Trademark and also emphasises the steps to be taken by the authority to stop the practice of piracy in the Indian jurisdiction.
In the case of Piracy, the judgement in Veeplast v. Bonjour said that in piracy of design, every resemblance would not be considered to be an act of imitation. In this case, the court said that instead of placing products side by side to find the similarities in the design, it was more sensible to examine the commodity from the view of a customer with average knowledge and not-so-perfect recollection. This way, finding out if the imitated product mistook the customer for an original one, would declare it as an infringement of design. Overall, the primary consideration is whether the features of shape, configuration or patterns are similar to each other.
In a country like India, one of the many reasons why designs are not protected frequently is because of the rapid changes in consumer trends in clothing and technological industries, and new models must be on track with these trends. The requirement of a design not existing in a public domain before it's registration is something most of these companies cannot meet, which concludes with issues of piracy and infringement growing each day. The term of protection of industrial designs has also become a significant issue. This issue is also the reason why companies tilt more to the side of registering for copyrights and trademarks as it provides them with a longer term of protection, especially if the design of that company is the mere basis of profitability for that enterprise in the market.
But, even after these problems exists, India has made sure of establishing a proper structure for the protection of industrial designs of every individual, entrepreneur, inventors, innovators and manufacturers in the market. A different absolute criterion for security has recommended which aligns the international standards provided for the protection of industrial designs, globally. The procedures for filing design applications are made to be simple and less time consuming, and applicants are made clear of the requirements for the implementation of registration. Thus, the substantive criteria for the application must inform the applicants to make sure that the design applications are processed speedily and efficiently so that the inventors of these designs can now sell their products with the thought of absolute safety from infringement of their design.
Originally published 26 April, 2020
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.