Industrial Designs -Design Protection & Originality

When it comes to registering industrial designs there is a lot of confusion as to what can be registered, and what cannot. Although it is clear that industrial design covers the aesthetic appearance of an article, there are certain standards that the article must qualify to be registerable subject matter. Section 4 of the Designs Act, 2000, already lists out the basic requirements for a design to be registered. In addition to this there are also a catena of common law judgments that further clarify the standards and scope of originality, and this was further clarified in the recent Crocs Inc USA v. Liberty Shoes & Ors. judgment.This article aims to throw light on the standard and scope of originality laid down in those cases.
For a design to be called new or original there should be some original mental application involved. The novelty or originality of even a particular part of the article may be sufficient to call the design as a whole “novel or original”, but this part must be a significant one and it must be potent enough to impart to the whole design a distinct identity. In the case of M/s B Chawla & Sons v Bright Auto Industries[1], where a mirror was claimed to be a new design, it was held that addition in the shape of a mirror which were available in the market did not constitute a new or original design. The court observed that addition of a curve here or there on a well-recognized shape of an article of common use in the market cannot make it an article of new or original design. Later on, in the case of Pentel Kabushiki Kaisha & Anr. V. M/s Arora Stationers & Ors. also, the court held that a mere superficial difference in the design will not make the article new or original.Further, the court held that mere novelty of form or shape is insufficient. Novelty involves the presence of a new element or new position of an old element, when compared with prior art.[2]However, a combination of previously known designs may also be subject of design registration if the visual impact of the combination as a whole is new.
Another important requirement is that the design must be significantly distinguishable from known designs, or combination of designs. This means that the article cannot be registered merely because it is some what different, the difference must be significant. When the statute states that a design must be “novel or original”, it really means that it must be “substantially novel or substantially original”, with regard to the nature and character of the subject matter to which it is applied. However, what constitutes as “substantial novelty or substantial originality” is left to the interpretation of the designs office/courts. In the case of Simmons v Mathieson & Cold[3], the court held that “there must be a mental conception expressed in a physical form which has not existed before, but has originated in the constructive brain of its proprietor and that must not be in a trivial or infinitesimal degree, but in a substantial degree”, and further the court held that novelty must be judged by the eye of an instructed person, i.e., the person must be aware of common trade knowledge and usage in the class of articles to which the design applies.[4] For example, if it is common practice to have spikes on the soles of running shoes, a man does not make a new or original design out of an old type running shoes by putting spikes onto the soles. The working world, however, is entitled at its will, to take its choice of ordinary trade variants, and no design registration can prevent an ordinary workman from using trade knowledge of this kind. No design can be tagged “new or original” unless it can be distinguished  from the previously existing designs, and is different from ordinary trade variants. In the Crocs case, the plaintiffs design was registered in different countries, but they never got the benefit of such a registration as the court thoroughly went through the argument of it being a new and innovative design for the product. The court reasoned that to be new and original there should be significant change in the existing design.
The third requirement for registration of a design is that it cannot be a previously published design, and it should not have been made available anywhere in India or abroad, before the date of application for registration.‘Published’ means that the design is no longer a secret. If a design has been disclosed to the public, or the public is in possession of the design, it may no longer be qualified for registration.[5]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 to disqualify the design from registration.[6]Even mere  knowledge of a design, that is either available to a member of the public, or actually disclosed to an individual member of the public who was under no obligation to keep it a secret, would qualify as ‘publication’.It is not even necessary that the design should have been actually put to use.[7]
The cases discussed above highlight the need for any person, who is:

  • launching a new product, or
  • intending to have their industrial design registered, or
  • an industrial right owner,

to carefully assess their design, and their own rights, to make sure that they themselves are not infringing on anyone else’s intellectual property rights. Originality is a fundamental requirement when it comes to designs registrations. Therefore, even after you’ve acquired a design certificate, it is possible for you to loose it, if anyone can prove that it is not original.
Authored by Namitha Saju
[1]AIR 1981 Delhi 95
[2]Hello Mineral Water Pvt. Ltd. v Thermoking California Pure, 2000 PTC 177
[3] (1911) 28 RPC 486
[4]Phillips v Harboro Rubber Co., (1919) 36 RPC 79
[5]Rotela Auto Components (P) Ltd. v Jaspal Singh, 95 (2002) DLT 830
[6]Gopal Glass Works Ltd. v Asst. Controller of Patent and Designs, 2006 (33) PTC 434 (Cal)
[7]Russell Clarke, Copyright in Industrial Design, 4th Edition, p. 41-42

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