Can You File A Design Patent To Protect From Infringement?

Designs perceived by all create a big impression on the viewer’s eyes and so must be protected from being copied. As such, creators of designs apply for design patent using the legal system.

Definition

As per Section 2 (D) of the Design Act, Design may be defined as any feature that comprises configuration, figure or shape (3 dimensional or 2 dimensional) that is applicable to an article. It is made by an industrial process which is mechanical, manual, chemical and is separate or combined. The final article is judged by or appeals to only the eyes of the beholder. It will not comprise any means of construction or anything which is part of an artistic work or trademark.

Infringement

Similar to other Intellectual Properties, infringement can happen to design also. Design infringement refers to an illegal action that makes use of a design that has been registered or is a design’s fraudulent imitation sans permission from a design’s creator. The latter can file a suit to make the infringer stop the illegal action and recover a token sum as damages from him.

History of design act in India

The Design Act in India goes back to the period of British rule. The first legislation for protecting designs was the Patents and Design Act 1872. In 1911, the British government enacted a new Patents and Design Act by repealing all prior legislation. In the year 1995, India joined the WTO (World Trade Organization). Thereafter, the 1911 Act was repealed by the Indian government, and the Design Act 2000 was put in place to comply with the TRIPS agreement. This act enabled design patent filing, among other things.

Infringement according to the Design Act, 2000

The ACT holds that a person commits Design infringement simply in the following situations:

• The illegal action is done while there exists a registration for any design.
• The design may be applied or imitated without the registered proprietor’s or owner’s consent.
• The illegal action is done for the objective of sales and not just for personal or private use.
• The articles that are infringed should be in very same class of registered design.

For checking Design infringement, the legal body or the court is not needed to directly compare two similar articles but must view the article from the perspective of an ordinary consumer and must see whether the articles cause any confusion for the consumers.

Essential features for design infringement protection

The design of goods or products serves as a major concern for businessmen. Certain unique designs of products, such as contour bottles of Coca Cola are crucial for brand identity. The Design Act 2000 helps protect the intellectual effort of a proprietor or author of design from any infringement of the same. The act offers certain needs that products must be worthy of being protected from infringement of design happening in India. These include:

• Originality and newness of the product
• Design must not be revealed to the public previously.
• The design must be substantially differentiated from other known designs or a combination of known designs.
• The design must not feature any scandalous or obscene subject content.

Exclusive rights of registered owners of designs

Designs that are registered as part of (Section 11, Chapter II) Design Act offer a benefit to the owners who register the design not just to have protection for their work but may also to gain the design’s copyright protection. This is for a time period of Ten years since the date of registration under the Design Act 2000.

Some exclusive rights acquired by the owner include:

• Right for applying the design that has been registered for any articles belonging to any classes wherein there is registration of the design.
• Right to publish, expose any articles (any classes) registered wherein there is an application of design.
• Right for importing any articles in classes registered for the objective of sales.

Liability for infringement

Registered owners of design are empowered to select one among the multiple remedies offered by the Design Act 2000 (Section 22). These include:

• Payment of a sum up to Rs. 25,000 for every breach that can be recovered in the form of contract debt for the registered proprietor or owner. The total sum should not be more than Rs.50,000.
• Making a plea for injunction contrary to repetition or suit for recovering damages. In this situation, there is a liability for the infringing party to pay a sum awarded by the courts, and they will also be subject to restriction through an injunction.

The rationale for such liability for the infringing party is to force him/her to be liable for losses incurred by the registered owner of the design and for ensuring a fair ROI (Return on Investment) for the latter.

Benefits of the act

The 2000 Act provides the following benefits:

• When the design is registered, it can be protected from infringement by another party.
• The rights of the design are available at a low cost and feature simple and fast reviews. This is useful for companies which have to protect the designs of a wide range of products. For instance, manufacturers of toys can protect the design of various kinds of dolls and accessories.
• The code of companies can be protected by copyrights and patent services, but for looks, they have to depend on design rights. This way, digital products can be protected.
• The act is also useful for quick changing industries. An example is the fashion industry. The speed with which remedy for infringement is offered by design rights can aid designers in protecting their creations in important markets.

Challenges and issues

The following are the main challenges posed by the Design Act 2000:

• Lack of awareness as regards the online process of registration.
• There are excessive formalities in the registration process.
• The time of registration is reduced to six months, and there is no proper update on the status.
• There needs to be a speeding up of the process for market regulation and demand for the final product.
• There is a lack of trust in legal aspects as there is weak enforceability, and most infringement is not noticed.
• Nearly 98% of designs protected by the act can be copied by small firms.

In sum, these are all some of the aspects of filing a design patent to protect from infringement.