Novelty under the Designs Act,2000
Those who wish to purchase an article for use are often influenced in their choice not only by practical utility and efficiency but also by its appearance.Some look for artistic merit. Some are attracted by a design which is strange or bizarre. Many simply choose the article which catches their eye. Whatever the reason may be, one article with a particular design may sell better than one without it. It would, therefore be profitable to use a design which will attract customers.
The law protecting designs was governed by the Designs Act 1911 which had now been replaced by the Designs Act 2000 which has been brought into force with effect from 11th May 2001.
The rights conferred by registration of a design is called ‘copyright’. Copyright in an industrial design or product design is governed by the Designs Act 2000.If a design is registered under this act it is not eligible for protection under copyright Act even though it may be original artistic work.
Definition of design- sections 2(d) and 4 of the Designs Act 2000
“Design” means only the features of shape configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or in three dimensional or in both forms by any industrial process or means whether manual, mechanical or chemical separate or combined which in the finished article appeal to and are judged solely by the eye but does not include any mode or principle of construction or anything which is in substance a mere mechanical device. A design in order to be registrable must be new or original not previously published in India or anywhere in the world. A design may be incorporated in the article itself as in the case of a shape or configuration which is three dimensional in nature or it may be represented two dimensionally on a piece of paper in such a way that the article to which it is applied could be visualized
An industrial design is different from a trademark. If after the expiry of the monopoly period, the design is not used by other traders it might in course of time become distinctive of the goods of the original proprietor and acquire significance as a trademark.
Design must be applied to articles
A design is something which is applied to an article and is not the article itself.A piece of paper on which a pattern is drawn cannot be a subject matter for registration of design.But a piece of paper on which is drawn a three dimensional object with the pattern shown on it may be registered as a design because here the design is a representation of the article,on which the pattern is applied.Similarly if the drawing is that of an article like a bottle,vase,chair,table,a motor body it would be registrable as a design if it is novel.An article to which the design is to be applied must be something which is to be delivered to the purchaser as a finished article.Thus in general buildings and structures like a petrol filling station cannot be considered ad article within the definition of design.But portable structures which are sold as finished articles may be subject matter for registration of design.
Novelty and Originality
A design in order to be registrable must be both new and original not previously published in India or elsewhere.Natural objects applied as designs may be novel or original.For example the representation of a tree or a building on a spoon may be considered new or original.Here the novelty consists in the application of a drawing or design taken from a material source to an article.The words new or original involve the idea of novelty either in the pattern,shape,or ornament itself or in the way in which an old pattern shape or ornament is to be applied to some special subject matter.A paper weight in the shape of an animal may be new and original.In order to be registerable the design should be substantially different from the pre-existing designs applied to the class of article.What amounts to a substantial difference must depend on the particular facts of each case.”Original” means originating from the author of the design,section 2(g).
The novelty or Originality of a particular part of the article may be sufficient to impart the character of novelty and originality to the whole.A combination of known designs may be considered novel if the appearance of the combination as a whole is new.A combination of two or more old features may be registrable if the combination is not obvious bit is new and original.
Colour may form an element in a design,but colour or colouring as such dies not constitute design,unless the change of colour creates a new pattern or ornament.Composition of lines or colours can constitute or design under the new definition.
In deciding the question of novelty or originality evidence of experts in the trade is admissible.The introduction of ordinary trade variants into an old design cannot make it new or original.
Reckitt Benkiser India Ltd v. Wyeth Ltd
A registered design can be cancelled under Section 19 of the Act if such registered design had been published in India or in any other country prior to its date of registration.The legal interpretation as to what amounts to prior publication under the act was interpreted in the judgment recently delivered by the Delhi High Court in the above case.