CHAPTER 3

DEFINITIONS
What is Design?
The meaning of "design"l is as follows:
(1) Designs means only the shape, configuration, pattern, ornament or
composition of lines or colours applied to every article;
(2) the article may be in two-dimensional form or three-dimensional
form or both the forms;
(3) the application of the design to the article can be by any industrial
process or mneans;
(4) the industrial process or means maybe manual, mechanical or
chemical;
(5) the manual, mechanical or chemical process or means may be
applied sepárately or combined together;
(6) the shape, configuration, pattern, ornament or composition of
lines or colours, in the finished article, appeals to the eye only and
judged solely by the eye.
However, "Design" does not include:
(1) Any mode or principle of construction or anything which is
merely mechanical device;
(2) Any trade mark as defined in section 2(1)(v) of the Trade and
Merchandise Marks Act, 1958 (43 of 1958);
(3) Any property mark as defined in section 479 of Indian Penal Code
(45 of 1860);
(4) Any artistic work as defined in section 2(c) of the Copyright Act,
1957 (14 of 1957).
The term "designs" has been defined in section 2(5) of the Designs Act,
1911 as meaning only the features of shape, configuration, pattern or
ornament applied to any article 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, and does not include any trade mark
as defined in Clause (v) of sub-section (1) of section 2 of the Trade and
1. Section 2(d).
5
 Understanding Designs Act, 2000
section 479
1958 or property nmark as defined in
Merchandise Marks Act,
Code.
of the Indian Penal Designs
designs under the Designs Act, 1911 and the
The definition of
not identical. The words "or composition of line
Act, 2000 are similar but definition of designs in the 1911 Act. Again
the
or colours..." is absent in dimensional or three dimensional or in both
two
the words "whether in designs in the 1911 Act. Again the
in the definition of
forms" is absent defined in Clause (c) of section
2of the
any artistic work as
words "or
Act, 1957 (14 of 1957)" is absent (naturally) in the 1911 Act.
Copvright
Judicial Interpretation of "Designs"
Ashoka Biscuit Works', the Court held that a
In Ampro Food Products v.
design is necessarily part and
trade mark is different from a design. Atrade mark is not necessarily so.
parcel of the article manufactured while a
Act, 1911 expressly
The definition of design in section 2(5) of the Designs
defined in section 2(1)(v)
states that it does not include any trade mark as
is why the certificate
of the Trade and Merchandise Marks Act, 1958. That
recites, "The novelty in
of registration of the design contains a note which
the design resides in the ornamental source pattern which appears onlythison
the side of the biscuit as illustrated. No claim is made by virtue of
shown in
registration to any right to the use as a trade mark of what is
the representation or to the exclusive use of the letters appearing in the
design".
In Bharat Glass Tube Limited v. Gopal Glass Works Limited', the Supremne
Court had held that the definition of design as defined in section 2(d) read
with application for registration and Rule 11 with Form makes it clear
that the design which is registered is to be applied to any finished article
which may be judged solely by eye appeal. A conjoint readying of these
three provisions makes it clear that a particular shape or a particular
configuration is to be registered which is sought to be produced on any
article which will have visual appeal. Such design once it is registered then
it cannot be pirated by any other person. The concept of desigrn is that a
particular figure conceived by its designer in his mind and it is reproduced
in some identifiable manner and it is sought to be applied to an article.
Therefore, whenever, registration is required then the configuration has to
be chosen for registration to be reproduced in any article. The idea is that
that design has to be registered which is sought to be
article. reproduced on any
In Escorts Construction Equipment Limited v. Action Construction
Equipment Private Limited", the Delhi High Court had held that the primary
object of the Act is to protect the shape and not the
function or functional
1. AIR 1973 AP 17: (1972) 2 APLJ 415.
2. 2008 (1) CTMR 500 (SC): AIR 2008 SC 2520.
3. 1999 (19) PTC 36 (Del).
 Definitions 7

shape. The expression "design" does not include a method or principle of

construction or features or shape or configuration which are dictated solely
by the function which the article to be made in that shape or configuration
has to perform. The plaintiff had claimed copyright to certain components
of the crane. The Court held that parts of crane are made in a particular
shape so as to inter-relate with others mechanically. These parts of the
crane are not made to appeal to the eye but solely to make the crane work.
Most of the key components or parts, unseen in the crane for which they
were required, had only to pass the test of being able to perform their
function. They would be judged by their performance and not by
appearance. Hence the key components or parts are incapable of being
registered as a design. It has to be borne in mind that commercial
exigencies require that copy- right/patent laws should be viewed in the
context of giving protection and exclusive rights for the purpose of
research and
encouraging inventive activities and investments in
development. Moreover, the underiying philosophy of the copyright/
patent system is that if rights of copyright owners are adequately
protected, it will give a fillip to new inventions and the invention will be
followed by innovations and investments for the commercial working of
the inventions, thereby leading to the industrial progress of the country.
It is, therefore, imperative that the rights of the copyright owners are
protected.
In Hindustan Lever Limited, Bombay v. Nirma Private Limited, Ahmedabad',
a contention was raised that a label was a design which was capable of
being registered under the Designs Act, 1911 and the copyright atached
to the said labels, if any, has ceased to be operative by virtue of the
provisions contained in section 15(2) of the Copyright Act, 1952. The Court
of the
did not agree with the contention. The court referred to the decision
Andhra Pradesh High Court in Ampro Food Products v. Ashoka Biscuit Works?
wherein it was held that a design is necessarily part and parcel of the
article manufactured while a trade mark is necessarily not so. Thus the
can
label to be put on a carton to be used as a container for the goods
never amount to design within the meaning of section 2(5) of the Designs
Act. Section 15(2) of the Copyright Act, 1957 has no application to the case.
In Samsonite Corporation v. Vijay Sales, the Delhi High Court was
considering the question whether Drawings for suitcases was a design"
and hence whether the same was entitled to copyright in absence of
registration of design. The principal contention, on the basis of theis
provisions of these two Acts, by the learned counsel for the defendants
that the drawings relied upon by the plaintiffs are designs within the
meaning of the Designs Act, 1911 and by virtue of section 15 of the
Copyright Act, 1957 the plaintifs cannot claim any copyright.
1. AIR 1992 Bom 195.
2. AIR 1973 AP 17: (1972) 2APLJ 415: (1973) 1 Andh WR 71.
3. (2000) FSR 463 (Del).
 2000
Understanding Dsigns Act,
wisdom thought it unnecessary to to give the
in its
The Parliament of the
Copyright
tho Act
separately for the purpose
meaning of design
Designs Act, 1911. Therefore,
that is defined in the these provisions have to be read together
for
because
the purpose of
deciding the question
section 15 of the Copyright Act, 1957 takes away the protection
which is a design. It is a bac:
because
that is
given to acopyright
of interpretation to aadrawing basic principle
of statutes that when two enactments deal with thhe same
in pari materia they have to be
subject and the
harmoniouslv.
provisions
Here the
are
position is, the Copyright interpreted
Act which is
later inof
point of time would impliedly incorporate into that Act the provisions
eted

of
the Designs Act. The plaintiffs confine themselves to the provisions
Copvright Act, 1957 and would assert copyright in the drawings while
second defendant would rely upon the provisions of the Designs Act a
unon k d
section 15 of the Copyright Act to show that what is relied
plaintiffs is a design and the clainm of the plaintiffs would come within
mischief of section 15 of the Copyright Act.
The term "design" is not defined in the Copyright Act and, therefore.
it has become necessary to fuse the two Acts and consider the point
involved in this case. Where there are two different statutes in pari materia
though made at different times, or even expired, and not referring to each
other, they shall be taken and constitute together, as one system and as
explanatory of each other. Therefore, it has to be ascertained what is the
meaning of the design and how the term "design" has been used in the
Copyright Act, 1957 and how far the defendants are right in saying that
the plaintiffs cannot claim any copyright in the design projected by the
plaintiffs as a drawing to claim protection under the Copyright Act, 1957.
In the noAY Fnoomoi P.
Why Protect Industrial Designs? and appeang
what make an article atractive
tdustrial designs are and increase its
and hence they add to the commercial value of a product
the Owite e
marketability. When an industrial design is protected,
that has registered the design - is assured an exciusive
Person or entity des1gn Dy thrd
ngnt against unauthorized copving or imitation of the
investment. An effective
Parues. This helps to ensure a fair return on
System of protection also benefits consumers and the public at large, by
promoting fair competition and honest trade practices, encouraging
creativity and promoting more aesthetically attractive products.
Protecting industrial designs helps economic development, by
encouraging creativity in the industrial and manufacturing sectors, as well
as in traditional arts and crafts. They contribute to the expansion of
commercial activities and the export of national products. Industrial
designs can be relatively simple and inexpensive to develop and protect.
They are reasonably accessible to small and medium sized enterprises
well as to individual artists and craftsmen, in both industrialised and
developing countries.
How can Industrial Designs be Protected
In most countries, an industrial design must be registered in order to
be protected under industrial design law. As a general rule, to be
registerable, the design must be 'new" or "original". Different countries
have varying definitions of such terms, as well as variations in the
registration process itself. Generally, "new' means that no identical or very
similar design is known to have existed before. Once a design is registered,
a registration certificate is issued. Following that, the term of
protection is
generally 5 years with the possibility of further periods of renewal
in most up to,
cases, 15 years.
Depending on the particular national law and the kind of design, an
industrial design may also be protected as a
law. In some countries, industrial design and work of art under copyright
copyright protection can exist
concurrently. other countries, they are mutually exclusive; once the
In
owner chooses one kind of protection, he can no longer
Under certain circumstances an industrial design may also invoke the other.
be protectable
 13
Definitions
under unfair comnpetition law, although the conditions of protection and
the rights and remedies ensured can be significantly different.
How Extensive is Industrial Design Protection
Generally, industrial design protection is limited to the country in
which protection is granted. Under the HAGUE AGREEMENT
CONCERNING THE INTERNATIONAL DEPOSIT OF INDUSTRIAL
DESIGNS, a WIPO administered treaty, a procedure for an international
deposit
registration is offered. An applicant can file a single international
which is a party to
either with WIPO or the national office of the country
in as many member countries
the treaty. The design will then be protected
of the treaty as the applicant wishes.
 What is 'Article'?
"Article"? means
(1) Any article of manufacture: and
(2) Any substance, which may be fully artificial or may be partly
artificial and partly natural.
(3) It includes any part of an article capable of being made separately
and sold separately.
If a design is to fall under this Act, the product to which the design is
applied or to be applied, must be an "article". The definition of "article"
is very clear and unambiguous. A natural substance cannot be called an
article.
The termn "article" has been defined in section 2(2) of the Designs Act,
1911 as meaning any article of manufacture and any substance, artificial or
1. http://www.ip0.gov.uk
2. Section 2(a).
 Definitions 17
The above issue was taken in appeal
before a
Bombay High Court in Marico Limited v. Raj Oil MillsDivision Bench of the
bald that the learned Single Judge had held that cap is Limited!. The Court
not "an article" by
mainly relying on English Court's judgment reported in (1995) R.P.C.
(House of Lords) (Ford Motor Company Limited's Design
Application).
The Division Bench held that the definition of "article" under
the Act
with the definition of "design" are different from the provision of read
the
English statute and importantly, the following words "includes any part of
an article capable of being made and sold separately", whereas in the
English statute the words are "if that part is to be made and sold
separately". Therefore, the words "capable of being made and sold
separately" has to be read and considered in the context of the Act. The
English law is silent with regard to the above words of the Act. The
repealed Act 1911 defines "article means any article of manufacture and
any substance artificial or natural or partly artificial or partly natural". The
above words "capable of being made and sold separately" were not there
earlier. Therefore, as intended to enlarge the definition of "article" and
"design", above words have been inserted. These words are clear and
unambiguous.
The Apex Court in an innumerable case has held that when the
language of the Act or statute is plain, simple and clear it needs to be
respected. There is no vagueness in the definition of "article". Apart from
the intention of the legislature, it is unambiguous and clear. The Act,
therefore, needs to be interpreted in this background and not otherwise.
and
The present desigrned article cap is capable of being made separately part
sold separately. There is no question of any forcible separation of any
purpose
of the designed cap. The registered cap itself is the article for the
of the Act and registered accordingly.
the
The fact which also cannot be overlooked at this stage of
proceeding is that the defendants themselves had applied for registration
is an affidavit on record
of their cap separately which was rejected. There the caps are made
filed by the defendants themselves which shows that also
separately, it
separately in the market. The caps which be made
made and sold
includes that the said caps are "capable of being separately"
made and sold
separately". The phrase "capable of being which a design article can be
covers the cases not only that an article upon
each article which is
Inade but also can be sold separately. Therefore, a
separate from the other parts of the goods and registered separately as
design, if intended and or desired by the proprietor of the registered
in the market
article, as capable of being made and sold, is saleable
Admittedly, having
separately. Therefore, it is registerable under the toAct. existing provisions
once registered under the Designs Act pursuance the
1. AIR 2008 Bom 111: 2008 AIHC 2241.
 2000
Understanding Designs Act,
"an article" and "design", it is
18
enlarged definition of
the defendant
and als0 the reasons difficult
including the contention as raised by made
though separately and
toaccept the learned Judge on such articles,
given bythe separately, still it is not an article within
and sold
capable of being made section 2(1)(a) of the Designs Act. Only
meaning/definition under circumstances may not be putin the market
the present
because such article in
correct to say that the cap involved in the
not
for sale separately, it is said to have an independent life as an article of
present case, cannot be is "capable of being made and sold
commerce. The fact that such article difficult to accept the contention that
separately" is itself sufficient. It is ot
caps are not article as they have no independent life as an article
such
some larger article.
commerce and not an adjunct of
article of manufacture, the words inserted in the At
Apart from any
restricted to exclude an article and
have a wide meaning and are not to be made and sold
or even the part of an article which is "capable of being
separately". There is no question of giving the restricted meaning to
excluded finished article like cap in question which admittedly and
factually were and are made separately. These caps are capable of being
sold separately.
There is no dispute on record that both the parties got the cap made
separately. The concept of getting such cap registered separaely is known
to the commercial world and specially business and the market of the
products in question. The respondene's cap registration was rejected. The
appellants/plaintiffs got the registration under the Act and is definitely
entitled to have exclusive rights to claim the protection.
In view of the clear words and plain reading of the
article" there is no question of reading in the definition thatdefinition of "an
such article has
to have a commercial identity in the
market of its own. Once a part of an
article falls within the ambit of the
definition of "an article" and which is
"capable of being made and sold separately",
definition and or restriction of any kind on thefurther enlargement of the
and or part of an article has no ground that such article
own and hence is not an commercial identity in the market of its
article, is not correct.
Another face is that,
made and sold separately,anyis designed article which is capable of being
owner of the desigrn to sell it prerogative and or a right of the registered
out and or shown to separately or not. There is nothing pointed
and demonstrate
that once the design is
non-transferable
proprietor decide not
or not
assignable to third
person. registered, it 1S
or permit any to make and or sell it Even if sucn
or other person to use the said cap of the separately and or allow and
products, still in view of bottle of their
products and
is that such
article and or part of the definition, as the only
requirement
capability of being made and sold the article should have the capacity Or
separately and no other. The
commercial
 Definitions 19

jdentity of any article in the market cannot be judged from the point of
view of the objector of the cap of aa bottle or such other article. In the
commercial market, the person like the appellants who are the
registered
wner of the designed article is entitled to claim exclusive right over the
dosigned article. No third person is entitled to use and utilize the said
design on their articles without the consent and or permission from the
registered owner.
In Glaxo Smithkline Consumer Healthcare v. Amigo Brushes Private Limited',
he plaintiff had filed a suit for permanent injunction for restraining the
defendants from manufacturing and selling toothbrushes which infringed
the registered design of the plaintiff. The suit was filed in respect of the
design of toothbrush in respect of which the plaintiff had obtained a design
registration. The Court held that the case of infringement was not in
of the
respect of the design as a whole of the toothbrush but only part that
held
handle which is used for grip for brushing the teeth. The Court
separately.
the handle of the toothbrush cannot be detached and sold
2(a) of the Act. The
Hence the handle is not an article as defined in section detached from its
toothbrush
Court also held that the handle of the
incapable of being registered as a design. The making of aa
components is slow tapering at end of the
handle thick or thin or with sharp tapering or
stretch of reasoning be considered 'new' or 'novel'
grip part can by no
variant.
design but are a mere trade