What's the difference? Protection for industrial designs

The market can be a fickle place. While innovative and useful products may fail, frivolous ones may become market leaders. Consider this: there’s an old wine in a new bottle. And the new bottle is all the rage, the difference between a loss-making and a profitable enterprise.

Of course, all its competitors would be falling over themselves to imitate the design of the new bottle. In that case, our old wine will lose all the advantage that it had gained. How does the company go about protecting its bottle, and thereby its business? The answer lies in getting industrial design protection through registration.

Simply put, an industrial design refers to the shape of an object, its configuration, or any pattern or ornament on a product. The importance was best explained by Lord Reid in Amp v. Utilux: “Those who wish to purchase an article are often influenced in their choice not only by practical efficiency but with appearance. Common experience shows us that not all are influenced in the same way.

Some look for artistic merit. Some are attracted by a design which is stranger 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: then it is profitable to use the design. And much thought, time and expense may have been incurred in finding a design which will increase sales.”

Registration of an industrial design is a vital tool and confers upon the proprietor exclusive rights for 10 years, renewable for a further five years. The registration of an industrial design confers rights that are akin to rights conferred by copyright in a work. This means that the proprietor of an industrial design registration is entitled to exclusively exploit the work, whether through commercial application, assigning the right, licensing, adapting the design and various other rights.

While the law is quite clear and on the face of it there is no ambiguity, in practice, there is an overlap between copyright and industrial design. One might be easily confused as to where the scope of copyright ends and that of design begins. While copyright covers only the artistic work of the design, such as the drawings, when the same is applied to an object, it takes the shape of a design.

Take the example of a new car. When the design is conceived by drawing, there exists a copyright in the drawing of the design. However, when the drawing is put to actual use by developing a car based on the design, the right shall be in the domain of industrial design.

“There would be no patent protection for an invention that does not have any utility. On the other hand, an industrial design must not serve any functional purpose and must only exist to advance the aesthetics of a product.”

Protection for the copyrightable aspect of the above example does not extend to its actual application. This has also been codified in India through the application of Section 15 of the Copyright Act, 1957, which states: “Copyright in any design which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his license, by any other person.”

This question of drawing the limits between copyright and design was discussed by the Delhi High Court in Microfibres v. Girdhar. In that case, the Learned Single Judge of the Delhi High Court had to determine whether a floral pattern drawing, which was certainly an artistic work, could still be considered so when it was applied by an industrial process to fabric as a design.

In explaining its determination, the court looked at the purpose of the work and examined the intention underlying the production. While this approach had been stated as false by the Division Bench in the past, the court said that if a particular work was created with the intention of putting it to industrial use then it would be covered by industrial design protection; otherwise, it would be covered by copyright protection. There appears to be no law requiring the examination of the object of a particular art work.

The court went on to state that an artistic work can stand alone, but a design cannot. A design remains worthless unless it is converted into an object and that was another important criterion used to distinguish the two.

However, the Division Bench stated that it is neither necessary nor feasible to examine the object of an artistic work, though it did go on to uphold the independent identity of the artistic work as an important criteria. It stated that the statute defined design as being only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article. The word only indicated the inability of a design to stand on its own as an independent work.

Similar opinion has also been expressed by the court in several pronouncements including Mattel v. Jayant Aggarwalla, where the Division Bench stated: “If the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act.

"If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.”

Industrial designs are also easily confused with patents. When a new car is produced, it may contain several improvements over the existing technology. Certain aspects of the car, such as the engine or safety mechanisms, can be protected by patents. In this case, the design of the new car would also be such as to advance the use of the patented technology and, in this scenario, a line between the purely design aspect of the car and the patentable aspect of the car must be clear.

Werner Motors Ltd. v. A.W. Gamage Ltd. explains the overlap between patents and designs in a rather simple manner. In this case, the plaintiffs sued the defendants for infringement of a registered design of a frame for motorcycles. The plaintiffs claimed that prior to the design application, they had applied for, and later obtained, a patent for the frame. The plaintiffs contended that the design registration was invalid due to the prior patent.

These arguments were rejected and Lord Justice Vaughan Williams said that he could not “find an estoppel or any ground for putting the Plaintiffs to an election between the letters patent and the copyright of the design....The grant of letters patent and the statutory copyright of the proprietor of the design, are different in their legal nature and effect.

"There is only one grant, that is of letters patent, not of the copyright. The copyright only gives protection to the shape and configuration, although the result of such protection may be to secure important advantages, such as attend a mechanical contrivance, which might be a good subject-matter for a patent.”

It may be summarised that the difference between an industrial design and patent lies in the fact that utility of the patent is an important consideration. There would be no patent protection for an invention that does not have any utility.

On the other hand, an industrial design must not serve any functional purpose and must only exist to advance the aesthetics of a product. Therefore, when patent protection for any functional aspect of a design is granted, those aspects of the design then remain protected under the Patents Act and no design protection can be granted.

In Catnic v. Hill & Smith, Justice Whitford stated: “In my view by applying for a patent and accepting the statutory obligation to describe and if necessary illustrate embodiments of his invention, a patentee necessarily makes an election accepting that, in return for a potential monopoly, upon publication, the material disclosed by him in the specification must be deemed to be open to be used by the public, subject only to such monopoly rights as he may acquire on this application for the patent and during the period for which his monopoly remains in force, whatever be the reason for termination of the monopoly rights.

"If this be correct, or even if I were wrong in the view which I have expressed, the Plaintiffs must be deemed to have abandoned their copyrights in the drawings the equivalent of the patent drawings.”

Amit Mahajan is a senior associate at Lall Lahiri & Salhotra. He can be contacted at: gpo@lls.in