The Designs Act, 2000

What it does

The Designs Act, 2000 protects how an article looks. A design, for the Act, is the features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article by an industrial process, that appeal to and are judged by the eye in the finished article. It does not protect the way the article works, which is the subject of patent law, and it does not protect a mark used to identify goods, which belongs to trade mark law.

Protection comes through registration. A design must be new and original, which means it must not have been published anywhere in the world or used before the date of application, and it must not be contrary to public order or morality. Registration gives the proprietor the right to stop others from applying the design, or a fraudulent or obvious imitation of it, to articles of the registered class for sale. The initial term is ten years, and it can be extended once by five years.

Who it binds

It binds anyone who applies a registered design to an article for sale, or imports, publishes or sells such an article, without the proprietor's consent. It also binds those who apply to register: the application goes to the Controller of Designs, who examines it, and a design that is not new, or is only a trade mark or an artistic work of the kind the Copyright Act covers, is refused.

The interaction with copyright is a particular trap. Under the Copyright Act, 1957, copyright in a design capable of registration under this Act ceases once the article has been reproduced more than fifty times by an industrial process, if the design was not registered. A manufacturer who relied on copyright for a design it never registered can find that the protection has gone.

What has changed, and when

• The Act replaced the Designs Act, 1911 and works with the Designs Rules made under it.
• The system uses an international classification of goods for registration. Applications are made to the Patent Office, whose Controller General of Patents, Designs and Trade Marks heads the design registry.
• Amendments and rule changes since then, including to fees and procedure, should be checked against the date of any application.

What turns on it in practice

The decision that matters is timing. Because novelty is judged at the date of application, a design that has been shown, sold or published before it is filed may have lost the right to registration. A business launching a product should file before launch, and should file for the design of a product whose look is part of its value: packaging, a bottle, a device housing, a pattern.

The second decision is which right to use. A shape may be protected as a registered design, and a name or logo as a trade mark, and the working of the product as a patent. Each has different tests and different terms, and the right combination depends on what the business actually wants to stop a competitor from copying. The site's intellectual property and licensing practice approaches a product launch in this way: the search before filing, the filing itself, and the licences under which the design is then used by others.

The third is enforcement. A proprietor whose registered design is copied can sue for infringement, and the defendant commonly answers by saying the registration is invalid because the design was not new. Cancellation proceedings run alongside. A claimant should therefore expect the prior art to be tested, and should keep its own records of when the design was created and first disclosed.