Why Class A Design?

The new legislation of Designs Act, 2002 has a different classification system than the old Designs Act, 1911. The old Act classified the designs on the basis of the material of which the article was made whereas the new Act classifies on the basis of the subject matter of the design i.e. the functionality. The new Act has adopted an international classification system the Locarno Classification System which is established by the Locarno Agreement.[1] It deals with the subject matter of the design which is to be registered. For instance, Class 9 deals with Packages and containers for the transport or handling of goods. While India is not a signatory to the Locarno Agreement, its classification of industrial design is a template of the Locarno Classification System.

For the purpose of registration of designs, articles are classified into thirty-one classes and a miscellaneous class 99, as described in The Third Schedule of The Design Rules, 2001.[2] At the time of filing of a design application, it is important to identify and mention the appropriate class or classes as failure of the same may result in office objection with resultant delay of 2-3 months.[3] The examiner conducts a novelty search at the time of filing of a design application on class-wise or article-wise basis which adds on to the importance of mentioning the appropriate class or classes in the design application.

Section 2(c) of Designs Act, 2002 defines copyright as an exclusive right to apply a design to any article in any class in which the design is registered. It can be inferred that the monopoly right of the owner of the design is limited to the classes in which the design is been registered. The protection granted has a narrow scope. Under the Designs Act, copyright means the exclusive right to apply the design to any article in any class in which the design is registered.[4] Section 18 of Designs Act, 2002 and Rule 28 of The Designs Rules, 2001 provides for search of existence of copyright and the Controller upon request of information will cause search to be made in the class indicated. It is clear that every investigation and search will be conducted on the basis of the class indicated which adds to the importance of mentioning the appropriate class under which the owner of the design seeks protection. It is important to define the contours of right of the owner of the design by indicating the appropriate class.

Section 22 of Designs Act, 2000 states that during the existence of copyright, for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof will amount to piracy of registered design except with the licence or written consent of the registered proprietor. The class of the design has utmost important while determining that an imitation amounts to piracy or not. In the case of Kent R-O Systems Ltd. v. Sandeep Agasrwal, the impugned design was similar to the registered design of the appellant under Class 23-01, it would have amounted to piracy but the respondent had the permission of the registered proprietor.[5] The monopoly right given to a registered design is limited to the articles falling within the class in which the design has been registered. If the alleged design is applied to an article which is not included in the class or classes in respect of which the design has been registered, then such article will not fall within the scope of the registered design and will hence not constitute an infringement of the registered design. For instance, if a design is registered in class 18 – Printing and office machinery and a similar design can be covered under a different class then the similar design does not constitute an infringement of the registered design.

Where a particular design can be applied to articles which are in different classes, separate design applications must therefore be filed in the different classes. Multiple designs can be included in the same application; however they should belong to the same class. Under the Locarno Classification System, the designs are classified on the subject matter of the article whereas under the old Act, the design was classified on the basis of the material of which the article was made. The new classification is problematic as member countries to the Locarno Agreement apply their own classification which makes the classification of design uneven.[6] The Designs Act protects the aesthetic value of the article and not the functionality of the same and therefore a classification based on the subject matter of the article will make searching of designs more complex, time-consuming, slow, expensive and inexact. Reforms are required in the current classification system. A classification system should be readily searchable and must reflect the nature of the articles being classified. The Locarno classification system should be based on the appearance of the design rather than their function keeping in mind the importance of classification under the Designs Act.

Author: Ankita Aseri, Legal Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References:

[1]http://www.wipo.int/classifications/locarno/en/

[2]http://ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_30_1_manual-designs-practice-and-procedure.pdf, pg 20

[3]Ibid.

[4]Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia, 2015 SCC OnLine Del 1324927.

[5]Kent R-O Systems Ltd. v. Sandeep Agasrwal, 2014 SCC OnLine Cal 2690.

[6]https://heinonline.org/HOL/LandingPage?handle=hein.journals/manintpr184&div=11&id=&page=.

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