Design Rights: Originality to Remain the Sole Criterion ? – India and the EU

We’re pleased to bring to you a guest post by Mathangi K. Mathangi is a second year law student at Gujarat National Law University, Gandhinagar.

Design Rights: Originality to Remain the Sole Criterion ? – India and the EU

Mathangi K

The origin of the term “industrial design” can be traced back to the 20th century German architect Peter Behres, who has been hailed to be the first industrial designer in the world. The concept of “industrial design” as an intellectual property witnessed a fast and a steady diffusion into the various legal systems across the world, with the US setting the milestone by being the first to adopt the concept of “industrial rights” in its IPR regime. The percolation then became more gradual with countries all over the world incorporating the rights into their respective systems.

India as well as the EU were among the first few regimes to adopt the concept of design rights in their legal systems. The main reason behind it can be attributed to the fact India as well as the main EU economies such as France, England, Germany etc. had major industrial economies and acted as the industrial centres in the world. Thus, it seemed imperative for the countries to have a well-regulated system in order to offer protection to their industrial designs.

The Indian Regime

In India, the design rights are governed by the Designs Act, 2000. The Designs Act, 2000 is said to be a landmark legislation in the design arena since it comprehensively lays down the design regulations in India. The Act not only lays down the guidelines from the Indian perspective but also stands at par with the TRIPS guidelines and standards.

The Act clearly lays down the pre-requisites for an object to qualify as a design –

  • It should be novel and original.
  • It should be applicable to a functional article.
  • It should be visible on a finished article.
  • There should be no prior publication or disclosure of the design.

The bare provisions have been purported with a number of cases that have laid down the importance of “novelty or originality” in the object to qualify as a design. In the case of M/S Crocs Inc. USA v. Liberty Shoes Ltd. & Ors., the Delhi High Court in 2018 had laid down that the “originality” shall remain the sole essential criteria in the determination of design rights. The court in this case also laid down that design right cannot be granted merely on the object being functional in nature if it fails to ‘appeal to the eye.’

This term “appeal to the human eye” has been well established in the common law regime. The court in the UK case of Amp. v. Utilux in 1971, laid down the test for appeal to eye that has been followed by the courts in India until today.

  • The appeal must be clearly visible to the human eye.
  • There shall lie no necessity to create an artistic or aesthetic creation as long as the object in consideration is “original” in nature.

This establishes the schematic line of Indian ruling that requires originality to be the main criterion for the protection of design rights. These rulings in turn portray the need for objectivity in offering protection which has remained as important factor in the Indian IPR regime.

The EU Regime

The EU IP witnesses a combined play of both the EU as well as the national laws of the respective countries. Both these laws have a well-developed set of laws regarding design rights. The design rights in the EU is governed by the Directive 2001/29/EC that lays down the essential conditions for an object to be offered design protection.

It is a well-established principle through the EU precedents that there shall be two cumulative elements to fall under the ambit of “works” – the object must exhibit originality and must be a creative expression in any form or manner. For originality to be demonstrated, it is required and sufficient that the object reflects the free and creative choices of the author. And as regards to its expression, it is required by the Directive 2001/29 that the object in question is identifiable with sufficient precision and objectivity. The object must not provide any scope for subjectivity, which acts as a detriment to the legal certainty involved.

In EU, there have been multiple instances when the domestic laws and the EU laws have been contradictory to each other. For example, in the most recent case of Cofemel – Sociedade de Vestuário SA, v. G-Star Raw CV, there appeared to be a contradiction between the domestic laws of Poland  which required the creation of “aesthetic effect” in order to offer design protection and the EU laws that solely based its rights on “originality and its expression”. The CJEU in its ruling held that originality and its expression shall remain the sole criterion since the protection of industrial rights must involve no element of subjectivity and must completely be objective in nature.

Comparative Analysis

Certain key similarities as well as differences can be found in the EU and Indian IP regime. While in the EU, both the EU Directives as well as the national laws of the respective countries which may at times, be in contradiction to each other, are taken into account, in India the design rights are solely governed by the Designs Act, 2000. “Originality” has remained the sole important criterion in both the geographical territories. The terms “creative expression” in the EU regime and “appeal to the eye” in the Indian scenario can be seen to be synonymous terms where both require the creative expression but do not require or mandate the creation of an artistic or an aesthetic effect.

Though both the regimes have attempted at making the laws completely objective in nature, with no element of subjectivity involved, they stand at different levels in the success of the same. While in the EU, the element of objectivity has been given utmost importance, “appeal to the human eye”, though bases its findings on “originality”, still provides a scope for subjectivity to be involved since it, to an extent, lies on the human judgement.

It is also essential to note that while the EU law has undergone a multitude of changes and evolution due to the co-existence of various jurisdictions and regulations, on the other hand, in India, the design laws have not undergone such radical and multitude of changes due to the existence of a single well laid down guideline which is the Designs Act, 2000. The cases in India can be seen to be guiding the entire regulations in a particular direction without many deviations from the main course unlike the EU, that witnesses’ deviations from the main law, which often seem to be in direct contradiction to the main law as well.

Thus, while both the Indian and EU law on Design rights aim to achieve a similar outcome, the levels in which each of them are at achieving this goal, stands different. Both the regimes seek to eliminate subjectivity involved as a whole. Today, the EU stands at a better position today with stronger precedents in the attainment of this goal. India has come miles forwards but still trails behind the EU in achieving the same. It is imperative for Indian courts to set stronger precedents that requires nothing but originality for an object to be offered design protection.

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