The Right Conferred by Registration of Design

6.1 Design: “Design” means 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 section 478, or property mark as defined in section 479 of the Penal Code. [1] It is the ornamental or aesthetic aspect of a useful article consists of shape, or pattern, or color or configuration which must appeal to the eye of the consumers. A particular attractive design may be profitable for the business for it will increase the sale. The aim of design registration is to protect the originator of a profitable design from his reward in case of applying it to their goods by the others. Article 2 (1) of Model Law, as provided by WIPO, defines designs as “any composition of lines or colors or any three-dimensional, whether or not associated with lines or colors, is deemed to be an industrial design, provided that such composition or form gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft.” A design to be registrable need not also a process artistic merit but it must be new in itself. The novelty or originality of a design is judged solely by the eye with reference to the external appearance of the finished articles to which the design applied. [2]

The right conferred by the registration of a design is called copyright. This copyright has no resemblance to the copyright granted under the copyright. Such copyright in an industrial design is governed by the Patents and Designs Act, 1911. If a design is registered under this Act it will not be eligible for protection under the Copyright Act, 2000, even though it may be an original artistic works.

6.2 Criteria of registration: In order to be registered a design must be new or original not previously published in Bangladesh. The design must have individuality of appearance, which makes it not merely visible but noticed, although it need not possess any artistic merit. A design should be substantially different form pre-existing designs applied to the class of article. It must appeal to the eye of the consumers and should be industrially reproducible. However, criteria of registration may be pointed out as follows-

The design must be new,

It must appeal to the eye of the consumers,

Applicable industrially to the article.

6.2.1 New or Novelty: A design must be new, or original, or novel for being registration. It must not previously be published in Bangladesh. The Idea of novelty depends and varies on the basis of particular facts and circumstances. It should substantially be different from any other pre-existing designs applied to the class of article. The design of a particular part of the article may be sufficient as a novel character to the whole of that article. Combination of known design may be claimed as substantially new if it is not an imitation of the known design i.e. the appearance of the combination as whole is new. Color may form an element in a design if the change of color creates a new pattern or ornaments. In Abdul Khaleque, Proprietor of Khaleque Engineering Works vs National Fans Ltd. and others [3] the learned Judges after considering several decisions viewed that, It would not be right to adopt the view that slight trade variations in the concerned design can through away the totality of the fundamental features of two designs. No design shall be accounted new or original if it only differs from the earlier design by an immaterial detail, which means that any variation must not be trivial or infinitesimal which a skilled person might make between the articles for the commercial purpose……For the same reason there cannot be one yardstick to different issues. Consequently, each case will have to be decided on its own facts and circumstances, as the existence or not of substantial novelty or originality is a question of fact to be decided by the eye.

6.2.2 Appeal to the eye of the consumers: A design must be one which appeals to the eyes of customers. There must be a special, peculiar, distinctive, significant or striking appearance, which is something that catches the eye and in this sense appeal to the eye. The customer must be influenced only by the eye and not by the suitability of the article for any particular purpose. Any mode or principle of construction or anything which is in substance a mere mechanical device is not a registrable design. Color may form an element in a design, color or coloring as such does not constitute a design, unless the change of color creates a new pattern or ornaments. Again there is no yardstick to decide the question of appeal to the eye, it must be determined from the own facts and circumstances of each case.

6.2.3 Applicable to the article: A design is something which is applied to an article and is not the article itself. A design may be incorporated in the article itself as in the case of a shape or configuration which is three dimensional in nature e.g. shape of bottle, vase etc. On the other hand, it may be represented two dimensionally as patterns or ornaments on a piece of paper in such a way that the article to which it is applied could be visualized e.g. pattern for textiles or wallpaper. An article to which the design is to be applied must be something which is to be delivered to the purchaser as a furnished article. The design of a part of an article is not registrable as a design unless the part is sold separately as an article. The article to which the design is to be applied must be industrially reproducible.

6.3 Procedure for registration: The Registrar may, on the application of any person claiming to be the proprietor of any new or original design not previously published in Bangladesh, register the design under this Part. [4]

The application must be made in the prescribed form and must be left at the Department of Patents, Designs and Trade Marks in the prescribed manner and must be accompanied by the prescribed fee. [5]

The same design may be registered in more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Registrar may decide the question. [6]

The Registrar may, if he thinks fit, refuse to register any design presented to him for registration; but any person aggrieved by any such refusal may appeal to the Government. [7]

An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned. [8]

A design when registered shall be registered as of the date of the application for registration. [9]

Section 44 states that, where a design has already been registered in one or more classes of goods, the application of the proprietor of the design to register it in some one or more other classes shall not be refused, nor shall the registration thereof be invalidated. [10] But such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration.

The Registrar shall grant a certificate of registration to the proprietor of the design when registered [11]

6.4 Rights granted: The proprietor of a registered design shall have the exclusive right to apply a design to any article in any class in which it is registered. This is called copyright, which is deferred from copyright under the Copyright Act, 2000. When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration. [12] The object of design registration is to see that the originator of a profitable design is not deprived of his reward by others applying it to their goods without permission. Subsection 2 and 3 of the section 47 states that this period of five years is extendable for further terms of five years and thereafter for another five years by filing application before the expiration of the said period. Such application must be made to the Registrar in the prescribed manner and filed with proper fees. So, the design can get protection for 15 years in total. A copyright granted to a design will become a public property after period of its expiration.

The rights conferred by section 47 is subjected to the following two restriction-

That the Registrar may erase the name of the proprietor of a registered design, if the exact specimens or representations are not furnished before the delivery on sale of any article to which the design has been applied. Therefore, he will lose his rights over the design.

The article to which the design is to be applied must be marked with the prescribed mark, words or figures (e.g. Registered, Regd, RD). If he fails to do so, he will not be able to recover any damages or penalty in case of infringement.

Section 51B states that, registered design will bind the Government as like as any individual and the provisions of section 21 regarding the assignment or license patent will be applicable in case of a registered design.

The proprietor of a design is transferable. The owner can transfer it as his motion with or without reward.

6.5 Cancellation of the design: Section 51A states about the cancellation of the registered design. Any person interested may present a petition for the cancellation of the registration of a design to the Registrar or the High Court Division.

The High Court Division may, on any of the following grounds, cancel the registration of the concerned design:-

that the design has been previously registered in Bangladesh; or

that it has been published in Bangladesh prior to the date of registration; or

that the design is not a new or original design.

In the case Abdul Khaleque, Proprietor of Khaleque Engineering Works vs National Fans Ltd. and others [13] , it was held that, for the purpose of cancellation it is not necessary for the respondent’s design to be exact reproduction or copy of the petitioner’s design to the minutest detail. It will be enough if they appear to be two species of the same design. It is further said in the same case that, by reason of registration the proprietor may claim registration under this Act. But entry in register is not conclusive thereof and the presumption can be rebutted.

An application for the cancellation of the registered design must be made within one year from the date of the registration, to the Registrar; and the Registrar may consider the following ground to cancel the registration of the design-

that the design has been previously registered in Bangladesh; or

that it has been published in Bangladesh prior to the date of registration.

An application before this court being a counter blast of the notice issued for and on behalf of the opposite party and when the petitioner has not approached this court with clean hands he is not entitled to any relief as prayed for. [14] No design shall be accounted new or original if it only differs from the earlier design by an immaterial detail, which means that any variation must not be trivial or infinitesimal which a skilled person might make between the articles for commercial purpose. [15]

An appeal shall lie from any order of the Registrar for cancellation of design to the High Court Division. The Registrar may also at any time refer any such petition to the High Court Division for deciding the matter.

6.6 Transfer of Design: A design may be transferred by assignment, or by license, or by succession just like patent. Rules regarding the transfer of design by assignment or license are same as transfer of patent. The terms and conditions of transfer by assignment and license are governed by the contract of the each transfer.

6.7 Piracy and Remedy: The term piracy as used in the Act has the similar meaning of infringement. There is civil remedy for the violation of copyright of design, but no criminal procedure is availed for the proprietor for the piracy. In case of piracy of the design the owner of the design may file suit

Section 53 provides that during the existence of copyright in any design it shall be unlawful for any person-

to apply or cause to be applied to any article in any class of goods in which the design in registered or any fraudulent or obvious imitation thereof,

to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or

to publish or expose or cause to be published or exposed for sale to any article in any class of goods in which the design is registered or any fraudulent or any obvious imitation thereof.

Section 53 also specifies also the remedy recoverable by the aggrieved person succeed. If any person infringe any design, he shall be liable to pay five hundred taka for every contravention, which shall be recoverable as a contract debt.

(b) if the proprietor elects to bring suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:

Provided that the total sums recoverable in respect of any one design under clause (a) shall not exceed one thousand taka.” [16]

However, the remedy in case of piracy caused against the owner may sum up as follows –

An injunction;

Damages or compensation

Delivery up of the infringing article.

The Code of Civil Procedure will apply to such a suit regarding the procedural matters.

6.7 Groundless threat to legal proceeding: The provisions as applied in an action for groundless threat of legal proceeding for infringement of patent shall apply to an action for groundless threat of legal proceeding for infringement of design.