How to satisfy the ‘novelty’ condition while registering a design?

What are designs?

Designs are the visual features of objects, something that is solely perceived by the eye. It could be the shape, color, arrangement of lines, surface patterns, or any combination thereof. In India, Designs are protected under the Designs Act, 2000.

Designs, as defined under this Act, must have the following attributes:

• It should exclusively be a visual feature, whether 2D or 3D;
• Must be produced by an industrial process such as manual, mechanical, chemical, or any combination of these;
• Not a mere mechanical device.

Why register a design?

The cognitive efforts and the creativity involved in making a design have some value in the eyes of the law. Registration of these designs, apart from recognizing the value, also provides the proprietor copyright over the design. This in turn, establishes an exclusive legal right over the use of the design for commercial purposes as well as the right to legal remedy in the event of copying or imitation. Registration also makes the design an asset that can be monetized by the creator.

Conditions for registration of a design

Registration of a design is easier said than done. The Controller of designs is required by the Act to assess applications for registration on 3 criteria. These are:

• Novelty or originality
• Never published in any country before
• Not contrary to morality or public order

Demonstration of Novelty

The foremost criteria that the controller is going to look at, before registering your application, is a novelty. If not treated carefully, this could also become the basis for the rejection of your application. Here, it is necessary to demonstrate the true new and original nature of the design. This could be done by comparing it with the other contemporary designs available in the market and establishing a point of difference. This point of difference must not be so trivial, as to be overlooked in plain sight. A person looking at the design must be able to identify the difference, even without a close side-by-side comparison. Once, this is established the difference or the newness must be described comprehensively in the description. This includes a close description of each of the elements that cause the novelty.

Now, even if you are successful in the registration of your design without any objections, a lack of novelty could become a ground for the cancellation of your registration. This may happen if another person proves that there was no novelty involved in your design. In practice, this can be done by showing the prior existence of the same design in the market or production chains. Thus, an extensive market search is essential before protection is sought under the Designs Act.

The Case of Relaxo v. Aqualite

In the case of Relaxo Footwears Limited vs Aqualite Industries Pvt Limited, Relaxo brought a suit seeking an ex parte injunction against Aqualite claiming an imitation of the design of its products. The Delhi High Court observed that mere registration does not entitle the registrant to claim ex parte protection. The defense of lack of novelty or existence of prior art would always be available to the defendant. Aqualite had also applied a similar design as the one it was trying to invalidate on the grounds of it being unoriginal. The test of similarity applied by the court was to judge both designs solely by the eye and see if the essential features present in the two designs are similar. An order of interim injunction was made as there was a prima facie case of the plaintiff and the balance of convenience lied in their favour.

Conclusion

Thus, novelty is an essential requirement for designs, not only for the purpose of registration, but also for retaining the protection, thus granted. As a proprietor, one should pay close attention to this in order to avoid legal implications.