Industrial Designs, Layout-Designs and Trade Secrets

1. Industrial designs: concept

Section 2(d) of the Designs Act, 2000 defines a design as only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, in two or three dimensions, by any industrial process or means, which in the finished article appeal to and are judged solely by the eye. It excludes any mode or principle of construction or anything that is in substance a mere mechanical device, trade marks, property marks and artistic works under the Copyright Act. Design law therefore protects appearance, not function; function belongs to patents. TRIPS Article 25 requires protection of independently created designs that are new or original, and Article 26 requires at least ten years.

2. Registration and rights

• Registrable design (section 4): it must be new or original, not previously published in India or any other country, significantly distinguishable from known designs or their combinations, and not contain scandalous or obscene matter.
• Term: ten years from registration, extendable once by five years (section 11).
• Right: copyright in the design, the exclusive right to apply it to the article in the class registered.
• Piracy (section 22): applying the design or an obvious or fraudulent imitation without consent, or importing or selling such articles. The remedy is a sum payable to the proprietor recoverable as a contract debt, capped by statute, or damages and injunction in a suit. There is no criminal liability.
• Cancellation (section 19) on grounds of prior registration, prior publication, lack of novelty, or not being a design. Petitions lie before the Controller with appeal to the High Court.

In Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., 2008 INSC 565, (2008) 10 SCC 657, a design for patterned glass sheets was challenged on the ground of prior publication abroad. The Supreme Court upheld the registration. It explained that the purpose of design law is to protect the novel shape or pattern as it appeals to the eye, and that a challenger relying on prior publication must show that the same design was clearly disclosed as applied to an article, not merely that a similar idea existed.

3. The design-copyright overlap

An artistic drawing that is used to make industrial products could otherwise get copyright for the artist’s life plus sixty years, much longer than design protection. Section 15 of the Copyright Act prevents this: copyright in a design registered under the Designs Act ceases, and copyright in a design capable of registration but not registered ceases once the article has been reproduced more than fifty times by an industrial process. The Delhi High Court in Microfibres Inc. v. Girdhar & Co. (Division Bench, 2009) held that artistic works used as designs for upholstery fabric lost copyright protection once industrially applied. Passing off remains available where the shape functions as a trade mark (Carlsberg Breweries v. Som Distilleries, Delhi High Court, Full Bench, 2018).

4. Comparative and international

• EU: the registered Community design (up to twenty-five years in five-year terms) and the unregistered Community design (three years from disclosure, protecting against copying), the latter useful for fashion. The EU revised its design law in 2024.
• United States: design patents for new, original and ornamental designs, examined and granted for fifteen years. Apple v. Samsung (US Supreme Court, 2016) held that damages may be based on the infringing component rather than the whole phone.
• Hague Agreement (1925; Geneva Act 1999): a single international application for designs in member states. India is not a member.
• Locarno Classification for designs, and the Riyadh Design Law Treaty (2024) on formalities.

5. Layout-designs of integrated circuits

A semiconductor chip carries a three-dimensional arrangement of transistors and connections expensive to design and cheap to copy by photographing the layers. Patent law does not suit it (the layout is rarely inventive) and copyright fits poorly. The United States enacted the Semiconductor Chip Protection Act in 1984. WIPO’s Washington Treaty on Intellectual Property in Respect of Integrated Circuits (1989) never came into force, but TRIPS Articles 35 to 38 incorporate most of it and add a ten-year minimum term. India’s Semiconductor Integrated Circuits Layout-Design Act, 2000 protects original, distinctive layout-designs that are capable of distinguishing from other layout-designs, for ten years, with a reverse-engineering exception for analysis and teaching. The registry has seen very few applications. Section 3(o) of the Patents Act excludes the topography of integrated circuits from patents.

6. Trade secrets and confidential information

A trade secret is commercially valuable information (formulae, processes, customer lists, source code, business plans) kept secret by reasonable steps. Unlike patents, there is no disclosure, no registration and no fixed term, but there is also no protection against independent discovery or reverse engineering.

• TRIPS Article 39: members must protect undisclosed information that is secret, has commercial value because it is secret, and has been subject to reasonable steps to keep it secret, against acquisition, disclosure or use contrary to honest commercial practices. Article 39(3) protects test data submitted for marketing approval of pharmaceuticals and agrochemicals against unfair commercial use. Whether this requires data exclusivity is contested; India reads it as not requiring exclusivity.
• Common law: Saltman Engineering v. Campbell Engineering (Court of Appeal, 1948) and Coco v. A.N. Clark (Engineers) Ltd. (1969), which set the three elements: information with the necessary quality of confidence, imparted in circumstances importing an obligation of confidence, and unauthorised use to the detriment of the confider.
• India: no statute. Protection comes from contract (non-disclosure agreements), equity and the common law of confidence. Section 27 of the Indian Contract Act, 1872 makes post-employment non-compete covenants void, but courts enforce confidentiality obligations that survive employment. The Delhi High Court in American Express Bank Ltd. v. Priya Puri (2006) refused to restrain an ex-employee from working for a competitor, while recognising that genuine trade secrets can be protected.
• Comparative statutes: the US Defend Trade Secrets Act, 2016, which created a federal civil action; the EU Trade Secrets Directive (2016/943).

How this is examined

“Explain the concept of design and the rights of a registered proprietor,” “Design and copyright overlap,” or “Protection of trade secrets in India.” For designs give the definition, registrability, term, piracy and Bharat Glass Tube, then section 15 of the Copyright Act. For trade secrets give TRIPS Article 39, the Coco elements, the Indian contract and equity position, and the 2024 Law Commission proposal.