Patent and Design Act in Bangladesh

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Short history of Patent and Design Act

The Designs Act of 1911 was passed by the then British Government of India and since then extensive amendments have been made in the Designs Act.

In the meanwhile India has made tremendous progress in the field of science and technology. There has been considerable increase in the registration of designs.

To provide more effective protection to registered designs and to promote design activity it has become necessary to make the legal system of providing protection to industrial designs in a more efficient manner.

It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs.

To achieve these objectives and in order to repeal the Designs Act, 1911 which has been extensively amended, the Designs Bill was introduced in the Parliament and the Designs Act of 2000 was passed.  

According to this act It extends to the whole of Bangladesh and forced on the first day of January, 1912. The Patent and Design act last amended in 2003.

Main Objective of patent and design act

In the Indian Sub-continent, the Patents and Designs Act was enacted in 1911 mainly on the basis of the principles laid down in the Statute of Monopolies, Patents, Design and Trade Marks Act, 1883 and Patents and Designs Act, 1907.

The Patents and Designs Act, 1911, is the main law in force in Bangladesh on patents and designs.

Since enactment of the law, the concepts of patents and designs have undergone enormous development through decisions of courts around the world.

The law covers subjects of copyright, enforcement of intellectual property rights, industrial designs, intellectual property regulatory body and patents (inventions).

Patent and design act at a Glance

The Act was enacted with the purpose of protecting an invention and design. It has 79 Sections in total and divided into 3 parts.

Part one deals with the detail of the patent. Part two deals with the `datail design. Part three deals with the detail general provisions.

It is to be noted here that the  laws regulating patent have become out of date to cope with the existing complex dimension all over the world.

This Act urgently needs to be modified to cope with the present situation.

Protection of patent of Bangladesh

The patent is a document issued upon application, by the Department of Patents and Designs acting under the Ministry of Industry of Bangladesh.

The Government has a prerogative right to grant letters of patent under section 79 of the same Act.

The Price of the grant of monopoly is the disclosure of the invention at the patent office, which after expiry of the fixed period of monopoly, passes into the public domain.

An application for patent may be any person, whether alone or jointly with another person.

An application for the registration of a patent shall be filed to the Patents and Designs Wing of the Department of Patent, Design and Trademark as established under section 55 of the part III of this Act.

For the purposes of this Act and Trade Marks Act, 1940 (V of 1940), there shall be established a department  called the Department of Patents, Designs and Trade Marks.

The Head office of the Department of Patents, Designs and Trade Marks shall be In Dhaka; and there may be established branch office or offices at such other place or places as the government may determine.

Analysis of the Case study Cases relating to Designs Act, 1911

A) Ampro food products v. Ashok Biscuit Works (AIR 1973 AP 17)

In the above case, the appellants and the respondents manufactured biscuits.

The appellant’s biscuits have embossed on them a certain design in the center of which appear the letters ” AF”. The design is registered under the Design act, 1911.

The respondent’s biscuits also have embossed on them an identical design except that the letters ” AB” appears instead of the letters “AF”.

The appellants filed a suit for injunction claiming that the respondent had committed piracy of design. Pending disposal of the suit, they sought a temporary injunction.

The learned additional Judge of the City Civil court refused the temporary injunction on two grounds; (1) the appellant’s design, though registered was not a new and original design since the affidavit filed on behalf of the respondent showed that they had been using the same design even before it was registered by the appellant.

Under the Designs Act 1911, a design is required to be a new or original design not previously published in India in order that it may be registered.

The design gave no right to the appellant to use it as a trade mark. The respondent’s application for the registration of a trade mark was pending before the Registrar of Trade marks and was likely to be granted.

The grounds on which the respondent may seek a petition for the cancellation of registration of the design are as follows

(1) The design has been previously registered in India.

(Ii) It has been published in India prior to the date of Registration

(iii) The Design is not a new or original design.

The court held that, for an injunction based on registered design , the defence that the appellant’s design was not new or original was not open to the respondent since he had not taken any steps for the cancellation of the registration of the design.

The court issued temporary injunction restraining the respondents from using the appellants registered design and from selling biscuits bearing that design.

B) Texla Metals & Plastics Pvt. Ltd. v. Anil K. Bhasin ( 2001 PTC 146, Del)

In the above case the Plaintiff has obtained a registration of a design of a bollard with effect from 21st September, 1988. A bollard is a road safety marker.

The design of the Plaintiff consists of a rhombus with nine reflectors inside it. Below the rhombus are the words ‘DARK EYE’. Below these words is a circular disk with an arrow pointing towards the road and below the circular disk is a pole.

The Plaintiff also claims to have obtained registration of the design of a delineator with effect from 21st September, 1988. A delineator is also a road safety marker and consists of a circular reflector on a pole.

The circular reflector is covered by a cage to protect it from damage or theft.

The Defendant is also into manufacturing bollards and in the above case the bollard of the Defendant also consists of nine reflectors in a rhombus.

This rhombus is placed upon a pole. In other words, the difference between a bollard of the Plaintiff and the Defendant is that in the case of the Defendant the words ‘DARK EYE’ and the circular disk with an arrow are missing.

The defendant is also into manufacturing delineators. The Plaintiff claim is that the Defendant is infringing the designs of the Plaintiff and, therefore, an injunction should be granted restraining the Defendant from manufacturing bollards and delineators which infringe the design of bollards and delineators designed by Plaintiff.

According to the Defendant, these items are of common use as road safety markers in Korea and Japan.

Section 43 of the Designs Act, 1911 has provision for the making of an application by any person claiming to be the proprietor of any new or original design not previously published in India.

A design when so registered will be effective from the date of the application for registration.

Section 51-A of the Designs Act, 1911 provides for the cancellation of a registration already granted.

The registration of a design may be cancelled if the design has been previously registered in India or it has been published in India prior to its registration or if the design is not a new or an original design.

The contention put forth by the Defendant is that both the designs have been published in India prior to the date of the application of the Plaintiff and the design is not a new or an original design.

The court held that the concept of a new or an original type of design is relatable to the publication of such a design or its availability to the public in India.

The court further held that if the contention that the defendant has received brochures from Malaysia, Korea and Japan with regard to such goods, the mere receipt of such brochures would not amount to publication of such designs within India.

Hence in the above case an injunction was granted.

C) Taparia Tools Limited v. Ambica Overseas and Anr

In the above case, the plaintiffs have filed a suit claiming perpetual injunction restraining the defendants from applying or causing to be applied in relation to wrenches and pliers or any other goods contained in class 01 of the Designs Act 1911( now repealed and substituted by the designs act 2000) which is identical or deceptively similar to or a fraudulent imitation of the plaintiffs registered designs.

In March 1994, the plaintiff conceived a novel design of an adjustable Wrench.

With a view to protect the unique design and novelty of this product, an application was made for registration of the same on or about 28th March 1994 and registration was accepted.

In1998 the plaintiff conceived and developed a Plier with a unique design. With a view to protect this design, the plaintiff made an application on 5th January 1999 and that application was accepted.

Hence by virtue of these registration certificates, the plaintiff acquired status as registered proprietor of the copyright in the said designs.

In May 2003 the plaintiff learnt that first defendant was manufacturing and selling, through defendant No. 2, in Mumbai, adjustable Wrench which was a fraudulent and obvious imitation of the plaintiff’s registered design.

Thus, the first defendant had committed and continues to commit infringement and piracy of the plaintiff’s registered designs.

D) Rotela Auto Components (P) Ltd. & Anr. v. Jaspal Singh & Ors. (2002 {24} PTC 449 Del)

In the above case it was held that Design was a conception, suggestion or an idea of a shape and not an article.

If it has already been anticipated, it is not new or original. If it has been pre-published, it cannot claim protection as publication before registration defeats the proprietors rights to protect under the Designs Act, 2000.

Unless the design is new and original, registration cannot be effective. In the present case since the design has been pre-published, it cannot claim protection.

The registration of the design is of recent date , but since the design has been published earlier, the ground of defence mentioned in section 19 of the designs act 2000 can be taken by the defendants, pursuant to sub-section (3) of section 22 of the act.

Therefore no injunction can be granted as there is a serious dispute as to the validity of the design to be tried in the suit. The injunction order granted earlier has also been vacated.

Changes made in the Designs Act 2000 compared to the Designs Act, 1911

From the above case studies, and from the criteria on which the judgment has been passed in each case, the difference between the Act of 1911 and the Act of 2000 can be brought forward.

The main aim of passing the Designs Act of 2000 was to cope up with the increase in the registration of designs and to encourage the progress in industrial growth.

As can be seen from ‘ Rotela Auto Components (P) Ltd v. Jaspal Singh case, the act helps to prevent the pinning down of competitors which would block technological growth.

In Glaxo Smithkline Consumer Healthcare Gmbh and Co. Kg v. Amigo Brushes Private Limited and Anr, under section 2 of the Designs Act,2000 which defines ‘Designs’ the court has held that, a mere functional component with no appeal to the eye cannot be registered.

A design should be capable of being applied to article so that it shows to eye, a particular shape, configuration, pattern or ornament. Whereas under section 2(5) of the Act of 1911, a design is defined as features of shape, configuration, pattern, ornament applied to any article by any industrial process and in the finished article appeal to and are judged solely by the eye, but does not include any mechanical device.

Ref:

1. http://www.legalserviceindia.com/article/l269-Designs-Act-1911-&-the-Designs-Act-2000.html

2. http://www.lawcommissionbangladesh.org/reports/64.pdf

3. https://en.wikipedia.org/wiki/Industrial_design

4. A handbook on Laws of Intellectual Property By Sayeed Raas Maswod & Khirul Islam Taj, Page:48

5. Bishawnath Prasad Radhey Shyam Vs. Hindustan Metal Industries, (1979), 2

6. Section 3 (1) of the Patents and Design Act, 1911.

7. Section 55 (2) of the Patents and Designs Act, 1911.

8. Section 55 (4) of the PAtents and Design Act, 1911.

9. Intellectual Property Rights and the Law b y Dr. G.B Reddy

10. Law relating to Patents, Trademarks, Copyrights and Designs by B.L. Wadehra

11. Intellectual Property Law in India by Justice P.S.Narayan

12. Intellectual Property Rights Laws by Dr.Ashok Soni

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Shipta Baruahttps://legalhome.org
Shipta Barua has been Completed LL.B(Hon's) from Cox's Bazar International University and completed LL.M on Human Rights at Southern University. Writing and discussion about the critical and important topics of law in his choice. For primary Legal support and enrich to the general people legal knowledge he working in the Legal Home.
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