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Industrial designs
Refers only to the ornamental or aesthetic aspects of a product, and is distinct from any technical or functional aspects. An industrial design consists of: - Three-dimensional features, such as the shape of a product, - Two-dimensional features, such as ornamentation, patterns, lines or colors of a product; or - A combination of one or more such features.
A three-dimensional design
A two-dimensional design
Consumer Products
Pharmaceutical Product
Computer-generated graphic symbols, screen displays, graphic user interfaces, web pages are also protected under industrial design.
Industrial designs
New and original designs are created to: 1. Customize products to appeal to specific market segments 2. Create a new niche market 3. Strengthen brands
Improves the competitiveness of a business and brings in additional revenue in following ways:
Why protect industrial designs? Registering a valuable design contributes to obtaining a fair return on investment (creating and marketing the relevant product) and improve your profits. ID designs are business assets that can increase the commercial value of a company and its products. A protected design may also be licensed (or sold) to others for a fee. Registration of industrial designs encourages fair competition and honest trade practices aesthetically attractive products.
To register an industrial design you must file an application at the national intellectual property (IP) office of the country where you are seeking protection.
Not be disclosed to public in any form Appeal to eye Not comprise of obscene matter Not be contrary to public order or morality
Requirements for Registration Novelty is judged solely by eye w.r.t. external appearance of the finished article. Design must have a visual appeal. Feature to be registered must appeal to the eye and be judged by the eye. Neither constructional details nor utility of article are relevant for registration Novelty may reside in its application to article Absolute novelty- i.e. Not publicly known or used in India or elsewhere. Strikingly different appearance
What cannot be protected by industrial design rights ? 1. Designs that do not meet the requirements of novelty, originality and/or individual character. 2. Designs that are considered to be dictated exclusively by the technical function of a product. 3. Designs incorporating protected official symbols or emblems. 4. Designs which are considered to be contrary to public order or morality.
NOT REGISTRABLE ARTICLES - Calendar, certificates, forms, greeting cards, leaflets, Maps, building plan, medals - Labels, tokens, stamps - Religious symbols - Building and construction or real estate - Flags, emblems, or signs of any country, computer icons - Layout designs of integrated circuits - Mere workshop alteration - Mere change in size - Any principle or mode of construction
Handicrafts
Some countries exclude handicrafts from design protection, as industrial design law in these countries requires that the product to which an industrial design is applied is an article of manufacture or that it can be replicated by industrial means.
Classifications pertaining to Fashion Industry : CLASS 2: Articles of clothing and haberdashery CLASS 3 :Travel goods, cases, parasols and personal belongings, not elsewhere specified. CLASS 5 :Textile piece-goods, artificial and natural sheet material CLASS 6 :Furnishing CLASS 10 :Clocks and watches CLASS 11: Articles of adornment. CLASS 26 :Lighting apparatus CLASS 28: Pharmaceutical and cosmetic products, toilet articles and apparatus CLASS 99 :Miscellaneous.
Registration of a design 1. Fill in the application form provided by your national IP office including your name, contact details and drawings, and/or photographs of the design.
Registration of a design 2. You may also be required to file a written description or statement of novelty of the industrial design. The description generally needs to be of the design and not of the product to which it has been applied. It should cover all the distinctive aesthetic features of the design and should describe which feature is most important.
Contd
REPRESENTATION SHEET
Name of the Applicant XYZ, PVT.LTD. Date :No. of sheet - 05 Sheet No.- 01
Side view
Signature of Applicant
34
Registration of a design 3. You will also be required to pay the appropriate filing fee. 4. You may choose to employ an IP agent to assist you in filing the application and completing the registration process. You will also have to file a document certifying the transfer of power to your representative.
Registration of a design
Some offices register the design only after undertaking a formal examination to ensure that administrative formalities have been complied with.
Others may conduct a substantive examination checking the existing designs on the register for novelty and/or originality.
Registration of a design Once a design is registered, it is entered into the design register, published in the official design gazette and a design registration certificate is issued. In some countries/regions, it may be possible to request deferment of publication in which case the design will be kept secret for a certain period specified by the relevant law.
The process of registration of an industrial design generally takes six to 12 months. The term of protection for a registered industrial design varies from country to country, but it is usually at least 10 years. An industrial design is valid in India for 10 + 5 years. Registration initially confers this right for 10 years from the date of registration. It is renewable for a further period of 5 years. If the fee for extension is not paid for the further period of registration within the period of initial registration, this right will cease.
Requirement of non-disclosure
Prior to application, one should be careful not to launch the design into the market The Design, prior to the filing of the application should be treated as confidential information
Grace period
In some countries, the legislation allows for a grace period for registration of generally six months or a year from the moment a design was made public, disclosed or published. This is the case when articles bearing the design are sold, displayed at a trade show, exhibition or fair, or are published in a catalogue, brochure or advertisement prior to filing an application.
During that period, you may market your design without it losing its novelty and you may still apply for registration.
Grace period
Under Designs Act, 2000 The application for registration is made within six months from the date of first exhibiting the design or article or publishing a description of the design.
Cost to protect an industrial design 1. Registration fees to be paid to the national or regional IP office. 2. Costs associated with the hiring of the services of an IP agent to assist you in the registration process. 3. Most countries require the payment of renewal fees, usually on a five-year basis, to maintain their exclusive rights over an industrial design. 4. Costs associated with the translation of the industrial design if it is to be protected abroad.
Registration of many different designs through a single application? The answer varies significantly from country to country. In many countries, you may apply for the registration of many designs (10, 20 or even 50 designs) through a single application as long as they all relate to the same product or class of products. In some countries, however, you may have to file a separate application for each design.
Many of these countries, while limiting an application to a single design, permit several variants of that design.
Variants would include, for example, two earrings, which differ in that one is a clipon and the other is for pierced ears.
To be considered variants, the designs must be applied to the same article and must not differ substantially from one another.
Some countries allow for an exception to the single design rule when all the designs relate to a set of articles.
A set, on the other hand, is defined as a number of articles of the same general character which are normally sold together, or intended to be used together, and which share some common design features. Examples include, cutlery (forks, spoons, knives) and household appliances (a hairdryer and its nozzles and brushes).
Intends to license the manufacture, sale or export of such products to other firms in foreign countries, it should consider protecting its designs in such countries in order to enjoy the same benefits of protection abroad as it enjoys in the domestic market.
2. The Regional Route: If you are interested in a group of countries that are members of regional agreements which enable the registration of designs, then you can consider filing a single application at the regional IP office concerned.
Enforcing Your Industrial Designs You are responsible for monitoring the use of your design in the marketplace, Identifying any imitators or counterfeiters and deciding whether, how and when to take action against them. Whenever there is an infringement, you may send a cease or desist letter informing the infringer of a possible conflict between his design and your exclusive rights. The assistance of a lawyer in drafting such a letter is recommended.
Enforcing Your Industrial Designs In order to prevent the importation of infringing goods, measures at the international border are available to the design owner in many countries through the national customs authorities.
Other Legal Instruments for Protecting Industrial Designs In some countries, the applicable law recognizes copyright protection for certain designs, for example, in the design of textile and fabrics. In many countries you may obtain cumulative protection, (i.e., copyright protection and industrial design protection) which can exist concurrently for the same design, while in a few countries, the two forms of protection are mutually exclusive.
Copyright does not subsist in design registered under the Designs Act.
Design capable of being registered, but which has not been so registered enjoys copyright protection. Copyright ceases as soon as article to which the design has been applied has been reproduced >50 times by an industrial process
Cases
Samsonite Vs. Vijay Sales 1998 PTC 372
Suitcases made by plaintiff copied by defendant The entire range was copied Claim was based on drawings & copyright No registered design No protection granted as it is manufactured industrially more than 50 times.
Industrial design
Under industrial design law the industrial design generally needs to be registered by the applicant before publication or public use anywhere, or at least in the country where protection is claimed.
Copyright
Copyright in works considered to be original subsists without formalities. While registration is not necessary for protection, copyright depositaries exist in some countries where you may deposit your design and obtain a certificate.
Industrial design protection generally lasts for a period that varies between 10 and 25 years depending on the country where protection is sought.
Copyright endures in most countries for the life of the author and 50 or 70 years after his death.
The right conferred by registration of an industrial design is an absolute right in the sense that there is infringement whether or not there has been deliberate copying.
To enforce rights under copyright law, the copyright owner must prove that the allegedly infringing work is a direct or indirect reproduction of the work protected by copyright.
What if your design combines functional improvements with aesthetic features? Many designers protect different aspects of their products with different intellectual property rights. Patents and utility models are for inventions that bring about functional improvements to a product and Industrial design protection is for the appearance of the product.
Precautions
Create and develop the concepts and specifications that optimize function, value and appearance of products.
Enormous amount of creativity and potential of Indian designers can be supported by Design rights. Do not wait till your design gets copied. Think of protecting design from the beginning which can have commercial value.
Precautions
Treat your design as confidential till you file an application. Clarify the ownership of the designs.
Maintain records at every stage of product development. Commercialize your design through license arrangements.
EXAMPLE Company A has successfully invented a new laptop with lots of additional features over the existing ones. They call it HAPPY and use a phrase Use it, enjoy it for marketing it. The rights under which they can seek protection: Patent Technology Copyright Plans & drawings Trademark slogans (Use it, enjoy it) Trademark HAPPY Industrial design overall look Trade secret production plans
The Suneet Verma controversy Lessons to be learnt o At the same time, if you need to use a design, do due diligence over its ownership give credit take a license if you do need to use it.
Cases
Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del) Case relating to design of upholstery Plaintiff claimed to have copyright in the artistic work applied to upholstery design Did not have a registered design however they claimed a copyright in the drawings
Cases
Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del)
Question was whether without a registered design, the plaintiff could protect the same and whether the copyright was lost because of more than 50 reproduction of the said upholstery fabric design
Cases
Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del)
The Court although upholding that the motives etc. of the plaintiff was artistic and also holding that the defendants had copied it, on a legal and technical argument that more than 50 reproduction had been made, refused to grant injunction
Dabur India Ltd. Vs. Rajesh Kumar & Ors 2008 (37) PTC 227
Suit filed alleging infringement of design in respect of a bottle which is being used by plaintiff for packing hair oil Court found plaintiffs bottle to be common bottle used by several other companies Bottles were held to be in use much prior to the registration of the design of the plaintiff No peculiar feature of the bottle registered as a design and the plaintiff had not pin pointed any novelty in the design of the bottle Held that for validly of the registered design there must be some novelty and originality in the design sought to be protected and it must have not been pre-published
Cases
1997(17) PTC 268: Baldev Singh vs. Shriram Footwear
Plaintiff claimed an injunction on the ground that his designs of shoe soles had distinctive shape and configuration During the course of argument, it was revealed that the plaintiff himself had copied designs from Bata India Ltd. Thus Court had held that the plaintiff himself being a pirater, no injunction can be granted in favour of the plaintiff
Hindustan Sanitaryware & Industries Ltd. vs. Dip Crafts Industries: 2003(26) PTC163 (Del)
Case under the Designs Act, 2000 Plaintiff had claimed that defendants copied the design Stylush, Corel and Ultra in respect of bath tubs Defendant had not established that he had been selling bath tubs prior to the registration obtained by plaintiff in respect of similar designs Plaintiff had a registered design Sufficient resemblance between the two designs and the plaintiffs design was protected