The Designs Laws

Sanjeev Kumar ChaswalSanjeev Kumar ChaswalIPR Attorney and advocate LLM (IPR and ARB)

MS Cyber Law and Cyber securityAdvocate & IP Attorney

High Court of Delhi

Article' under the Designs Act, 2000ßUnder the Designs Act, 2000 the "article" means any

article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately.

ßSet of article' under Designs Act 2000ß If a group of articles meets the following requirements

then that group of articles may be regarded as a set ofthen that group of articles may be regarded as a set ofarticles under the Designs Act, 2000: Ordinarily on saleor intended to be used together.

ßAll having common design even though articles aredifferent (same class).

ßSame general character. Generally, an article havingthe same design and sold in different sizes is notconsidered as a set of articles. Practical example: "Teaset", "Pen set", "Knife set" etc.

Industrial Design Rightsß Industrial design is the use of a combination of applied

art and applied science to improvethe aesthetics, ergonomics and usability of a product,but it may also be used to improve the product'smarketability and production. The role of an industrialdesigner is to create and execute design solutions forproblems of form, usability, physical ergonomics,marketing, brand development, and sales.marketing, brand development, and sales.

ßAn industrial design consists of the creation of a shape,configuration or composition of pattern or color, orcombination of pattern and color either can be two-dimensional (based on pattern, colors and lines) or inthree dimensional form (as per shape and surface)containing aesthetic value which is applied or used toproduce a product, industrial commodity orhandicrafts.

History of Industrial Design Rights

ßThe first use of the term "industrial design" is oftenattributed to the designer Joseph Claude Sinel in1919 (although he himself denied this ininterviews), but the discipline predates 1919 by atleast a decade. Christopher Dresser is consideredthe world's first Industrial Designer.

ß Industrial design's origins lie in the industrializationof consumer products. For instance the DeutscherWerkbund, founded in 1907 and a precursor tothe Bauhaus, was a state-sponsored effort tointegrate traditional crafts and industrial mass-production techniques, to put Germany on acompetitive footing with England and the UnitedStates.

ßThe earliest use of the term may have been in TheArt Union, A monthly Journal of the Fine Arts, 1839.

ß “Dyce’s report to the Board of Trade on foreignschools of Design for Manufactures. Mr Dyces officialvisit to France, Prussia and Bavaria for the purposeof examining the state of schools of design in thosecountries will be fresh in the recollection of ourreaders. His report on this subject was ordered to beprinted some few months since, on the motion of MrHume.”Hume.”

ß “The school of St Peter, at Lyons was founded about1750 for the instruction of draftsmen employed inpreparing patterns for the silk manufacture. It hasbeen much more successful than the Paris school andhaving been disorganized by the revolution, wasrestored by Napoleon and differently constituted,being then erected into an Academy of Fine Art: towhich the study of design for silk manufacture wasmerely attached as a subordinate branch.

ß It appears that all the students who entered theschool commence as if they were intended forartists in the higher sense of the word and are notexpected to decide as to whether they will devotethemselves to the Fine Arts or to Industrial Design,until they have completed their exercises indrawing and painting of the figure from the antiqueand from the living model.

It is for this reason, and from the fact that artistsß It is for this reason, and from the fact that artistsfor industrial purposes are both well paid and highlyconsidered (as being well instructed men) that somany individuals in France engage themselvesin both pursuits.”

ßThe practical draughtsman's book of industrialdesign: was printed in 1853

Essential requirements under the Designs Act, 2000

ßThe design should be new or original, not previouslypublished or used in any country before the date ofapplication for registration. The novelty may reside inthe application of a known shape or pattern to newSubject matter.

ßThe design should relate to features of shape,configuration, pattern or ornamentation applied orconfiguration, pattern or ornamentation applied orapplicable to an article.

ßThe designs of industrial plans, layouts andinstallations are not registerable under the Act.

ßThe design should be applied or applicable to anyarticle by any industrial process. Designs of artisticnature like painting, sculptures, which are notproduced in bulk by any industrial process areexcluded from registration under the Act.

ß

ßThis implies that the design must appear and shouldbe visible on the finished article, for which it is meant;Thus, any design in the inside arrangement of a box,money purse or almirah may not be considered forshowing such articles in the open state, as thosearticles are generally put in the market in the closedstate.

ßAny mode or principle of construction or operation orßAny mode or principle of construction or operation orany thing which is in substance a mere mechanicaldevice, would not be registerable design.

ßFor instance, a key having its novelty only in theshape of its corrugation or bend at the portionintended to engage with levers inside the lockassociated with, cannot be registered as a designunder the Act.

ßThe features of the design in the finished articleshould, appeal to and are judged, solely by the eye.

ßHowever, when any design suggests any mode or:principle of construction or mechanical or otheraction of a mechanism.

ßA suitable disclaimer in respect thereof is requiredßA suitable disclaimer in respect thereof is requiredto be inserted on its representation, provided thereare other registerable features in the design.

ßThe design should not include any Trade Mark orproperty mark or artistic works as defined under theCopyright Act, 1957.

Industrial Design RightsßCan industrial designs be protected?ß In most countries, an industrial design must be

registered in order to be protected under industrialdesign law. As a general rule, to be registerable, thedesign must be "new" or "original".

ßDifferent countries have varying definitions of suchterms, as well as variations in the registration processitself. Generally, "new" means that no identical orvery similar design is known to have existed before.

ß Once a design is registered, the term of protection isgenerally five years, with the possibility of furtherperiods of renewal up to, in most cases, 15 years.

ßDepending on the particular national law and the kindof design, an industrial design may also be protectedas a work of art under copyright law.

ß In some countries, industrial design and copyrightprotection can exist concurrently. In other countries,they are mutually exclusive: once the owner choosesone kind of protection, he can no longer invoke theother.other.

ßUnder certain circumstances an industrial design mayalso be protectable under unfair competition law,although the conditions of protection and the rightsand remedies ensured can be significantly different.

ßAn industrial design right is conferred afterconsidering factors like, novelty, originality andvisual appeal.

ßThe person who has an industrial design right hasthe exclusive right to make or sell any objects inwhich the design is applicable.

ßUnder the Hague Agreement Concerning IndustrialDesigns, a WIPO-administered treaty, a procedurefor an international registration exists. An applicantcan file for a single international deposit with WIPOor with the national office in a country party to thetreaty. The design will then be protected in as manymember countries of the treaty as desired

What is the grace period?

ßThe existence of a grace period and the correspondingrequirements can be provided by national or regionallaws applicable in some countries. If so, the law canallow the filing of an application for registration of anindustrial design after its disclosure, within a limitedtime period from the date of disclosure (generally sixmonths or a year).months or a year).

ßDuring the grace period, the product which constitutesthe industrial design or in relation to which theindustrial design is used could in particular becommercialized without destroying the novelty of theindustrial design and it could still be possible to file anapplication for registration in the country concernedbefore the expiry of the grace period.

What cannot be protected by industrial design rights?

ßDesigns that are generally barred from registrationin many territories include:

ßdesigns that do not meet the requirements ofnovelty, originality and/or individual character;

ßdesigns that are considered to be dictatedexclusively by the technical function of a product;exclusively by the technical function of a product;

ßsuch technical or functional design features may beprotected, depending on the facts of each case, byother IP rights (e.g. patents, utility models or tradesecrets);

ßdesigns incorporating protected official symbols oremblems (such as the national flag);

ßdesigns which are considered to be contrary topublic order or morality.

Rights conferred by industrial design protection?

ßWhen an industrial design is registered, the holderreceives the right to prevent unauthorized copyingor imitation by third parties.

ßThis includes the right to prevent all unauthorizedparties from making, selling or importing anyparties from making, selling or importing anyproduct in which the design is incorporated or towhich it is applied.

ßBecause industrial design rights are territorial innature, this right is limited to the territory for whichthe design is registered.

How to enforce your rights on infringement

ß In case of infringement, the holder of industrialdesign rights could, firstly, decide to send a “cease ordesist letter” to the alleged infringer, informing himof a possible conflict between his industrial designrights and the alleged infringing product and askinghim to cease said infringement.him to cease said infringement.

ß If the infringement persists, the holder of theindustrial design rights could decide to take allappropriate legal measures against the infringer, asprovided for by the applicable law and may seekassistance from a IPR lawyer, who would provideadvice on enforcement of industrial design rights andto settle any dispute.

Penalty for the piracy of a registered Design

ß If anyone contravenes the copyright in a design forthe every contravention he/she is liable to pay a sumnot exceeding Rs. 25,000/- to the registeredproprietor subject to a maximum of Rs. 50,000/-recoverable as contract debt in respect of any onedesign.

ßThe registered proprietor may bring a suit for therecovery of the damages for any such contraventionand for injunction against repetition of the same.

ßTotal sum recoverable shall not exceed Rs. 50,000/-as contract debt as stated in Section 22(2)(a). Thesuit for infringement, recovery of damage should notbe filed in any court below the court of District Judge.

Cancellation of Registration of a Design

ßThe registration of a design may be cancelled at anytime after the registration of the design, on apetition for cancellation in form 8, with a fee of Rs.1,500/- to the Controller of Designs, on the followinggrounds:

ßThat the design has been previously registered inIndia or

ßThat it has been published in India or elsewhereprior to the date of registration or

ßThe design is not new or original orßDesign is not registrable orß It is not a design under Clause (d) of Section 2.

Designs

ßA Fender Stratocaster with sunburst finish, one of the most widely recognized electric guitars in the world.

Model 1300 Volkswagen Beetle

Industrial Design Rights

ßThe right is conferred for a period of 5 year initiallyand further 5 years on renewal.

ßThe creation of a new design that can be used togive shape to a three-dimensional mass-producedarticle may possibly be registered under the Designsarticle may possibly be registered under the DesignsAct.

Registration process of Design

DESIGN AS A TRADEMARK

ßßSKBSKB vv.. HLLHLL

ßßTheThe “S”“S” shapeshape

ßßBothBoth designdesign rightsrights && trademarktrademark rightsrightswerewere claimedclaimed onon itit

ßßDesign registration was cancelled during Design registration was cancelled during proceedingsproceedings

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