This article is written by Poonam Nahar who is pursuing a Diploma in Intellectual Property, Media & Entertainment Laws from LawSikho.
In today’s market, design play a very important role in the visual appearance of an article or a product as these days’ people get more attracted to the design or appearance of the product and tend to buy the best design which grabs their attention as the visual appearance of the product makes it more appealing, attractive, and distinct from others. Therefore, good designs are of great business as an enterprise generally invests its time and money to innovate, create and develop with new or original articles. So it’s important to protect the designs of various products in order to avoid infringement. Earlier this Act was governed by the Design Act, 1911. In order to bring the Design Act at par with the International law the enactment of the Design Act, 2000 took place. So, presently the design laws are regulated by the Design Act of 2000. This article is all about a form of Intellectual Property called ‘Industrial Designs’. In this article, we will learn about the concept of industrial designs with examples, its protection, benefits, duration of protection, requirements for protection with relevant case laws, registration and application procedures for designs, piracy of registered designs, and landmark judgments.
Concept of industrial designs
An industrial design relates to the “appearance of an article” i.e. how the product looks? and its design. It doesn’t protect its technical or functional features i.e. how a product works? Industrial designs are applied to a variety of products of industry and handicraft. An industrial design consists of two-dimensional figures such as lines, color, patterns of an article as well it consists of three-dimensional figures such as the shape of an article. For example, two-dimensional figures – the pattern of textile, three-dimensional figure – round tail of a bike. There are various examples of industrial designs such as luxury items such as jewelry, medical equipment such as oximeters, electrical appliances, furniture, housewares, architectural designs, textile designs, leisure items such as toys, graphical user interfaces such as navigation systems, etc.
Design Act, 2000
In India, under the Designs Act, 2000 and Designs Rules, 2001 as amended in 2008, the aesthetics of any product or an article are protected and registered. Design means the features of shapes, patterns, configurations, ornaments, or composition of lines or colors applied to any article whether in 2 dimensional or 3 dimensional or in both forms, by any means or industrial process, whether hand-operated, chemical, or mechanical, separate or combined, which is in the finished article address to and are attracted solely by the eye i.e. tangible in nature. However, Industrial designs do not protect the designs which are intangible in nature. The purpose of the Design Act is to protect the ‘appearance of an article, hence this act does not include any mode or method or principle of making or process of an article or a product. Thus, this Act provides protection and registration rights only to the designs that are aesthetic in nature, applied to articles, and not to the designs dictated by a functional feature.
Protection of industrial design
In most countries, in order to be protected under industrial design law, an industrial design is required to be registered as a ‘registered design’. In few countries, industrial designs are protected as ‘design patents’ under patent law. A kind of design, industrial designs may also be protected depending on the particular national law under copyright law as works of art. In principle, the owner of a registered industrial design or of a design patent has the right to prevent third parties from manufacturing, trading, or importing article bearings or integrating/embodying a design which is a copy, or considerably a copy of the protected design, when such acts are attempted for merchandising purposes. In order to get the statutory protection of Industrial Design, the Design has to be registered before the Design registry of the country (or region) where an application is filed.
Requirements for protection
In order to get protected, industrial designs;
- Must be new/ novelty
- Must be original
- Should not be disclosed anywhere to the public in India or in any other countries by any publication in palpable (tangible) form
- Should not be used prior to the date of filing or where the application for registration is applicable on the priority date.
- Significantly differs from known designs or combinations of known design features.
- Should not be conflicting with public order or morals or integrity.
- Not be prejudicial to the security of India.
- Design cannot include a trademark, property mark, or any artistic rights as defined under the Copyright Act, 1957.
- Should not contain any profane or scandalous matter.
Excluded from the scope of industrial design
- Any stamps, maps, books, calendars, documents or forms, certificates, patterns, cards, leaflets, medals, and many others which fall in artistic or literary works;
- Labels, tokens, cards, cartoons.
- Any principle or method of structure/construction of an article.
- Mere mechanical contrivance.
- Buildings and structures.
- Parts of articles not manufactured and sold separately.
- Variations commonly used in the trade.
- Mere workshop alterations of components of an assembly.
- A mere change in the size of the article.
- Flags, emblems, or signs of any country.
- Layout designs of integrated circuits.
Duration of protection
According to the TRIPS Agreement, the duration of protection is for at least 10 years. The term can be extended by filing an Application for extension along with the prescribed fee for an extra period of five years. In many countries, the duration is for a longer period i.e. 15-25 years as per National jurisdiction and the total duration is divided into successive renewable periods.
Benefits of protection of industrial design
Basically, a customer’s purchase choice, purchase decision, and opinion about a product is based on the product or article aesthetics, i.e. appearance such as patterns, shapes, looks, colors, combinations, etc. hence, industrial designs must be protected and registered in order to gain many benefits such as monetary gain, making a brand, etc. They also link a product with a particular quality standard based on the article’s appearance or product aesthetics. For an enterprise, the design of a product is an uncomplicated or the simplest way of differentiating one product from other competing products. Further, companies making imitation products usually copy the design of a product, to gain value in the market share. For business owners, a registration of an industrial design may be a valuable business asset. The success of a product is usually influenced by its appearance in an aesthetic-driven consumer base, the looks of a fashionable product can often be equally or more important than its functionality. Hence, it is important to protect the design from being duplicated. Obtaining exclusive rights to a product or an article with a particular appearance may result in a substantial return on the investment because it will allow you to prevent others from reproducing a popular design. Benefits of protection of designs are as follows;
- Is a revenue generator
- Protection of exclusive rights
- Return on investments
- Promotes brand value
- Facilitates marketing and commercialization
- Unique selling propositions
Does protecting industrial designs have other benefits?
Yes, it does have other benefits as it doesn’t only benefit the owner of industrial design but it does also get benefits from the industrial development of his products and the protection helps to ensure a fair return on investment. Industrial design protection rewards and encourages creativity and innovation to benefit the consumers and the public at large and thus leads to more attractive and diversified products.
Protecting industrial designs may benefit the manufacturing and industrial sector as well as it injects into creativity it contributes to the development and enlargement of commercial activities, and build-up the potential of exports of national products. So overall, industrial designs protection aids and benefits the owners, the consumers, and the economy of the nation. As the protection of industrial designs is relatively simple and inexpensive to develop. Hence they are rationally reachable to small and medium undertakings and even to the individual artists and craftsmen in both industrialized and developing countries.
Registration of industrial designs
Design enhances the aesthetic value of a product. Registration of a design confers on the owner’s copyright to use the design for the article for which it was registered. This, in effect, means that the owner has an exclusive right to use the design for the article under which it was registered. Any infringement of a registered design confers on the owner a right to sue the infringer for damages.
Designs are registered in different classes as per the Locarno Agreement. It is used to classify goods for the purposes of the registration of industrial designs which further helps in design searches. These classes are mainly function-oriented. Thus, registering a design is vital to protect the appearance of your product. An important point to note is that an article must have its existence independent of the design. This means that even if the design is not applied to the article, the article can continue to exist. Thus, stamps, labels, and the like cannot be considered as articles for the registration of designs. A list of national/regional IP offices can be viewed by means of this link.
Who can apply?
As per Section 5 of the Design Act, 2000 any person (firm, partnership, small entity and a body corporate) or the legal representative or the assignee can apply separately or jointly for the registration of a design. The registration is prima facie evidence of any matter to be entered therein. Upon request to the Controller with prescribed fees, any person can inspect the Register of designs.
Application procedure in India
Every application for registration of designs undergoes the Act and Rules as amended on a timely basis. Any person who desires to register a design is required to submit the following documents to the Design Wing of the Patent Office at “Intellectual Property Office”, CP-2, Sector V, Salt Lake, Kolkata, or any of the Branch Offices of the Patent Office at Delhi, Mumbai and Chennai. The applications received by the Branch Offices shall be transmitted to Patent Office, Kolkata for processing and prosecution. The applications are examined in the order in which the application is filed under Section 5 and 44 of the Design Act, 2000.
A list of the steps involved to register a Design is as follows;
- The application should be duly filed in prescribed Form (Form – 1) with the prescribed fees, and details such as full name, address, nationality, article name, address of service, class number along with 4 copies of the representation of the Design of an article on durable paper of size 210 mm x 296.9 mm with a suitable margin. The photographs, drawings, computer graphics should clearly depict the features of the design from different views.
- The applicant or his authorized agent shall sign the application. For small enterprises, Form-24 and documentary evidence has to be submitted along with Form-1.
- In respect of a trademark, mechanical actions, letters, numerical work a statement of new (novelty) and disclaimer (if any) shall be endorsed on a representation sheet which should be duly signed and dated.
- If there are any objections or defects noticed during the examination of the Application, they are communicated to the Applicant or to his/her Agent at the address for service. Such defects must be rectified within 6 months from the date of application and that can be extended on a request up to 3 months further on a request made with a fee prescribed.
- If the defects are not rectified as required by the Controller, a hearing will be provided to the applicant. After the hearing controller has the right to decide whether the application should be accepted or rejected. The controller’s decision will be communicated to the applicant or his agent in writing stating the reasons for such decision.
- If in case, an applicant is not satisfied by the controller’s decision then he may appeal to the High Court and such appeal should be made within 3 months from the date of the decision of the controller.
- If in case, the application has been neglected by the applicant and has not been completed the procedure for removal of objection or defects within the time stipulated then such application gets abandoned. Further, An application gets accepted after all the defects or objections have been rectified. Then, the application gets notified in the Patent Office journal.
Documents required to register Industrial designs
The following documents/forms are required to be submitted in order to apply for registration of a design:
- Application Form 1
- Power of Attorney
- Representation sheets are an important document required to be filed along with the application for registration which includes different aspects, views of the article clearly showing the new and original design. The representation sheets can include photographs, computer graphics, diagrams, drawings, or specimens of the design.
- Details of article classes for which design protection is needed
- Applicant details like full name, permanent address, nationality, name of the article, address for service India
- A Certified copy of the priority document (if priority is claimed from a foreign application)
- There may be additional documents required on a case-to-case basis.
- Class and subclass of goods for which registration is sought according to the Locarno Classification.
- Payment of filing fee.
Piracy of registered designs
As per the Designs Act, 2000, Section 22 deals with the piracy of registered designs. According to this section, any obvious or fraudulent imitation of a design that is already registered without the consent of its proprietor is unlawful. It also prohibits the import of any material which closely resembles a registered design. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.
This section also provides that in case if a civil suit is brought against any piracy of a design, then the compensation shall not exceed Rs. 50,000 for the infringement of one registered design. The compensation is statutorily fixed so it serves as a good ground for an interim injunction even before the trial commencement.
Judgment date: 24th January 2019.
Facts: In this case, Crocs filed a suit against Bata for infringement of its registered sandal designs and passing off its trademarks in the shape and configuration of its footwear. As the design registration was a prima facie liability to be canceled based on prior publication and new, the Division Bench of the Delhi High Court did not interfere with the single judge’s order denying the interim injunction to Crocs. Before filing the date of the design application, the designs were issued on the Crocs website.
Judgments: The court held that based on the previous publication the validity of design registration was questionable. It further added that the designs claimed was only modifications of pre-existing designs, the court stated that the novelty or originality of the designs was also questionable. In this case, The Delhi High Court also sustained the grant of legal costs to the defendants. Furthermore, the Court ordered the single judge to hear the passing of cases along with registered design cases as they were based on the same cause of action.
Judgment date: 23rd March 2016
Facts: In this case, Plaintiff is a famous boutique apparel designer brand in India. The defendant is also a famous designer and manufacturer in India.
Plaintiff has filed the suit for seeking an injunction against the defendant from reproducing, printing, publishing, selling or offering, etc. of prints or garments which are a duplication of the Plaintiff’s work.
Arguments: Defendant argued that under the Design Act, 2000 the designs of the plaintiff have not been registered. Defendant further added that by an industrial process, the plaintiff’s designs have been reproduced more than fifty times. Hence, there wouldn’t be any infringement of copyright. Therefore, Plaintiff claimed to be the first owner of the designs manufactured and also claimed the trade secrets violation by ex-employees.
According to Section 15 (2) of the Copyright Act, 1957 as there was no registration and the design has been reproduced more than fifty (50) times by an industrial process, the plaintiff’s designs cease to exist.
The court stated that there was no copyright infringement on the part of the defendant as the designs of the plaintiff were not registered under the Design Act, 2000. Therefore, this judgment proves that registration of Designs is necessary in order to protect your design from duplication of work. Hence, the owner of a design loses all the benefits and rights relating to the designs of an article.
In India, industrial designs are protected by Design Act 2000. Designs are usually one of the marketing techniques used by successful entrepreneurs to seek recognition and for the popularity of the brand. The design of the product has a huge impact on customers which makes the people identify the brand name associated with it. Industrial design has to fulfill mainly two requisites – originality and novelty, which enables the applicant to exclusively use the registered industrial design. By protecting his/her industrial design, the creator is granted an exclusive right against the unauthorized copying or imitation of his/her designs by third parties for a period of time. There are various benefits in relation to Industrial designs hence it gives protection to small and medium scale businesses. Thus for effective implementation and to secure the object of the act it is very important that adequate awareness should be spread to all people to register their design for enhancing their brand name and protection from piracy.
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