Presentation on Industrial Design

What is an industrial DesignIt is a new or original idea in relation to the features of shape, configuration, pattern, ornament, composition of lines or colours or combination thereof applied to any article by an industrial process

The industrial design registration helps in safeguarding the ornamental or aesthetic elements of the article.

Industrial design refers only to the ornamental or aesthetic aspects of a product. In other words, it refers only to the appearance of the product

As a general rule, an industrial design consists of:three-dimensional features, such as the shape of a product,two-dimensional features, such as ornamentation, patterns, lines or color of a product; ora combination of one or more such features.

It signifies something solid (in three dimensions) where an idea is incorporated into the article

Example shape of the bottleShape and configuration

It relates to something two dimensional Example- engraving on metal or like ornamentation on carpet by various geometric figures in combination of color etc.

Mere painting of natural scenes or like on plain paper- is not an industrial design Pattern, Ornament

Designs are used in different products and across the various industries like medical, handicrafts, jewelry, electrical appliances etc.

Need for protectionAn industrial design adds value to a product. It makes a product attractive and appealing to customers, and may even be its unique selling point. So protecting valuable designs should be a crucial part of the business strategy of any designer or manufacturer.By protecting an industrial design through its registration at the national or regional intellectual property office, the owner obtains the exclusive right to prevent its unauthorized copying or imitation by others. This makes business sense as it improves the competitiveness of a business and often brings in additional revenue in one or more of the following ways:

By registering a design you are able to prevent it from being copied and imitated by competitors, and thereby strengthen your competitive position.

Registering a valuable design contributes to obtaining a fair return on investment made in creating and marketing the relevant product, and thereby improves your profits.

Industrial designs are business assets that can increase the commercial value of a company and its products. The more successful a design, the higher is its value to the company.

A protected design may also be licensed (or sold) to others for a fee. By licensing it, you may be able to enter markets that you are otherwise unable to serve.

Registration of industrial designs encourages fair competition and honest trade practices, which, in turn, promote the production of a diverse range of aesthetically attractive products.

A Design should:Be New or OriginalBe Distinguishable from known designsBe applied to an article Not be disclosed to public in any formAppeal to eyeNot be contrary to public order or moralityRequirements for Registration

Sec 2(a) Article:Means any article of manufacture and any substance, artificial or partly artificial and partly natural and includes any part of article capable of being made and sold separatelyThe Designs Act, 2000 - Definitions

Novelty is judged solely by eye w.r.t. external appearance of the finished articleNeither constructional details nor utility of article are relevant for registrationNovelty may reside in its application to articleAbsolute novelty- i.e. Not publicly known or used in India or elsewhere.New or Original

In relation to design means:

originating from the author of such design and includes the cases which though old in themselves yet are new in their application [sec 2(g)]Original

What rights are provided by industrial design protection?When an industrial design is protected by registration, the owner is granted The right to prevent unauthorized copying or imitation by third parties. This includes the right to exclude all others from making, offering, importing, exporting or selling any product in which the design is incorporated or to which it is applied. The law and practice of a relevant country or region determine the actual scope of protection of the registered design.

Scope of definition of terms Article & Design enlarged

Addition of definition of the term Original

Introduction of delegation of powers to Examiners & other Officers by Controller

Codification of non- registerable Designs

Substitution of classification system (Locarno classification it consists of an international classification for industrial designs. )Designs Act, 2000 - Salient Features

Removal of secrecy period of two years for a registered Design

Public inspection available after notification

Rights of Registered Proprietor defined

Provision of Restoration of Lapsed Design

Electronic Register of DesignDesigns Act, 2000 - Salient Features

Initial term of protection for 10 years, extendable by 5 years on request

Provision for preferring Appeal on the Controllers order before High Court

Substitution of Applicants before registration of design

Additional grounds for Cancellation of designDesigns Act, 2000 - Salient Features

Registration of assignments/transfer of right made mandatory Penalty for piracy of registered design enhanced

Designs Act, 2000 - Salient Features

When design to applied to the inner portion of the article not visible or noticeable in finished article.Principle or mode of construction of the articleSole functional featuresPart of an article not sold separatelyVariation commonly used in tradeStamps, Labels, Tokens, Medals, Trade Marks , Property Marks, Cards, Cartoons.Mere change in size.Designs contrary to public order or morality or scandalousComputer chip, Integrated circuit designsWhat are not Registrable

Calendar, certificates, forms, greeting cards, leaflets, maps, building plan, medalsMere mechanical devicesBasic shape, variations commonly used in the tradeMere workshop alterationFlags, emblems, or signs of any country, computer icons The following articles are not registrable

Applicant :Applicant means any individual or legal entity.Application :One application in prescribed form for one design in one class with prescribed fee.Representation: Four sets of Representation with the different views of the article for clear understanding the nature of article. Declaration :- Statement of novelty and disclaimers. Power of Attorney : (If required). Filing Requirements

KOLKATAH.O.Receiving & ExaminationReceiving CenterReceiving CenterReceiving CenterDelhiMumbaiChennaiFiling of Design Application

Application form 1 with requisite fee of Rs. 1,000/-

Four sets of Representation sheets in durable paper of A4 size, pasted with the photographs/drawings of the article from different angles.

Power of attorney (if required)

Priority document (for convention Appln.)Particulars required for application

Contd

Registration abroadIndustrial design protection is territorial. Thismeans that industrial design protection is generallylimited to the country or region where you haveregistered your design.

It is important to bear in mind that you usuallyhave six months from the date on which youapplied for protection in the first country to claimthe right of priority when you apply for designprotection in other countries. Once this periodhas lapsed, you will be unable to apply for designprotection in foreign countries, as your design willno longer be considered new.

The National Route: Companies may seek protection by applying separately to the national IP offices of each country in which they intend to obtain protection. The process can be rather cumbersome and expensive as translation into the national languages is generally required as well as payment of administrative (and sometimes legal) fees.

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 in more than one country, then you can consider filing a single application at the regional IP office concerned.

3. The International Route: Companies that wish to register their designs internationally in several countries may also use the procedures offered by the Hague Agreement Concerning the International Deposit of Industrial Designs, a WIPO-administered treaty

Contd. from previous slide

Indian Cases

Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 Before Honble Delhi High CourtCases

Allegation that the Defendants garments were copies of the garments designed and crafted by the Plaintiff

The said garments were supposed to be developed, designed and crafted by the plaintiff as a part of their collection for the year 2006

The Honble Delhi High Court vide order dated 21.10.2008 granted ex-parte ad-interim injunctionTahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 Before Honble Delhi High CourtCases

Defendant served notice.

Application for vacation of stay moved claiming that both designs are separate.

The impugned prints are generic Jamawar Prints

Matter is sub-judice Referred to Mediation

Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 Before Honble Delhi High CourtCases

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

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 injunctionMicrofibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del)Cases

Case under the Designs Act, 2000Plaintiff 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 Hindustan Sanitaryware & Industries Ltd. vs. Dip Crafts Industries: 2003(26) PTC163 (Del)Cases

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 plaintiff1997(17) PTC 268: Baldev Singh vs. Shriram FootwearCases

Suit filed for the infringement as well as passing off of design in Toy ScooterThe defendant pleaded the prior publication of the designAnother defense taken by the defendant was that the defendant too was having the registration of the designCourt held that there were various dissimilarities in the prior published designThe design of the defendant was identical to the design of the plaintiffHence the defendant is not protected even on account of the registration having been obtained by it which admittedly is the subsequent registrationVikas Jain Vs. Aftab Ahmad And Ors, 2008 (37) PTC 288 (Del)Cases

Suitcases made by plaintiff copied by defendantThe entire range was copiedClaim was based on drawings & copyrightNo registered designNo protection granted as it is manufactured industrially more than 50 times.Samsonite Vs. Vijay Sales 1998 PTC 372Cases

Thank you

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