industrial design 2009-11

7/30/2019 Industrial Design 2009-11

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THE POWER OF

INDUSTRIAL DESIGNS

IN THE TEXTILE & APPARELS SECTOR

Dr. Nilanjana Bairagi , NIFT Delhi

&Jyotsna Balakrishnan

Anand & Anand, New Delhi


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DESIGN RIGHTS HAVE ANIMPORTANT ROLE TO PLAY IN THE

FASHION INDUSTRY

The important purpose of design

Registration is to see that the artisan,creator, originator of a design having

aesthetic look is not deprived of his

bonafide reward by others applying it to

their goods.


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POSSIBLE REASONS WHY IPRs ARETHOUGHT TO BE NOT APPLICABLE

TO THE FASHION INDUSTRY?

The nature of fashion design necessarily

attracts imitationfashionfollowing

The transitory/seasonal nature of the fashionindustry & markets

The fear that protection may paralyse thefashion industry by creating monopolies


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Why is it important for the fashioncommunity to think of design

protection? Design protection is as applicable to the

fashion industry as in any other business

segment In the fashion industry, it is the appearance

of the product that is one of the most crucialdetermining factors in consumer choice

A unique & innovative design can thus be the

USP (Unique Selling Point ) for yourbusiness


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IPRs & the fashion industry

IfChinas strength lies in volumes, Indias liesin value addition

The recognition of the role of the DESIGNER& the immense value of the INTANGIBLEthat they create.

International experience shows thatprotection stimulates growth rather than stuntthe fashion industry eg., France


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IPRs & the fashion industry

Design rights & IPRs in general,

recognise

& harness individual

creativity & help PROFIT from it

Understanding the boundaries of design

protection also helps in not infringingothers rights


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DESIGNS

Functional /

utilitarian

Patents

Act, 1970

Purely

artistic works

Copyright

Act, 1957

Designs with

eye-appeal & capable of

Industrial application

Designs

Act, 2000


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A DESIGN UNDER THE DESIGNS

ACT, 2000 2D or 3D features ofshape, configuration,

pattern, ornament, composition of lines,colours

Applied to any article by any industrialprocess or means

The finished article appeals to the eye

Does not include anything which is insubstance a mere mechanical device

Not an artistic work or trademark


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DESIGNS CAN BE 2D OR 3D OR

COMBINATION OF BOTH Surface pattern (2D)

Cut of the garment

(3D)


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DESIGNS EXCLUDED FROM

PROTECTION Not NEW orORIGINAL

If the design has been disclosed to thepublic in India or elsewhere (exception isprovided for exhibitions)

Not significantly distinguishable from known

designs or a combination of known designs


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NEW OR ORIGINAL

Original: Means that it must originate from

the creator

New: May involve a design which is known

but is applied for the first time to that article

But over the years, the test has become NEWAND ORIGINAL


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THE DEGREE OF NOVELTY REQUIRED New or original does not simply mean

different

A trade variant of an old design does not

make it novel

Substantial novelty required


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TRADE VARIANTS

Le May v. Welch: It cannot be said thatthere is a new design every time a coat

or waistcoat is made with a differentslope or different number of buttonstohold that would be to paralyse industry.

Thus, trifling variations/immaterialdetails would not be considered NEW


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WHAT IS NOVELTY

Strikingly different appearance

Pattern made up of old features but

resulting combination with strikingly

different appearance can be novel


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Example of Novelty

Wallpaper

Manufacturers

Limitedcase

Wallpaper pattern

held to be a new

and original

combination of

known designs


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What is meant by Design

under the Designs Act, 2000 ? Design means only the features of shape, configuration,

pattern or ornament or composition of lines or colour or

combination thereof applied to any article whether two

dimensional or three dimensional or in both forms, by any

industrial process or means, whether manual, mechanical

or chemical, separate or combined, which in the finished

article appeal to and are judged solely by the eye, but does

not include any mode or principle or construction or anything which is in substance a mere mechanical device, and

does not include any trade mark , property mark or artistic

works.


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What is meant by an article under theDesigns Act, 2000 ?

Under 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 soldseparately;


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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 asconfidential information


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Design Registration in India

DesignsThe application for registration of a design can

be filed at the Patent Office at Kolkata and itsBranch Offices at New Delhi, Mumbai andChennai.


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WHAT IF YOUR DESIGN IS ALSO

FUNCTIONAL? The intent of the Designs Act is to protect

shapes & not functions

But, there may be a design which also has

functional features

Test is to see if design is solely dictated by

function. If yes, it will not be registrable


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Can stamps. Labels, tokens, cards, beconsidered an article for the purpose

ofregistration of Design?

No. Because once the alleged Design i.e.,ornamentation is removed only a piece ofpaper, metal or like material remains and thearticle referred ceases to exist. Article musthave its existence independent of theDesigns applied to it. [Design with respect tolabel was held not registrable, by an Order on

civil original case No. 9-D of 1963, Punjab,High Court]. So, the Design as applied to anarticle should be integral with the article itself.


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WHY REGISTER YOUR DESIGN?

DESIGNS ACT, 2000 Statutory right applies- only on

registration - territorial

Right to prevent all other from producing,importing, selling or distributing productshaving an identical appearance or afraudulent or obvious imitation

Monopoly Period of 10 years extendableby 5

Gives you a Unique Selling Point (USP)

Is an asset & can be licensed


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CLASSIFICATION ACCORDING TO GOODS

Registration is in relation to goods

Locarno classification which is followed

throughout the world 32 classes

Protection confined to class for which

registered

More than one design may be registered

as a set of articles of same character


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WHO CAN APPLY FOR A DESIGN

REGISTRATION? If design has been specially

commissioned for good consideration,

the person for whom it is executed

An assignee or exclusive licensee

In any other case, the AUTHOR


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Importance of getting clarity on

ownership of the DESIGN In the context of joint design efforts, who

owns the design should be spelt out in thecontract

Also, where a part of the design process issourced out, it should be spelt out

While designing for someone else, be clear inthe contract on who owns the design


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THE OVERLAP BETWEEN COPYRIGHT &DESIGN LAWS

Purely artistic works, for example,

paintings and sketches are protected under

the Copyright Act

The design development process involves

the development of a number of artistic

works can copyright protection beclaimed over them?


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THE DESIGN DEVELOPMENT PROCESS

For example, TEXTILES:

Sketches Engineered templatesFilm tracing Screens

Engraving/printing Fabrication

Each on of the above can qualify as artistic

works under the Copyright Act, 1957


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COPYRIGHT & DESIGN LAWS

A distinction has thus sought to be drawn

between purely artistic works and works

which are commercialised by industrialapplication

The rationale is that when artistic works are

commercialised, they do not deserve theprotection granted under the Copyright Act

and come within purview of the Designs Act


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Artistic work Overlap of Rights?

Copyright does notsubsist in designregistered under theDesigns Act

Design capable of beingregistered, but whichhas not been soregistered - copyrightshall cease as soon asany article to which thedesign has beenapplied more than fiftytimes by an industrialprocess


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Copyright & Designs Law

However, it may not be practically possible fora designer to get all his designs registered.

Also, all designs may not be capable of

registration under the Designs Act

It may be argued that a design may be

capable of protection under Copyright Act onthe basis of the underlying artistic works (i.e.,the sketches, engravings, prototypes, etc.)though Section 15 (2) remains a bar


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Copyright & Designs Law

It is therefore important to maintain

documentation and records at every stage of

product design and development as this mayhelp in claiming protection for a design under

the Copyright Act, 1957


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DESIGN Vs. COPYRIGHT

DESIGN COPYRIGHT

Complete monopoly Only protects against

copying

Need to register to

claim protection

Subsists inherently

Has to be NEW No requirement for

noveltyMaximum 15 years Life of author + 60 years

Only in respect of

goods registered for

Is not goods specific


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DESIGN AS A TRADEMARK

The Epi styleleather design of

Louis VuittonMalletier

Protected as a

trademark againstpiracy by the DelhiHigh Court


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Licensing of a Design

The design can be licensed to third parties to

exploit markets or commercialise it on a scale

much bigger than what can the resources ofthe author

Essential to specify in the license- the term,

territory, amount of royalty & type of productsfor which design can be used by licensee


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Is marking of an article compulsory inthe cases of article to which a

registered design has been applied? Yes, it would be always advantageous to the

registered proprietors to mark the article so as toindicate the number of the registered design except

in the case of Textile designs. Otherwise, theregistered proprietor would not be entitled to claimdamages from any infringer unless the registeredproprietor establishes that the registered proprietortook all proper steps to ensure the marking of the

article, or unless the registered proprietor show thatthe infringement took place after the person guiltythereof knew or had received notice of the existenceof the copyright in the design.


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PIRACY OF REGISTERED DESIGN

Anyone who applies or causes to be appliedto any article the design or any fraudulent orobvious imitation of it

To see whether the essential design featuresare substantially similar between the articleand the design representation

It is the overall general impression ofsimilarity which is taken into account


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Example of infringement of

registered design Birkin v. Pratt

Lace pattern was

held to have beeninfringed


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YSL v. Ralph Lauren

YSL was awarded

damages for Ralph

Laurensinfringement of the

design rights in YSLs

design of its tuxedo

dress


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The Suneet Verma controversy

Lessons to be learnt Need to assert rights

over your designs

think that you arecreating Intellectual

Property from Day 1

of product design &

development and notjust when your design

gets copied


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The Suneet Verma controversy

Lessons to be learnto At the same time, if

you need to use a

design, do duediligence over its

ownership give

credit take a

license if you doneed to use it

I it d t t k th ti l b


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Is it mandatory to make the article byindustrial process or means before

making an application for registrationof design ?

No, design means a conception or suggestionor idea of a shape or pattern which can be

applied to an article or intended to be appliedby industrial process or means.

Example- a new shape which can be appliedto a pen thus capable of producing a new

appearance of a pen on the visualappearance. It is not mandatory to producethe pen first and then make an application.


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CONCLUDING OBSERVATIONS

o The Design right needs to be used to support andleverage the enormous amount of creativity andpotential of Indian designers time has come to

actively harness it dont just wake up when yourdesign gets copied, start thinking about it fromDay 1 of product creation and development

o A unique design for which you see commercialvalue and which you intend to commericalise, getit registered as a design


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Till the time you file a design application, treat it asconfidential when you need to disclose it towholesalers/exporters/in a portfolio

Have clarity on the ownership of the designs thatyou create by entering into contracts that spell outwho owns the designs

o Maintain documentation and records at every stageof product development helps you claim copyrighteven if your design is unregistered


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When using designs, do your due

diligence on the ownership of these

designs give credit, take licenses

Commericalise your design through

license arrangements


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o The fashion design community should

lobby and build pressure on legislators

and the government to provide for anunregistered design right as exists

in the European Union

industrial design 2009-11

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