industrial designs aesthetic creations determining appearance of the product. the ornamental or...

INDUSTRIAL DESIGNS

• Aesthetic creations determining appearance of the product.

• The ornamental or aesthetic aspect of a useful article.

• It must be reproducible by industrial means (included in TRIPS Agreement, Article 25.1)

• Must be new / original.

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Industrial Design

• Industrial design is the use of a combination of applied art and applied science to improve the aesthetics, ergonomics, functionality, and usability of a product, but it may also be used to improve the product's marketability and production.

• The role of an industrial designer is to create and execute design solutions for problems of form, usability, physical ergonomics, marketing, brand development, and sales.

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Industrial Design

• An industrial design renders an object attractive or appealing, thus increasing its marketability and adding to its commercial value.

• The design may be three-dimensional based on the shape or surface of the object, or two-dimensional based on the object’s patterns, lines or colours.

• Novelty, originality and visual appeal are essential if an industrial design is to be patented, although these criteria can differ from one country to another.

• Its aesthetic features should not be imposed by the technical functions of the product.

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Industrial Design

• Legally, “industrial design” is the title granted by an official authority, generally the Patent Office, to protect the aesthetic or ornamental aspect of an object.

• This protects solely the non-functional features of an industrial product and does not protect any technical features of the object to which it is applied.

• Industrial design rights are granted to the creator of designs to reward them for their effort and investment in manufacturing the product. These rights enable the owner to make articles to which the design is applied or in which the design is embodied.

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Industrial Design

• The holder of this legal title has the exclusive right to make, import or sell any objects to which the design is applied. They can authorise others to exploit the design and bring a legal action against anyone using the design without authorisation.

• In general the period of protection granted is from 10 to 25 years. This is often divided into terms and an extension of the term requires renewal of the registration.

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Why protect an industrial design?

• Consumers often take the visual appeal of a product into consideration when choosing between different products.

• This is especially true when the market offers a large variety of products with the exact same function.

• As the aesthetic appeal of a product can determine the consumer’s choice an industrial design adds commercial value to a product.

• Protecting an industrial design is also a reward for creativity and encourages economic development.

• It ensures protection against unauthorised copying or imitation of the design and can be relatively simple and inexpensive to develop.

• An industrial design is not protected unless it has been published in an official bulletin.

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How to protect industrial designs?

• In most countries, an industrial design must be registered in order to be protected under industrial design law.

• As a general rule, to be registrable, the design must be "new" or "original. Generally, "new" means that no identical or very similar design is known to have existed before.

• Once a design is registered, the term of protection is generally five years, with the possibility of further periods of renewal up to, in most cases, 15 years.

• Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law.

• In some countries, industrial design and copyright protection can exist concurrently. In other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other.

• Under certain circumstances an industrial design may also be protectable under unfair competition law, although the conditions of protection and the rights and remedies ensured can be significantly different.

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What cannot be protected by industrial design rights?

• Designs that do not meet the requirements of novelty, originality and/or individual character;

• Designs that are considered to be dictated exclusively by the technical function of a product;– such technical or functional design features may be protected, depending on

the facts of each case, by other IP rights (e.g. Patents, utility models or trade secrets);

• Designs incorporating protected official symbols or emblems (such as the national flag);

• Designs which are considered to be contrary to public order or morality.• 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”.

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What rights are conferred by industrial design protection?

• When an industrial design is registered, the holder receives the right to prevent unauthorized copying or imitation by third parties. This includes the right to prevent all unauthorized parties from making, selling or importing any product in which the design is incorporated or to which it is applied.

• Because industrial design rights are territorial in nature, this right is limited to the territory for which the design is registered.

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How to deal with infringement?

• Firstlysend a “cease or desist letter” to the alleged infringer, informing him of a possible conflict between his industrial design rights and the alleged infringing product and asking him to cease said infringement.

• If the infringement persists, take all appropriate legal measures against the infringer, as provided for by the applicable law.

• It is usually advisable to seek professional assistance from a lawyer who would in principle be the competent person to provide an advice on how to settle any dispute.

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Trade Marks and Trade Names

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Trademarks• A trademark is a distinctive sign – like a word, drawing, image

or symbol – identifying an item that sets it apart from those of other businesses.

• A trademark can be the name of the company, or also of a specific product or service.

• A sign can be made up of words, letters and numerals, devices, coloured marks, combination of letters, or three-dimensional signs.

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Trademarks

• Words: names, family names, forenames, nicknames, geographical names, as well as any other words or set of words, whether invented or not, and even slogans.

• Letters and numerals: a sign could consist of one or more letters, one or more numerals, or a combination of letters and numerals

• Devices: drawings or symbols• Three-dimensional signs: Single colour trademarks, motion

trademarks, hologram trademarks, shape trademarks • Non-visible signs (e.g. sounds, scents, tastes, textures)

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Trademarks

• As per Article 15.1 of TRIPS ‘Any sign, words, including personal names, letters, numerals, figurative elements and combinations of any such signs, capable of distinguishing goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.’

• WIPO defines a trademark as a distinctive sign, a symbol that distinguishes the trademark owner’s goods and services from those of competitors.

• For consumers a trademark reflects the image of the company and therefore has commercial value.

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Trademarks Protection

• Under the Indian trademark law, any distinctive and identifying mark, which is capable of distinguishing the goods and services of one owner from that of another, may be utilized as Trademark and such marks are afforded protection under the law.

• It gives owners an exclusive right to use the sign on their product

• Allows consumers to buy it with confidence, relying on the reputation and quality for which the sign stands.

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• The new Trade Marks Act, 1999, which came into force in September 2003 gives a broader definition.– A package is now protected under the Act, which includes any case,

box container, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork. Thus, the new definition of trademark in India broadly encompasses almost all the elements of trade dress under the US law.

• Unlike the United States Lanham Act, 1946 the English Trade Marks Act, 1994 and the Indian Act, 1999 do not have to protect un-registered trade dress or allow registration of trade dress which qualifies the tests of distinctiveness and source identifier.

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• A trademark confers to the owner the exclusive right of exploitation. • Registering a trademark can prevent it being misappropriated, and

enable the owner to take legal action against anyone using the trademark without authorisation.

• It is a valuable asset for an organisation as it distinguishes their products and can be used to gain consumers’ trust.

• Trademarks also have monetary value as they can be sold or licensed.

• As the trademark represents the values of the company it represents, the owner should ensure that no other organisation attempts to be illegally associated with these values by incorrect use of the protected trademark.

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• A trademark can be registered for 7 to 20 years and protection can be renewed indefinitely.

• During this time the owner can use, sell, license or merchandise the trademark, and of course prevent its unauthorised use.

• In order to maintain their rights, the owner of the trademark must make proper use of the trademark and pay annual fees.

• If the mark is not used within five years of its registration, anyone with a legitimate interest may ask for it to be cancelled as its non use represents a barrier to the registration of new marks, and consequently to commerce as a whole.

• Improper use of the mark can also result in the loss of protection. – An example of improper use is when people refer to the product

by using the trademark.

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Grounds for protection

• A trademark must be distinctive so that the customer can differentiate it from other similar products.

• A trademark should be original. This means that it should not infringe on others’ rights, i.e. copy a registered trademark for the same or similar goods or services.

• The mark should not be a generic term such as ‘furniture’ or ‘table’ nor should it be a descriptive sign, i.e. a sign used to designate origin, quality, etc.

• It should not be deceptive or forbidden by the law, nor should it create confusion among consumers or give a false idea of the origin of the product or service, or use signs contrary to public order.

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Trade Names• Trade names are used by profit and non-profit entities,

political and religious organizations, industry and agriculture, manufacturers and producers, wholesalers and retailers, sole proprietorships and joint ventures, partnerships and corporations, and a host of other business associations.

• A trade name may be the actual name of a given business or an assumed name under which a business operates and holds itself out to the public.

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Trade Names• A trade name belongs to the first business to use it, and

the identification and reputation give it value and the right to protect the trade name against its use by others.

• Signifies names or designations used by companies to identify themselves and distinguish their businesses from others in the same field.

– Sheaffer's is clearly identified as a fountain pen manufactured by the Sheaffer Company, and no one else can produce pens with that name. However, a motorcycle with the name Sheaffer would not be an infringement since the product is different.

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Trade Names Protection

• The law seeks to protect the economic, intellectual, and creative investments made by businesses in distinguishing their trades.

• to preserve the good will and reputation that are often associated with a particular trade name.

• to promote clarity and stability in the marketplace by encouraging consumers to rely on a merchant's trade name when evaluating the quality of its merchandise.

• to increase competition by requiring businesses to associate their own trade names with the value and quality of their goods and services.

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• To maintain a cause of action for trade name infringement, a plaintiff must establish that it owned the right to operate its business under a certain name and that the defendant violated this right by use of a deceptively similar name.

• The right to use a particular trade name ordinarily is established by priority of adoption.

• Generic words that are widely used to describe any number of businesses in the same field may not be appropriated by a single competitor.


• Not every trade name that resembles an existing one will give rise to liability for infringement.

• The law will not forbid two unrelated businesses from using the same trade name so long as their coexistence creates no substantial risk of confusion among the public.

• The law permits businesses in different geographic markets to use identical trade names, unless the good will and reputation of an existing business extend into the market where a new business has opened.

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INTEGRATED CIRCUITS

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Integrated Circuits

• Large scale integration of a multitude of electrical functions in a very small component as a result of advances in semiconductor technology.

• Electronic integrated circuit products are constructed from a complex series of layers of semi-conductors, metals, dielectrics (insulators) and other materials on a substrate.

• Integrated Circuits are manufactured in accordance with very detailed plans or “lay out designs’ or topography (three-dimensional configuration of the electronic circuits used in microchips and semiconductor chips).

• The initial lay out design is very complicated and costly but copying it is much easier.

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Integrated Circuits

• As per Article 2 of the IPIC Treaty :• ‘integrated circuit’ means a product, in its final form or an

intermediate form, in which the elements, at least one of which is an active element, and some or all of the inter-connections are integrally formed in and/or on a piece of material and which is intended to perform an electronic function;

• layout-design (topography)’ means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture .

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Need for protecting Integrated Circuits

• A chip typically has eight to twelve layers, each layer having a unique mask creating the required circuits.

• These layers of masks, collectively called 'mask work' or 'layout-design', manifest the three-dimensional layout of the chip.

• It is a chip's layout, or three-dimensional organization that requires protection.

• It takes enormous investment, both in terms of time and money, to design a new layout-design.

• But a chip pirate can easily replicate the layout-design of a chip in few months by removing the chips plastic/ceramic casing and photographing each layer of the translucent silicon material; at a fraction of the original cost.

Integrated Circuits Protection

• Protection can extend to the layout design as well as to the finished product.

• The owner may exclude others from:– Reproducing a protected topography or any substantial part

of one– Manufacturing an integrated circuit product incorporating

the topography or a substantial part of one; – Importing or commercially exploiting a topography or a

substantial part of one, or of IC product that embodies a protected topography or a substantial part of one;

– Importing or commercially exploiting an industrial article which incorporates an IC product that embodies a protected topography or a substantial part of one.

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IC Protection• Before 2003, the legal framework relating to copyright, patent or

industrial designs did not afford adequate protection to layout-designs. • The Copyright Act is too general to accommodate the original ideas of

scientific creation of layout-designs. • For an article to receive a patent, its design must be novel and non-

obvious. The work involved in chip manufacturing is of a developmental nature rather than an inventive nature and might not qualify for a patents.

• Layout-designs of integrated circuits are not industrial designs because they do not determine the external appearance of integrated circuits.

• They determine the physical location, within the integrated circuit, of each element having an electronic function.

• Thus, the need was felt for sui generis protection.

Integrated Circuits Protection• Protection to semiconductor chips was first given in the US through

Semiconductor Chip Protection Act (SCPA) in 1984 and its impact was felt virtually throughout the world.

• Japan introduced similar Right Act (JCLRA).• An EC Directive", with implementing legislation in all Member States of

the EU accelerated international efforts resulting in formulation of 1989 Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty) under the auspices of WIPO. – The IPIC Treaty was later made part of the TRIPS Agreement

• As member of TRIPS Agreement, India has enacted the Semiconductor Integrated Circuit Layout-Design Act, 2000.

• The implementation of the Act comes under the Ministry of Communication and Information Technology.

• A layout-design has to be registered to receive protection under the Act.

Integrated Circuits Protection• Protection under the Act exists only after the

layout-design has been registered.• Layout-designs can be registered, if they are;

– original, – inherently distinctive, – capable of being distinguishable from any other registered layout-design

and – if they have not been commercially exploited for more than two years

before date of application for registration. • Thus, the Act does not require 'novelty' (as in

patents) but 'distinctiveness' for the purpose of registration.

• Protection under the Act extends for ten years.

Exception to the Right

• Any person may reproduce the layout-design for the purposes of scientific evaluation, analysis, research or teaching .

• The Act also allows persons to 'reverse-engineer' layout-designs for the purpose of analysing the layout-designs and incorporating the insights of their analysis into an original layout-design of their own. – This is to encourage creativity through the

improvement of existing layout-designs.

Plant Varieties

Plant Variety Rights

• A grant of Plant Variety Rights for a new plant variety gives the exclusive right to produce for sale and to sell propagating material of the variety.

• In the case of vegetatively-propagated fruit, ornamental and vegetable varieties, Plant Variety Rights give the additional exclusive commercial right to propagate the protected variety for the commercial production of fruit, flowers or other products of the variety.

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• Plant Variety Rights are presently available for varieties of any kind of plant other than algae and bacteria.

• Following international custom in the world of plant variety protection the word "variety" is used not in the sense of a "botanical variety" but rather as being synonymous with "cultivar" or "cultivated variety".

Eligibility for Rights

• A grant of Plant Variety Rights may be made for a variety if:– it is new– it is distinct, uniform and stable - commonly abbreviated to

DUS– an acceptable denomination (variety name) is proposed

Eligibility for Rights

New: A variety is considered to be new if propagating material, whole plants or harvested material of it has not been sold or offered for sale with the agreement of the owner for more than one year before the date of

The prior sale rules do not apply where:• the sale is part of a contractual arrangement to increase the

applicant's stock, or for evaluative trials or tests where all the material produced directly or indirectly, plus any unused propagating material, becomes or remains the property of the applicant; or

• any surplus plant material produced during the breeding, increasing of stock and trials or tests of the variety is disposed of for non-propagating purposes.

Eligibility for Rights• Distinctness: The variety must be distinct from all commonly

known varieties existing at the date of application, in one or in some combination of the following characteristics: morphological (such as shape, colour) or physiological (such as disease resistance).

• Uniformity: if subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its essential characteristics.Stability: The variety must remain true to its description after repeated propagation.

• Denomination: a denomination for the new variety that conforms

to internationally accepted guidelines (International Union for the Protection of New Varieties of Plants (UPOV).

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• The protection given to a breeder by a grant of Plant Variety Rights resembles that given to an inventor by a patent grant, but there are significant differences between these two forms of intellectual property rights.

• This means that one cannot use the term "patent" when referring to a variety protected by the Plant Variety Rights Act.

Benefits of a PVR• Like other personal property, the Rights to a protected variety may

be sold, licensed, mortgaged or assigned to another person or business.

• Rights holders commonly collect royalties from the commercialisation of their protected varieties.

• As with other types of proprietary rights, you may bring civil action against persons or businesses infringing your rights; claim damages from, another person or business that deliberately sold seeds or plants of the protected variety without your permission.

• As a Rights holder you can also take action against another party using the approved denomination (registered name) of your protected variety to sell propagating material of another variety of the same genus or species.

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PVR Protection

• TRIPS Article 27.3(b) states, “ …Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof”.

• The Govt. of India enacted “The Protection of Plant Varieties and Farmers’ Rights (PPV&FR) Act, 2001” adopting sui generis system.

PVR Protection

• A sui generis system for plant varieties must comply with the basic principles of national treatment, meaning that member states are obliged to grant to non-nationals the same advantages as to its own nationals, immediately and unconditionally .

• In order to be "effective", national sui generis legislation must provide for the implementation of juridical procedures for PVP holders to execute their rights.

• By this, they can effectively exclude others from unauthorized use of the protected plant variety or obtain a remuneration.

Plant breeders’ rights

• New varieties of plant species can be protected under the Plant breeders’ rights Act.

• It gives the owner the exclusive right to control the multiplication and sale of the seed for up to 18 years. Other people can still breed or save and grow the registered variety for their own private use without permission.

• Breeders will have exclusive rights to produce, sell, market, distribute, import or export the protected variety.

• Breeder can appoint agent/ licensee and may exercise for civil remedy in case of infringement of rights.

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Farmers’ Rights

• A farmer who has evolved or developed a new variety is entitled for registration and protection in like manner as a breeder of a variety;

• Farmers variety can also be registered as an extant variety; i.e. a variety about which there is common knowledge.

• A farmer can save, use, sow, re-sow, exchange, share or sell his farm produce including seed of a variety protected under the PPV&FR Act, 2001 in the same manner as he was entitled before the coming into force of this Act provided farmer shall not be entitled to sell branded seed of a variety protected under the PPV&FR Act, 2001;

Farmers’ Rights

• Farmers are eligible for recognition and rewards for the conservation of Plant Genetic Resources of land races and wild relatives of economic plants;

• There is also a provision for compensation to the farmers for non-performance of variety under Section 39 (2) of the Act, 2001; and

• Farmer shall not be liable to pay any fee in any proceeding before the Authority or Registrar or the Tribunal or the High Court under the Act.

Exceptions to a grant-holder’s Rights

Researchers’ Rights• Researcher can use any of the registered variety under the

Act for conducting experiment or research. • This includes the use of a variety as an initial source of

variety for the purpose of developing another variety but repeated use needs prior permission of the registered breeder.

Other persons are free to:– grow or use a protected variety for non-commercial

purposes– use the plants or parts of the protected variety for human

consumption or other non-propagating purposes.

Trademarks• ‘TM’ Symbol: Generally, one who has filed an application (pending

registration) can use the TM (Trademark) symbol with the mark to inform the public of his exclusive claim over the Brand. The claim may or may not be valid.

• ‘SM’ Symbol: An SM symbol indicates Service Mark, which is the same as a Trademark except that it identifies and distinguishes the source of a service rather than a product.

• ‘R’ Symbol: The registration symbol ® may only be used when the mark is registered and the Certificate of Registration is issued by the Trademark Registrar.

• Out of all above symbols TM symbol is one of the most popular and widely used symbol to indicate the application or registration of Trademark.

Geographical Indications


• A geographical indication points to a specific place, or region of production, that determines the characteristic qualities of the product which originates from that place.

• It is important that the product derives its qualities and reputation from that place.

• Since those qualities depend on the place of production, a specific "link" exists between the products and their original place of production.


• A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin.

• Most commonly, a geographical indication includes the name of the place of origin of the goods.

• Typically, such a name conveys an assurance of quality and distinctiveness which is essentially attributable to the fact of its origin in that defined geographical locality, region or country.

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• Geographical indications may be used for a wide variety of products, whether natural, agricultural or manufactured.

• Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil.

• They may also highlight qualities of a product which are due to human factors associated with the place of origin of the products, such as specific manufacturing skills and traditions.


• Under Articles 1 (2) and 10 of the Paris Convention for the Protection of Industrial Property, geographical indications are covered as an element of IPRs. They are also covered under Articles 22 to 24 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

• India, as a member of the World Trade Organization (WTO), enacted the Geographical Indications of Goods (Registration & Protection)Act, 1999 which has come into force with effect from 15th September 2003.

Appellation of Origin

• An appellation of origin is a special kind of geographical indication.

• It generally consists of a geographical name or a traditional designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced.

• The concept of a geographical indication encompasses appellations of origin.

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Need for Protecting GIs

• Many of GIs have acquired valuable reputations which, if not adequately protected, may be misrepresented by dishonest commercial operators.

• False use of geographical indications by unauthorized parties is detrimental to consumers and legitimate producers.

• Consumers are deceived into believing that they are buying a genuine product with specific qualities and characteristics, when they are in fact getting an imitation.

• Legitimate producers are deprived of valuable business and the established reputation of their products is damaged.

Geographical Indications Protection

• Geographical indications are protected in accordance with international treaties and national laws under a wide range of concepts, including –– special laws for the protection of geographical indications or

appellations of origin– trademark laws in the form of collective marks or

certification marks– laws against unfair competition– consumer protection laws, or– specific laws or decrees that recognize individual

geographical indications.

Geographical Indications Protection

• A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.

• Unauthorized parties may not use a geographical indication in respect of products that do not originate in the place designated by that indication.

• Applicable sanctions range from court injunctions preventing the unauthorized use to the payment of damages and fines or, in serious cases, imprisonment.

• In India so far 178 items have been registered as GI, largely items of handicrafts and agriculture and also of manufacturing.

Generic Geographical Indication

• If a geographical term is used as the common designation of a kind of product, rather than an indication of the place of origin of that product, then the term no longer functions as a geographical indication.

• Where this has occurred in a certain country, then that country may refuse to recognize or protect that term as a geographical indication.

• For example, the term “cologne” now denotes a certain kind of perfumed toilet water, regardless of whether or not it was produced in the region of Cologne.

Geographical Indications and Trademarks

• A trademark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises

• A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production. It may be used by all producers who make their products in the place designated by a geographical indication and whose products share specified qualities.

• Unlike a trademark, the name used as a geographical indication will usually be predetermined by the name of the place of production.