-Dr. P.

Sree Sudha

LONG HISTORY OF DESIGN REGISTRATIONS IN INDIA
IT STARTED WITH THE DESIGNS ACT,1911:
PRESENTLY THE DESIGNS ACT,2000 IS IN FORCE
KEY FEATURES WHICH MAKE THE PRESENT DESIGNS ACT
AS PER INTERNATIONAL STANDARDS:
(a) the broadened scope of Article which now specifically
includes any part of an article capable of being made and sold separately;

(b)Design to include apart from shape, configuration, pattern or ornament even composition
of lines or colours applied to any article;

(c) absolute (worldwide)novelty for registration of designs;

(d) introduction of the International system of Classification of goods;

(e) possible restoration of lapsed designs;

(f)possible inspection of registered designs immediately after registration;

(g) allowing broadened convention priority;


Bharat Glass Tube Limited v. Gopal
Gas Works (2008)
emphasized that the protection given with
respect to designs is primarily to advance
industries and to keep them in high level of
competitive progress.
Interesting feature of ID is that, unlike
patents, it does not have high social costs as
it does not offer someone the status of an
absolute monopolist in the relevant market.
Escorts Construction Equipment Ltd
Vs
Action Construction Equipment Pvt Ltd
,
1999 PTC 36(Del)

The expression design does not include a method
or principle of construction or features or shape or
configuration which are dictated solely by the
function which the article to be made in that shape
or configuration has to perform.
Rejecting the contention of the plaintiff who
claimed protection of certain specific parts of the
crane, the Court held:
Facts of the Case:AIR 2008 SC 2520
The aforesaid parts of the crane are made in a
particular shape so as to interrelate with others
mechanically.
These parts of the crane are not made to appeal to
the eye but solely to make the crane work or
function.
Most of the key components or parts, unseen in
the crane for which they were required, had only
to pass the test of being able to perform their
function.
They would be judged by performance and not by
appearance. Consequently, the aforesaid key
components or parts are incapable of being
registered as designs
DESIGNS ACT 2000
(Came In To Force On 11-05-2001)
APPLIED TO

ANY ARTICLE OF MANUFACTURE IN TWO DIMENESION
OR THREE DIMENSION OR IN BOTH FORM
BY ANY INDUSTRIAL PROCESS OR MEANS










IT CAN BE:
MANUAL;
MECHANICAL;
CHEMICAL;
SEPARATE OR COMBINED
DESIGN SHOULD BE APPLICABLE BY
INDUSTRIAL MEANS

WHERE THE ESSENTIAL CONSTRUCTION OF THE DESIGN
COMPRISES OF NATURAL THINGS AS SUCH, FOR EXAMPLE,

AN ORNAMENT USING NATURAL ROCKS,

A STUFFING OF A BIRD OR ANIMAL,

AN ORNAMENT OR CONTAINER USING WOOD OR BAMBOO,

EACH INCORPORATES, FORMATIVE BEAUTY CREATED BY
NATURE AS AN ESSENTIAL PORTION OF THE DESIGN.


SUCH A DESIGN CAN NOT BE PRODUCED ON A REPEATED
BASIS BY INDUSTRIAL MEANS HENCE NOT A SUBJECT FIT
FOR DESIGN REGSITRATION.
Duration of Design
The total term of a registered design is 15
years. (Initially 10 years, can be extended,
by another 5 years.)
The Design Wing of Patent Office
(Kolkata) is entrusted to administer the
provisions under the Design Act, 2000.
International Conventions:
The Paris convention (1883) for the
Protection of Industrial Property was the
first international convention which
discusses the concept of industrial property
and its protection including general
standards of protection for industrial
designs to be provided by the member
states. India is a contracting party to the
convention.

The Paris convention (1883)
Article 5 quinquies of the Paris Convention
provided that industrial designs shall be
protected in all contracting countries
however, the scope for such protection was
not defined.
The Berne Convention
(1886)
for the Protection of Literary and Artistic
Works , commonly referred to as the Berne
Convention, is an international agreement
governing copyright. India is a party to the
convention and recognizes the copyright of
works of authors from other members of the
Berne Union in the same way as it
recognizes the copyright of its own
nationals.
The Hague Agreement
changed the basis for the protection of industrial
designs from the so-called copyright approach
to the patent approach.
The Hague Agreement consists of several separate
treaties. The most important of them are:
The London Act of 1934,
the Hague Act of 1960, and
the Geneva Act of 1999 (The 1934 Act is frozen
as of January 1, 2010).
Classification of designs in classes 1979)



An International classification of Industrial Designs
according
to the Locarno Agreement has been introduced in the
Designs
Rules, 2001. The classification of goods is based upon
the
function of the classification of goods is applied.


Classes and most of the classes are further divided into
sub-
classes.These classes and sub-classes are mainly
function
oriented.


Normally, the name of the article should be such that is
common/familiar in the trade or Industries. The name of
the
article as mentioned in the application from should
correspond
with the representation of the article as filed.
The Trade Related Aspects of Intellectual
Property
Rights Agreement (TRIPS)
Provides for minimum norms and standards
with respect to different categories of
intellectual property rights including
Industrial Designs. The TRIPS Agreement
obliges member nations to provide for the
protection of independently created new or
original industrial designs.
CLASSIFICATION OF DESIGNS
CLASS-03= TRAVEL GOODS & PERSONAL BELONGINGS

Sub Class 03-01: Trunks,Suitcases,Briefcases,

Sub Class 03-03: Sunshades ,Walking Sticks ..

Sub Class 0304: Fans

CLASS 07 : HOUSEHOLD GOODS

Sub Class 07-01 : China ,glassware,dishes..

Sub Class 07-03 : Table Knives..

Sub Class 07-08: Fire Place Implements
CLASS 15 : MACHINES
Sub Class 15-03 :AGRICULTURAL MACHINARY
-PLOUGH DESIGNS
-REAPING MACHINES
WHICH APPEAL TO AND ARE JUDGED SOLEY BY THE EYE
ANY SUBSTANCE
Fertiliser Tablet
ARTICLE
Flower Pot
Same Article Having Different Shape
WHAT IS A DESIGN FEATURE
SHAPES : form of the article in three dimensions
Variety of Novelty & Originality in a Design
Decorative Surface Pattern Can Add value to a Product
METHOD OF MANUFACTURE NOT PROTECTED BY DESIGN
FRUIT BASKET DESIGN
CLAIM: PATTERN OF THE BASKET CONSISTING OF THE
OSIERS BEING WORKED IN SINGLY AND ALL THE BUTT
ENDS BEING OUTSIDE
IMPROPER CLAIM AS PER THE REPRESENTATION
-DESIGN DISALLOWED
NOT NOTICEABLE BY THE EYE GRANULAR PARTICULATE
SHAPE
OF SUBSTANCES EVEN IF NOVEL CANNOT BE REGISTERED
A SUGAR CUBES
OF NOTICEABLE SHAPE AND CONFIGURATION
ALLOWED
WHAT IS A REGISTRABLE DESIGN
ANY DESIGN APPLED TO AN ARTICLE WHICH IS:

A) NEW OR ORIGINAL

B) HAS NOT BEEN DISCLOSED TO THE PUBLIC ANYWHERE
IN ANY TANGIBLE FORM OR BY USE OR IN ANY OTHER
WAY PRIOR TO THE DATE OF FILING/PRIORITY DATE;

C) IS SIGNIFICANTLY DISTINGUSIHABLE FROM KNOWN
DESIGNS OR COMBINATIONS THEREOF;

D) DOESNOT CONSPRISE OR CONTAIN SCANDALOUS OR
OBSCENE MATTER
REPRESENTATIONS OF DESIGN
DESIGN APPLIED TO
A STOOL

WHAT IS ORIGINALITY IN DESIGNS AND HOW
IT HELPS IN GENERATING NEW DESIGNS

SHAPE AND CONFIGURATION OF
A CRICKET BAT AND A BALL IS WELL KNOWN
DESIGN WHICH IS NOT NEW AS SUCH BUT
ORIGINAL AND NEW IN APPLICATION
ALSO REGISTRABLE
SHAPE OF CRICKET BAT &
BALL WELL KNOWN
REGISTRABLE AS AN
ORIGINAL DESIGN HAVING
NOVEL APPLICATION
BUT AN ERASER IN THE
SHAPE OF CRICKET BAT &
BALL IF NOT PRIOR PUBLISHED
VARIANTS COMMONLY
USED IN TRADE NOT A
REGISTRABLE DESIGN
Common practice to have or not have spikes in soles
Of running shoes.

You cannot claim a new design by simply adding
available spikes to a known shoe which did not
have spikes.
CASE STUDY: ORIGINALITY OF APPLICATION OF
DESIGN ON ARTICLE
Filed Design (Chocolate)

VS


Prior Design (Desktop electric calculator)

DESIGNER TOYS
BASED ON CELEBRITIES


NOVELTY STATEMENT:

NOVELTY RESIDES IN THE SHAPE AND
CONFIGURATION APPLIED TO THE ARTICLE
TOYS.
CONDITIONS FOR VALIDITY OF SUCH DESIGNS
IS IT MANDATORY TO
MAKE THE ARTICLE BY
INDUSTRIAL PROCESS OR
MEANS BEFORE MAKING
AN APPLICATION FOR
REGSITRATION OF THE
DESIGN
NOT MANDATORY TO
PRODUCE THE ARTICLE
WITH THE DESIGN
BEFORE APPLYING FOR
THE REGISTRATION
YOU CAN DESIGN THE DISPLAY PANEL

OF A DIGITAL WATCH

TO ATTRACT THE CUSTOMER

AND MAKE THE PRODUCT MORE

ATTRACTIVE TO THE CUSTOMER
Allow ability Of Computer Icons As
An Industrial Design By The UK Patent Office
New Frontiers of Industrial Design
NEED FOR MARKING OF AN ARTICLE AS
A REGISTERED DESIGN
PREFERABLY MARK THE
ARTICLE AS:
REGD. DESIGN.
NO


IF NO MARKING ON THE
ARTICLE THE REGD.
PROPRIETOR WOULD NOT
BE ENTITLED TO CLAIM
DAMAGESFROM ANY
INFRINGER
WHEN AND HOW YOU CAN REGISTER SET OF
ARTICLES TOGETHER
A set of cuff links and a tie clip
A set of smoking accessories
A tea set
A coffee set
A set of table knives, forks and
spoons
A set of furniture for drawing
room
A set of air conditioners
A set of golf clubs
A set of seat covers for automobile
A set of audio equipment


6 piece coaster set
HOW DESIGN LEADS TO MARKET CRAZE AND COMPETIION
FUNNY FACE BISCUIT DESIGN BY BRITTANIA INDUSTRIES
MILK BIKIS MILK CREAM OF BRITTANIA
REGD. NO. 171091 OF 11-04-1996
MARKETED FIRST IN OCT.,1996
FUNNY FACE ON FRONT
SUBSEQUENT FUNNY FACE BISCUIT DESIGN OF
SARA LEE BAKERY
MILK WALA OF SARA LEE
PARENT SARA LEE CORPORATION GLOBAL MANUFACTUREER
CAME IN INDIA IN 1997
OBTAINED REGD. NO. 179167 IN 01-04-1999
FACIAL DESIGN
MILK BIKIS MILK CREAM OF
BRITTANIA REGD. NO. 171091 OF
11-04-1996 MARKETED FIRST IN
OCT.,1996
MILK WALA OF SARA LEE PARENT
SARA LEE CORPORATION GLOBAL
MANUFACTUREER CAME IN INDIA
IN 1997 OBTAINED REGD. NO. 179167
IN 01-04-1999
PLAINTIFFS
DEFENDANTS
DESIGN WITH PLANE /SMOOTH
FINISH
SAME DESIGN WITH
ROUGH FINISH
HOW OBVIOUS IMITATIONS CAN BE
STOPPED BY REGISTRATION
OF INDUSTRIAL DESIGNS
FINDINGS OF THE COURT:

BROAD PATTERN OF THE TWO SOLES SIMILAR
BOTH HAVE SIMILAR PATTERNS IN CUTS, RIDGES,
GROOVES AND LINED PATTERNS.

BROAD FEATURES OF PATTERN, CONFIGURATION &
DESIGN SIMILAR

COLOUR DIFFERNCE DEFENDANTS BLACK VIS--
VIS BROWN OF PALINTIFFS NOT OF ANY
SUBSTANCE

APPARENTLY THE DESIGN APPLIED BY THE DEFENDANT IS
SIMILAR OR OBVIUOS IMITATION OF THE PLAINTIFFS
DESIGN.

DEFENDANTS CANNOT BE SAID TO BE INNOCENT USER OF THE
DESIGN
DUE TO SUBSTANTIAL SIMILIARITY DEFENDANTS CANOT USE THE
DESIGN
EVEN UNATTRACTIVE DESIGNS CAN BE PROTECTED
HOUSING FOR A LASER
YOU CAN HAVE MARKET EXCLUSIVITY

SIMILAR TO THAT OF A PATENT WITHOUT THE

NEED FOR QUALIFYING INVENTIVE STEP

BY WAY OF AN INDUSTRIAL DESIGN

APPLIED TO A PRODUCT
SHAPE AND CONFIGUARTION

OF A MOBILE PHONE BATTERY
IMPORTANT POINTS TO REMEMBER
THERE I S I NTELLECTUAL EFFORT I N CREATI ON
OF ATTRACTI VE AND MARKET ACCEPTABLE
DESI GNS
PURCHASE OF PRODUCT I N MARKET I S I NFLEUNCED
NOT ONLY BY PRATI CAL UTI LI TY AND EFFCI ENCY
BUT ALSO BY APPERANCE
YOU SHOULD ENSURE THAT I N TODAYS
COMPETI TI VE MARKET PLACE SUCH
I NTELLECTAUL EFFORT I S ENTI TLED TO SOME
EXCLUSI VE PRI VI LEDGES I N FAVOUR OF THE
CREATOR /HI S ASSI GNEES
IMPORTANT POINTS TO REMEMBER
REDUCE I DEAS I N TANGI BLE FORM ON PAPER
(NOT MANDATORY TO APPLY THE DESI GN I N THE
ARTI CLE AND THEN FI LE APPLI CATI ON
GENERATE I DEAS OF NEW OR ORI GI NAL ATTRACTI VE
DESI GNS
MAI NTAI N RECORD OF AUTHORSHI P OF
DESI GNS AND I TS DEVOLUTI ON OF RI GHTS SO
THAT I N CASE OF ANY LEGAL COMPLEXI TY YOU
CAN ESTABLI SH THE ORI GI N /PROOF OF RI GHT
OF THE DESI GN
KEEP A COPY OF THE DESI GN AS CREATED I N
YOUR FI LE
ENSURE YOU PAY RENEWAL FEES AS AND WHEN
DUE
I T I S A PROPERTY CAN BE SOLD,LI CENSED AND
MORTGAGED.
TAKE CARE THAT YOU RI GHTLY
I DENTI FI ED THE DESI SN I N THE APPLI CATI ON
DONOT DISCLOSE OR PUBLISH THE DESIGN
BEFORE YOU HAVE FILED YOUR APPLICATION FOR
REGISTRATION
CHECK THAT THE REGI STRATI ON COVERES
THE NOVEL AND ORI GI NAL CREATI ON
EFFECTI VELY TO FAVOUR MAI NTAI NI NG MARKET
EXCLUSI VI TY
Statistics on Design Registration
Ahmedabad, Kolkata, Jaipur, and Mumbai.
Small and Medium enterprise represented around
85 per cent of the sample respondents. Number of
respondents that had applied for Design
registration was higher in leather shoes (47per
cent) compared to jewellery (32 per cent).
Almost all the applications were made to Indian
office in spite of majority of the respondents had
operations in other countries.
Concerns raised by Traders
Need to speed up the process (2 years)
Lack of online registration
No threat of Legal Implication
Enforceability is so weak
Formalities should be reduced
There is no up-gradition of data base
There no streamlined cancellation procedure


Overlap between Design Act 2000
and Copy Right Act 1957
This overlap has been carefully evaded in both
Paris and Berne convention which identified that
designs are subject matter for copyright as well as
industrial production
Indian law has tried to resolve this by the
provision of Section 15(2), Copyright Act of 1957
which deals with the rights to which a holder of an
original artistic work is entitled
Overlap between Design Act 2000
and Copy Right Act 1957
In Microfibers Inc . Vs Girdhar& Co.
&Anr, the Delhi High Court has clarified
the interplay between the Designs Act, 2000
and the Copyright Act, 1957 in the light of
section 2(d) which excludes artistic works
under the Copyright Act from the definition
of design.
Nature of protection of designs under the
Copyright Act vis--vis the Designs Ac
Designs
Exclusive rights, i.e.,
Complete monopoly
for large scale
production (most
countries also confer
exclusive rights)
Needs to be registered
Copy Rights
Only protects against
copying
Copyright is accorded
automatically, thus
there are no
formalities of
registration process
Nature of protection of designs under the
Copyright Act vis--vis the Designs Ac
Requires originality and
novelty



Duration of protection is
10 plus and can be
extended further by 5 year
Only confined to the
product that it is registered
upon
The criterion for
protection is originality,
which is easier to fulfil
compared to novelty
The duration of protection
is much longer (60 years +
)

Not product specific

Industrial design mark
n sectors like jewellery, often producers are scared
of advertising their products with innovative and
attractive new designs as that might lead to
imitation of their designs.
If producers are able to advertise their products
that the designs concerned are registered and any
imitations of the designs may attract legal actions,
then the chances of such imitation can be reduced
Industrial design mark
This might be facilitated by introducing ID
Mark in line with Trade Mark or Copyright.
Producers can use such Mark in their
advertisement which will also raise
awareness on the issue.
Signing the Hague Agreement
There is a need to explore the possibility of
signing the Hague Agreement to be able to
facilitate international registrations of
design in the member countries especially
for major export segments such as gems and
jewellery, leather footwear and textiles.
The system is administered by WIPO.
Raising awareness and capacity-
building
Most importantly there is lack of awareness about
industrial designs
The percentage is expected to be much lower for
overall MSME sector.
The primary reason for this is the complete lack
of awareness with respect to potential benefits
arising for innovation in designs for industrial
uses. Similar picture is true for officials at the
patent office
Before Parting..
It is imperative to raise awareness and build
capacity at the level of policy-making,
implementation institutions, legal fraternity,
professional institutes, and industrial
organizations.
Thank You For Your Valuable Time & Listening