USING INDUSTRIAL DESIGNSUSING INDUSTRIAL DESIGNS TO ADD VALUE FOR MARKETING TO ADD VALUE FOR MARKETING

HANDICRAFTS:HANDICRAFTS:INDIAN CASE STUDIESINDIAN CASE STUDIES

Jyotsna BalakrishnanJyotsna BalakrishnanAnand & Anand, New DelhiAnand & Anand, New Delhi

April 2005April 2005

WHAT IS A DESIGN?

• Aesthetic aspects or outward appearance that is applied to a product

• 2 D like patterns, lines, composition, colour; or

• 3 D like shape; or combination of both 2D & 3D

WHY REGISTER YOUR DESIGN? – DESIGNS ACT,

2000• Statutory right – accrues only on registration - territorial

• Right to prevent all other from producing, importing, selling or distributing products having an identical appearance or a fraudulent or obvious imitation

• Monopoly Period of 10 years extendable by 5

• Gives you a Unique Selling Point (USP)

• Is an asset & can be licensed

Criteria for Design Registration

– Finished article appeals to and is judged solely by the eye

– New or original

– not prior published in any country and not publicly known in India

– is significantly distinguishable from known designs or combination of known designs

– Not a technical or useful function of a product

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

EXAMPLES OF DESIGNS REGISTERED UNDER THE

DESIGNS ACT

EXAMPLES OF REGISTERED DESIGNS

WHO OWNS A DESIGN?WHO OWNS A DESIGN?

• If design has been specially If design has been specially commissioned for good commissioned for good consideration, the person for whom consideration, the person for whom it is executedit is executed

• An assignee or exclusive licenseeAn assignee or exclusive licensee

• In any other case, the CREATOR In any other case, the CREATOR

ALTERNATIVE WAYS TO PROTECT A ALTERNATIVE WAYS TO PROTECT A DESIGNDESIGN

– Copyright eg., painting as an Copyright eg., painting as an artistic workartistic work

– Trademark & trade dress eg., Trademark & trade dress eg., source identifiersource identifier

“Artistic work” – Overlap of Rights?

• Copyright does not subsist in design registered under the Designs Act

• Design capable of being registered, but which has not been so registered - copyright shall cease as soon as any article to which the design has been applied has been produced more than fifty times by an industrial process

Samsonite v. Vijay Sales

Where design likely

to be used for

industrial production,

copyright protection

under the Copyright

Act cannot be

claimed

DESIGN DESIGN Vs.Vs. COPYRIGHT COPYRIGHTDESIGNDESIGN COPYRIGHTCOPYRIGHT

Complete monopoly Only protects against copying

Need to register to claim protection

Subsists inherently

Has to be NOVEL No requirement for novelty

Maximum 15 years Life of author + 50 years

Only in respect of goods registered for

Is not goods specific

DESIGN AS A TRADEMARK

• SKB v. HLLSKB v. HLL

• The “S” shape The “S” shape

• Both design rights & Both design rights & trademark rights were trademark rights were claimed on it claimed on it

• Design registration was Design registration was cancelled during cancelled during proceedingsproceedings

IT IS ADVISABLE TO…..IT IS ADVISABLE TO…..

• Apply for registration when design Apply for registration when design is final & is final & BEFORE IT IS PUT INTO BEFORE IT IS PUT INTO THE MARKETTHE MARKET

• Very important to keep the design Very important to keep the design CONFIDENTIALCONFIDENTIAL before filing of before filing of the design application and if need the design application and if need to share it, enter into agreementsto share it, enter into agreements

IT IS ADVISABLE TO…..IT IS ADVISABLE TO…..

• Keep documentation at every stage of Keep documentation at every stage of product creation – helps claim different product creation – helps claim different rightsrights

• Affix a legal notice of design registration Affix a legal notice of design registration on the product – requirement to be able on the product – requirement to be able to claim damagesto claim damages

• Licensing of your designLicensing of your design

CASE STUDYCASE STUDY

• TANJORE JAMDANI SARI

• Combination of the Jamdani technique and the dye painting technique

• Arrangement of motifs completely unique and not known before