Law of Design

7/30/2019 Law of Design

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The Designs

LawsSanjeev Kumar Chaswal

LLM (IPR and ARB)Advocate & IP Attorney

High Court of Delhi


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Article' under the Designs Act, 2000Under the Designs Act, 2000 the "article" means any

article of manufacture and any substance, artificial, or

partly artificial and partly natural and includes any partof an article capable of being made and soldseparately.

Set of article' under Designs Act 2000

If a group of articles meets the following requirementsthen that group of articles may be regarded as a set ofarticles under the Designs Act, 2000: Ordinarily on saleor intended to be used together.

All having common design even though articles are

different (same class).

Same general character. Generally, an article havingthe same design and sold in different sizes is notconsidered as a set of articles. Practical example: "Tea

set", "Pen set", "Knife set" etc.


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Industrial Design Rights Industrial design is the use of a combination of applied

art and applied science to improvethe aesthetics, ergonomics and usability of a product,but it may also be used to improve the product'smarketability and production. The role of an industrialdesigner is to create and execute design solutions for

problems of form, usability, physical ergonomics,marketing, brand development, and sales.

An industrial design consists of the creation of a shape,configuration or composition of pattern or color, orcombination of pattern and color either can be two-dimensional (based on pattern, colors and lines) or inthree dimensional form (as per shape and surface)

containing aesthetic value which is applied or used toproduce a product, industrial commodity or

handicrafts.


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History of Industrial DesignRights

The first use of the term "industrial design" is oftenattributed to the designer Joseph Claude Sinel in1919 (although he himself denied this ininterviews), but the discipline predates 1919 by atleast a decade. Christopher Dresser is considered

the world's first Industrial Designer.

Industrial design's origins lie in the industrializationof consumer products. For instance the Deutscher

Werkbund, founded in 1907 and a precursor tothe Bauhaus, was a state-sponsored effort tointegrate traditional crafts and industrial mass-production techniques, to put Germany on acompetitive footing with England and the United

States.


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The earliest use of the term may have been in TheArt Union, A monthly Journal of the Fine Arts, 1839.

Dyces report to the Board of Trade on foreign

schools of Design for Manufactures. Mr Dyces officialvisit to France, Prussia and Bavaria for the purposeof examining the state of schools of design in thosecountries will be fresh in the recollection of ourreaders. His report on this subject was ordered to be

printed some few months since, on the motion of MrHume.

The school of St Peter, at Lyons was founded about1750 for the instruction of draftsmen employed inpreparing patterns for the silk manufacture. It has

been much more successful than the Paris school andhaving been disorganized by the revolution, wasrestored by Napoleon and differently constituted,being then erected into an Academy of Fine Art: towhich the study of design for silk manufacture was

merely attached as a subordinate branch.


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It appears that all the students who entered theschool commence as if they were intended forartists in the higher sense of the word and are not

expected to decide as to whether they will devotethemselves to the Fine Arts or to Industrial Design,until they have completed their exercises indrawing and painting of the figure from the antiqueand from the living model.

It is for this reason, and from the fact that artistsfor industrial purposes are both well paid and highlyconsidered (as being well instructed men) that somany individuals in France engage themselvesin both pursuits.

The practical draughtsman's book of industrialdesign: was printed in 1853


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Essential requirements under the DesignsAct, 2000

The design should be new or original, not previously

published or used in any country before the date ofapplication for registration. The novelty may reside inthe application of a known shape or pattern to newSubject matter.

The design should relate to features of shape,configuration, pattern or ornamentation applied orapplicable to an article.

The designs of industrial plans, layouts andinstallations are not registerable under the Act.

The design should be applied or applicable to anyarticle by any industrial process. Designs of artisticnature like painting, sculptures, which are notproduced in bulk by any industrial process are

excluded from registration under the Act.


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This implies that the design must appear and shouldbe visible on the finished article, for which it is meant;Thus, any design in the inside arrangement of a box,money purse or almirah may not be considered for

showing such articles in the open state, as thosearticles are generally put in the market in the closedstate.

Any mode or principle of construction or operation orany thing which is in substance a mere mechanicaldevice, would not be registerable design.

For instance, a key having its novelty only in theshape of its corrugation or bend at the portionintended to engage with levers inside the lockassociated with, cannot be registered as a design

under the Act.


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The features of the design in the finished articleshould, appeal to and are judged, solely by the eye.

However, when any design suggests any mode or:principle of construction or mechanical or otheraction of a mechanism.

A suitable disclaimer in respect thereof is requiredto be inserted on its representation, provided thereare other registerable features in the design.

The design should not include any Trade Mark orproperty mark or artistic works as defined under theCopyright Act, 1957.


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Industrial Design Rights

Can industrial designs be protected?

In most countries, an industrial design must beregistered in order to be protected under industrialdesign law. As a general rule, to be registerable, thedesign must be "new" or "original".

Different countries have varying definitions of suchterms, as well as variations in the registration processitself. 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 isgenerally five years, with the possibility of further

periods of renewal up to, in most cases, 15 years.


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Depending on the particular national law and the kindof design, an industrial design may also be protectedas a work of art under copyright law.

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

other.

Under certain circumstances an industrial design mayalso be protectable under unfair competition law,

although the conditions of protection and the rightsand remedies ensured can be significantly different.


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An industrial design right is conferred afterconsidering factors like, novelty, originality andvisual appeal.

The person who has an industrial design right hasthe exclusive right to make or sell any objects inwhich the design is applicable.

Under the Hague Agreement Concerning IndustrialDesigns, a WIPO-administered treaty, a procedurefor an international registration exists. An applicant

can file for a single international deposit with WIPOor with the national office in a country party to thetreaty. The design will then be protected in as manymember countries of the treaty as desired


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What is the grace period?

The existence of a grace period and the correspondingrequirements can be provided by national or regionallaws applicable in some countries. If so, the law canallow the filing of an application for registration of anindustrial design after its disclosure, within a limitedtime period from the date of disclosure (generally six

months or a year).

During the grace period, the product which constitutesthe industrial design or in relation to which the

industrial design is used could in particular becommercialized without destroying the novelty of theindustrial design and it could still be possible to file anapplication for registration in the country concerned

before the expiry of the grace period.


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What cannot be protected byindustrial design rights?

Designs that are generally barred from registrationin many territories include:

designs that do not meet the requirements ofnovelty, originality and/or individual character;

designs that are considered to be dictatedexclusively by the technical function of a product;

such technical or functional design features may beprotected, depending on the facts of each case, byother IP rights (e.g. patents, utility models or tradesecrets);

designs incorporating protected official symbols oremblems (such as the national flag);

designs which are considered to be contrary topublic order or morality.


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Rights conferred by industrial designprotection?

When an industrial design is registered, the holderreceives the right to prevent unauthorized copyingor imitation by third parties.

This includes the right to prevent all unauthorizedparties from making, selling or importing anyproduct in which the design is incorporated or towhich it is applied.

Because industrial design rights are territorial innature, this right is limited to the territory for whichthe design is registered.


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How to enforce your rights oninfringement

In case of infringement, the holder of industrialdesign rights could, firstly, decide to send a cease ordesist letter to the alleged infringer, informing himof a possible conflict between his industrial designrights and the alleged infringing product and askinghim to cease said infringement.

If the infringement persists, the holder of theindustrial design rights could decide to take allappropriate legal measures against the infringer, asprovided for by the applicable law and may seekassistance from a IPR lawyer, who would provideadvice on enforcement of industrial design rights and

to settle any dispute.


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Penalty for the piracy of a registeredDesign

If anyone contravenes the copyright in a design for

the every contravention he/she is liable to pay a sumnot exceeding Rs. 25,000/- to the registeredproprietor subject to a maximum of Rs. 50,000/-recoverable as contract debt in respect of any one

design.The registered proprietor may bring a suit for the

recovery of the damages for any such contraventionand for injunction against repetition of the same.

Total sum recoverable shall not exceed Rs. 50,000/-as contract debt as stated in Section 22(2)(a). Thesuit for infringement, recovery of damage should not

be filed in any court below the court of District Judge.


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Cancellation of Registration of aDesign

The registration of a design may be cancelled at anytime after the registration of the design, on apetition for cancellation in form 8, with a fee of Rs.1,500/- to the Controller of Designs, on the followinggrounds:

That the design has been previously registered inIndia or

That it has been published in India or elsewhereprior to the date of registration or

The design is not new or original or

Design is not registrable or

It is not a design under Clause (d) of Section 2.


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Designs


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A Fender Stratocaster with sunburst finish,

one of the most widely recognized electric

guitars in the world.

Model 1300 Volkswagen Beetle


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Industrial Design Rights

The right is conferred for a period of 5 year initiallyand further 5 years on renewal.

The creation of a new design that can be used togive shape to a three-dimensional mass-producedarticle may possibly be registered under the DesignsAct.


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Registration process of Design


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DESIGN AS A TRADEMARK

SKB v. HLL

The S shape

Both design rights & trademark rightswere claimed on it

Design registration was cancelled duringproceedings


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THANK YOU FOR YOUR

ATTENTION !

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