Full Research Paper - Industrial design regime in Sri Lanka and

global competitiveness

Faculty of Law – University of Colombo

Intellectual Property Law – 11 Assignment
2012/L/6531

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 Contents

Abstract........................................................................................................................................................ 2
Introduction ................................................................................................................................................. 3
International Standards ............................................................................................................................. 5
The Berne Convention .............................................................................................................................. 5
Paris Convention ....................................................................................................................................... 5
The TRIPS agreement ............................................................................................................................... 6
Different hurdles for designers .................................................................................................................. 6
Absolute Novelty ...................................................................................................................................... 7
Exclusion of Functional features of the product ....................................................................................... 9
Industrial design can be protected under other Laws such as copyright and unfair competition............ 11
Cumulative Protection which is a hurdle for the design innovations ................................................... 13
Other reasons that can attribute cumulative protection for designs. ....................................................... 14
Comparative Jurisdictions ....................................................................................................................... 15
United States ........................................................................................................................................... 15
Canada .................................................................................................................................................... 15
United Kingdom...................................................................................................................................... 17
India ........................................................................................................................................................ 17
Recommendations ..................................................................................................................................... 18
Conclusion ................................................................................................................................................. 18
Bibliography .............................................................................................................................................. 20
Legislation............................................................................................................................................... 20
Case Law................................................................................................................................................. 20
Books ...................................................................................................................................................... 20
Journal Articles ....................................................................................................................................... 21
Internet resources .................................................................................................................................... 21
Other resources ....................................................................................................................................... 22

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Abstract

The value of designs to enhance a useful product's marketability is unquestioned. Designers are
now employed in virtually every industry to create “eye-appeal” for products and to differentiate
between the many products in a crowded market to attract consumers’. Although not for a definite
demarcation; field of design includes three main classes. According to the definition of World
Intellectual Property organization (WIPO), Industrial Design constitutes an ornamental or
aesthetic aspect of an article which may consist of three dimensional features, such as the shape of
an article, or two dimensional features, such as patterns, lines or color. However, Protection of
industrial design through legislation specifically directed to that end is confined to this third class
of designs which are decorative designs, are those which serve to beautify industrial products in
daily use. In the field of Intellectual property of Sri Lanka, industrial designs don’t seem to play a
vital part in the economic progression. It is evident that under the current legal protection of
industrial designs, overlap of rights makes cumulative protection possible in the area of design
rights in Sri Lanka.

In the above context main research problem of this paper is to examine ‘difficult hurdles for
designers’ in Sri Lanka and the impacts of relaxing those standards in the effective contribution of
the nation toward Global economy. Firstly, the emphasis on absolute novelty which has a very
high threshold is a great threat for innovative design- incentive industries. Other factor is that as
stated in section 30 of the IP Act, exclusion of the functional features of a product will also limit
the scope of design protection. In addition it’s evident that an industrial design can be protected
under other Laws such as copyright and unfair competition, where appropriate. Therefore it seems
that there are various levels of protection available to designs which will obstacle economic growth
through innovation.

Also this would give an overview of the statistical information of National Intellectual Property
Office (NIPO) as to the number of registrations out of applications for industrial designs and the
trends in design applications. Moreover, it’s important to touch upon the importance of design
industry toward global market competitiveness by analyzing comparative jurisdictions like US,
UK, Canada and India.

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The research methodology of this work will be mainly books, number of journal articles and
internet articles used to gather secondary data. Most importantly the provisions of the IP Act of
Sri Lanka will be analyzed to extract the different obstacles prevail for design innovation.

Further, this research will provide appropriate recommendations to soothe these rigorous standards
like improving the awareness among industries to enhance to number of application files for design
protection and rectifying the delays of granting procedures especially in novelty examinations. In
addition relaxing the standards of the “functionality doctrine” and looking upon the other spheres
of protection for designs such as copyrights, unfair competition and patents which also has a say
in broadening the sphere of innovation in Sri Lanka.

Introduction
According to the definition of world Intellectual Property organization (WIPO), Industrial design
constitute an ornamental or aesthetic aspect of an article which may consist of three dimensional
features, such as the shape of an article, or two dimensional features, such as patterns, lines or
color.1It can also be understood as the process that is turning ideas in to material things.2 The value
of designs to enhance a useful product's marketability is unquestioned3. Designers are now
employed in virtually every industry to create “eye-appeal” for products and to differentiate
between the many products in a crowded market to attract consumers’4.

Moreover according to the case AMP Inc. v. Utilux Pty Ltd5, Lord Reid observed that Industrial
designs help promote commercialization of the products. Consumers often take the visual appeal

1
WIPO Wipoint, 'Industrial designs' (World Intellectual Property
Organization, 2010) <http://www.wipo.int/designs/en/> accessed 17 January 2016.
1
CR Weston, 'WESTERN AUSTRALIAN LAW REVIEW' [1972] 10(65) THE LEGAL PROTECTION OF
INDUSTRIAL DESIGNS 65

2
Angela Dumas, Theory and practice of Industrial design; Report produced for the EC funded project
INNOREGIO: dissemination of innovation and knowledge management techniques, 2000,1

3
T. Fryer William , 'Protection of Ornamental Designs of Useful Articles-the Legislative
Opportunity' [1982] 111(APPENDIX 3) HR 20 97th Congress 1st Session, symposium meetings 160
4
Susanna Monseau, 'THE CHALLENGE OF PROTECTING INDUSTRIAL DESIGN IN A GLOBAL
ECONOMY' [2012] 20(495) Texas Intellectual Property Law Journal 501
5
AMP Inc. v. Utilux Pty Ltd (1972)RPC 103- 107

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of a product into consideration when choosing between different products.6 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.7 Protecting an industrial design is also a reward for creativity and encourages
economic development. Above all, it ensures protection against unauthorized 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.8

Industrial design regime in Sri Lanka is governed by Part 111 of the Intellectual Property Act only
where it is its new and is not anti-social in the sense that it does not consist of any scandalous
design or is not contrary to morality or public order or public interest or is not likely to offend the
religious or racial susceptibilities of any community. 9 In case of Global Standards With respect to
design, however, there has always been a lack of international agreements that clearly determine
its legal protection.10However different jurisdictions treat the design regime differently. In Sri
Lanka, industrial designs don’t seem to play a vital part in the economic progression. It is evident
that under the current legal protection11 of industrial designs, overlap of rights makes cumulative
protection possible in the area of design rights in Sri Lanka.12

Therefore this research would focus on different hurdles for designers and how it would
demotivate the design industry in Sri Lanka. In addition this would focus more on International
standards of design protection and design laws in other comparative jurisdictions.

6
World Intellectual Property Organization (WIPO),
<http://www.wipo.int/designs/en/faq_industrialdesigns.html#accordion__collapse__02>

7
ibid
8
ibid
9
D.M.Karunarathne, Elements of the Law of Intellectual property in Sri Lanka; Sarasavi publishers (pvt) ltd,
116
10
Uma Suthersanen, Design Law: European Union and United States of America (2nd edn, Sweet and Maxwell
limited 2010) 28
11
Part 111 of the Intellectual property Act No.36 of 2003
12
Nishantha Sampath Punchi hewage, Promoting a second - Tier protection regime for innovation of small and
medium - sized enterprises in South Asia (1 edn, Nomos Verlagsgesellschaft, Baden - Baden, Germany 2014) 113

Electronic copy available at: https://ssrn.com/abstract=2820990

International Standards
As aforementioned there is a clear lack of international standards that would ensure protection for
Industrial designs. Among the main International agreements like TRIPS, the Berne Convention,
or the Paris Convention, slight attention has been set toward industrial designs.

The Berne Convention

The Berne Convention became effective in 1886 and was the first major international copyright
treaty. 13Industrial design is not specifically regulated in the Berne Convention but might fall under
the concept of “applied art” that is not further defined in the convention. 14According to Art. 2 (7)
of the Berne Convention it is in the discretion of the signatory states whether they want to protect
industrial design as applied art, and if so, to set the conditions of protection.15 Interestingly,
however, the Berne Convention concludes that industrial design should be protected as artistic
work, and therefore under copyright law, in the event that the signatory state’s laws are silent as
to the form of protection offered for industrial design. As a result, in case of doubt, industrial
design should be protected under copyright law.16

Paris Convention
Unlike the Berne Convention, the Paris Convention directly addresses the protectability of
industrial designs. Art. 5 of the Convention sets forth that “industrial designs shall be protected in
all the countries of the Union”.17 Contrary to the rule of doubt in favor of copyright protection set
forth in the Berne Convention, industrial design is categorized as industrial property in Art. 1 (2)
of the Paris Convention. This suggests a more patent-like protection. However, the Paris
Convention does not provide any regulations about the subject matter, the requirements, or the
scope of protection.18

13
Lena schickl, 'Protection of industrial design in the US and in the EU - Different concepts or different labels?
' [2013] 16(1-2) The Journal of World Intellectual Property 19
14
ibid
15
Art. 27(2) of the Berne Convention
16
Lena schickl, 'Protection of industrial design in the US and in the EU - Different concepts or different labels?
' [2013] 16(1-2) The Journal of World Intellectual Property 19
17
Art. 5 of the Paris Convention
18
Supra 16

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The TRIPS agreement
Only two provisions of TRIPS directly refer to industrial design protection. Art. 25 TRIPS sets
forth the requirements for protection, whereas Art. 26 TRIPS defines the scope of protection.
According to Art. 25 (1) of TRIPS member states are required to protect certain types of industrial
design.19 However the TRIPS agreement does not provide a definition of Industrial designs or the
subject matter constituting industrial designs. It remains unclear, therefore, what type of protection
should be applied to industrial design by the member states. The “independent creation” as well as
the “originality” requirement seems to point to copyright protection; whereas the novelty
requirement might refer to patent-like protection or a sui generis design regime.20 Since TRIPS did
not settle the dispute about the nature of protection and only guarantees a minimum standard,
member states are still relatively free in drafting their national laws in such a way as to match their
local objectives.21

Different hurdles for designers

Emphasis on absolute novelty is one condition which has a very high threshold and a threat to
innovative design incentive industries. 22. Other factor is that as stated in section 30 of the IP Act,
exclusion of the functional features of a product will also limit the scope of design protection.23 In
addition it’s evident that an industrial design can be protected under other Laws such as copyright

19
Members shall provide for the protection of independently created industrial designs that are new or original.
Members may provide that designs are not new or original if they do not significantly differ from known designs
or combinations of known design features. Members may provide that such protection shall not extend to
designs dictated essentially by technical or functional considerations
20
Supra 10
21
Mario cimoli and others, Intellectual Property Rights Legal and Economic Challenges for Development (1st
edn, Oxford 2014) 345
22
Susanna Monseau, 'THE CHALLENGE OF PROTECTING INDUSTRIAL DESIGN IN A GLOBAL
ECONOMY' [2012] 20(495) Texas Intellectual Property Law Journal 501
22
CR Weston, 'WESTERN AUSTRALIAN LAW REVIEW' [1972] 10(65) THE LEGAL PROTECTION OF
INDUSTRIAL DESIGNS 65- The first class, structural design, includes those designs which serve a functional
purpose, for example, those which find expression in machine and tool construction. The second main class of
design, pictorial designs, comprises those designs more closely associated with the fine arts. The third classes
of designs, decorative designs, are those which serve to beautify industrial products in daily use
23
Section 30 of the IP Act – “provided that anything in an industrial design which serves solely to obtain a
technical result shall not be protected under this part.

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and unfair competition, where appropriate.24 Therefore it seems that there are various levels of
protection available to designs which will obstacle economic growth through innovation.

Absolute Novelty
For determining the novelty of design patents, there can be roughly three standards: absolute
novelty standard, relative novelty standard and blended novelty standard.25 Absolute novelty
standard, also called global novelty standard or worldwide novelty standard, means that the design
under patent application must not be identical or similar to prior designs in the world.26 The merit
of this standard is it guarantees that the patented design is a new design. 27 Its disadvantage lies in
the fact that it is hard to exhaust all prior designs when examining whether a design under patent
application possesses novelty. It will cost patent-granting authorities a large amount of resources
to collect and preserve prior designs.28 Currently most countries have not adopted the absolute
novelty standard.29

Relative novelty standard, also referred to as regional novelty standard, does not require that the
design to be patented must not be identical with or similar to the prior designs of the whole world.
Instead, it imposes such requirements for a certain region. Here "certain region" usually means a
certain sovereign territory, such as a sovereign country or region. The advantage of this standard
is that it brings convenience to patent-granting authorities in their novelty examination. The
disadvantage is, it cannot guarantee that the design to be patented is a new design worldwide,
which may stimulate an applicant to file an application on a design that possesses novelty at home
but has been publicly disclosed globally and consequently impair the rights and interests of foreign
right holders and constitute patent barriers to free trade.30

The blended novelty standard is a granting standard composed of absolute novelty and relative
novelty. The primary way to destroy the novelty of a design under patent application is through

24
DM Karunaratna, Elements of the Law on Intellectual property Sri Lanka (1st edn, Sarasavi
Publications 2010) 115
25
Liu xiaojun, 'Novelty Requirement for Granting Patent Right for Design' (China Intellectual
Property, 2008.1.1) <http://www.chinaipmagazine.com/en/journal-show.asp?id=261> accessed 13 April 2016

26
ibid
27
ibid
28
ibid
29
ibid
30
ibid

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public disclosure and public use. According to blended novelty standard, for publicly disclosed
designs, the absolute novelty standard will apply; while for publicly used designs, the relative
novelty standard will prevail. 31

According section 31(1) of the IP Act an Industrial design is considered new where it had not been
available to the public anywhere in the world and at any time what so ever with description, use
or in any manner before the date of the application for the registration of the industrial design or
before the date of priority. Therefore it’s evident that Sri Lanka is going in line with the absolute
Novelty standard. Moreover according to article 25(1) of the TRIPS agreement, WTO members
have an obligation to provide for the protection of independently created industrial designs that
are new or original.32 Nevertheless the TRIPS agreement does not provide a definition of novelty
or originality.

It is also clear from the wordings of the Act that Sri Lankan Law imposes a high threshold of
novelty or absolute novelty for design protection. 33 It’s been stated that design is treated as a trade
secret and not been made public in the home country or anywhere else in the world.34 Novelty has
been explained in case law in many jurisdictions in different forms. In the case Saunders v. Weil35
it’s been stated that the novelty is not destroyed by the fact that the design has been derived from
a source common to mankind. Also in the case Dover v. Nurnberger36 it was held that Novelty
may consist not in the idea itself, but in the way in which the idea is to be rendered applicable to
some special subject matter. Chawla v. Bright Auto industries37 states that an addition a few curves
to an existing industrial design does not make it new, and an industrial design must be substantially

31
ibid
32
Nishantha Sampath Punchi hewage, Promoting a second - Tier protection regime for innovation of small and
medium - sized enterprises in South Asia (1 edn, Nomos Verlagsgesellschaft, Baden - Baden, Germany 2014) 113

33
Ibid, 114
34
China ipr sme helpdesk, 'Understanding and Using China’s Design Patent' (Understanding and Using
China’s Design Patent, 4/12/2015) <http://www.china-
iprhelpdesk.eu/sites/all/docs/publications/China_IPR_SME_Helpdesk-Design_Patent_Guide.pdf> accessed 12
April 2016

35
Saunders v. Weil (1893)10 RPC 29.
36
Dover v. Nurnberger (1910) 27 RPC 498
37
Chawla v. Bright Auto industries AIR (1981)Del 95

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different from existing ones.38Moreover the case Matthew v. Thomas39 states that it must constitute
a striking feature making an immediate appeal to eye and further can be held that small variations
do not make an industrial design new.40 When looking at all the aforementioned judicial precedents
it’s evident that in protecting industrial designs a very high threshold is been attributed to the
concept of Novelty.

In industrial designs protection is not justified for instance, where a person has put together an old
design for a rocking horse and another old design for a base. The designer must have applied some
further skill and labour of a draftsman like nature.41 Similarly even in the Sri Lankan context what
we see is that hardly many of the design applications receives protection due to the high novelty
standards. It can be assumed that Sri Lankan Novelty standard can be closer to absolute novelty
standard than general blended or relative novelty standards. In such an instance it can be highly
impractical to maintain registered designs in a general level. Moreover Sri Lanka does not seek for
any inventive step in design protection but for high novelty standards. In contrast in countries like
USA an inventive step is also considered with reasonable novelty standards in order to encourage
the designers. The industrial design application and registration system in Sri Lanka would need
to be made simpler and faster without insisting on rigorous standards for protection.42 In that sense,
enforcing a very strict worldwide novelty requirement would create a hurdle which can dissuade
and discourage the design industry from using the system.43

Exclusion of Functional features of the product

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

38
Philips v. Harbo (1920) 37 RPC 23
39
Matthew v. Thomas (1967) RPC 23
40
Rollason (1897) 14 RPC 909
41
WR Cornish, Intellectual property:Patents, copyright, trade marks and allied rights (2nd edn, Sweet and
Maxwell limited 1937) 489
42
Nishantha Sampath Punchi hewage, Promoting a second - Tier protection regime for innovation of small and
medium - sized enterprises in South Asia (1 edn, Nomos Verlagsgesellschaft, Baden - Baden, Germany 2014)118
43
Supra 35

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it is applied.44 Also when the appearance of an article is wholly dictated by the function of the
article, or is necessarily responsive to a method of construction, it does not constitute a registerable
design.45

Pursuant to section 30 of the Act anything in an industrial design which serves solely to obtain a
technical result shall not be protected as an industrial design in Sri Lanka.46 From an IP Law
perspective, the exclusion of functional features of a product from the design protection arises
from the policy consideration that the protection of function of an article should be left for patent
and utility model protection.47

This can be because Industrial designs concern only the visible appearance of a product, and not
the technical or functional features thereof. Although the overall appearance of a product will be
determined as much by function as by aesthetics, only the features of appearance that are not
entirely determined by technical constraints may be protected as a design. 48 The appearance of a
product may result from effects applied to the surface of the product (two-dimensional features),
from the shape of the product (three-dimensional features), or - as is most usual - from a
combination of both types of features.49

Moreover section 2(2) of the WIPO model Law provides that the protection shall not extend to
manufacturing processes, the use or technical effect of the article produced to the design. Many
articles for which designs are applied are not themselves Novel, and are produced by a large

44
Intellectual Property, About Industrial designs
<http://www.esa.int/About_Us/Law_at_ESA/Intellectual_Property_Rights/About_industrial_designs>
45
WR Cornish, 'CUMULATIVE PROTECTION FOR INDUSTRIAL DESIGNS' [1973] 8(2) UBC LAW
REVIEW 221
46
Supra 43, 113
47
Supra 42, 115
48
WIPO, STANDING COMMITTEE ON THE LAW OF TRADEMARKS, INDUSTRIAL DESIGNS AND
GEOGRAPHICAL INDICATIONS, NDUSTRIAL DESIGNS AND THEIR RELATION WITH WORKS OF
APPLIED ART AND THREE-DIMENSIONAL MARKS,[2002],7
49
INDUSTRIAL DESIGNS AND THEIR RELATION WITH WORKS OF APPLIED ART AND
THREE-DIMENSIONAL MARKS, STANDING COMMITTEE ON THE LAW OF
TRADEMARKS,INDUSTRIAL DESIGNS AND GEOGRAPHICAL INDICATIONS,NINTH SESSION,
GENEVA, NOVEMBER 11 TO 15, 2002, WORLD INTELLECTUAL PROPERTY ORGANIZATION,
[DOCUMENT PREPARED BY THE SECTERARIAT],8

10

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number of different manufacturers.50 If a design for one such article for example for example
screws is dictated purely by function which screw is intended to perform protection for that design
would have the effect of excluding all other manufacturers from producing items intended to
perform the same function. Such an exclusion is not warranted unless the design is sufficiently
novel and inventive to qualify under the rigorous standards for patent protection.51

Designs which are dictated exclusively by function are therefore the proper province of patent law
and not industrial design law which is concerned only with visual effect and appearance. 52 Even
in the United Kingdom design protection excludes the method or principle of construction and the
functional features of the article. The same standard governs design protection in Australia, where
an industrial design means the overall appearance of the product resulting from one or more visual
features of the product.53

Under South Africa’s law, there is a special provision for functional design that is similar to a
utility model because it protects a new functional improvement in an object. However, it also
requires the presence of an aesthetic feature. Protection of the design is based on the drawings and
photos, whereas utility model protection is determined by the claims.

Industrial design can be protected under other Laws such as copyright and unfair competition

The “copyright approach” to design protection is fundamentally derived from “unité l’art” of
French Law.54

The design has a dual character of a work of art, since it can be considered an expression of the
designer’s creativity, cumulative with its industrial application.55 It means that the design can be
protected by at least two different regimes.56 It is possible to protect design by the copyright law,

50
Belts, screws and piston rings for example may be produced by hundreds of different manufacturers and all
articles within each class are intended to perform the same function
51
Supra 47
52
World Intellectual Property Organization(WIPO), Introduction to Intellectual Theory and Practice,
KLUWER Law International 1997, 1st edn 222
53
ibid
54
Mr. Riichi Ushiki, Legal Protection of Industrial Designs, Japan Patent office, 22
55
ibid
56
ibid

11

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since it can be considered a work of art; and by the sui generis regime of design protection due to
the industrial applicability feature. Furthermore, a trademark protection may be also possible.57

In the Sri Lankan Context, Industrial design protection suffers jurisdictional encroachments under
58
copyright, patent, utility model, trademark and unfair competition law. Moreover according to
article 28 of the IP Act, which states that ‘the protection of Industrial designs provided under this
part shall be in addition to and not in derogation of any other protection provided under any other
written Law, it appears that industrial designs can also be protected under other IP regimes such
as copy right, trademark and unfair competition. In most countries, an industrial design needs to
be registered in order to be protected under industrial design law as a “registered design”. In some
countries, industrial designs are protected under patent law as “design patents”. Depending on the
particular national law and the kind of design, industrial designs may also be protected as works
of art under copyright law.59

Objects meeting the requirements for protection under industrial design law can also be protected
under copyright law. If a design embodies elements or features which are protected by both
industrial design laws and copyright laws then claims under both laws can be made. The creator
can choose to be protected under only one of the laws but in this case they cannot then invoke the
other law when making a claim.60

Whereas an industrial design needs to be registered, in most countries copyright does not require
registration. Copyright protection lasts longer than industrial design protection. However, the right
conferred by registration of an industrial design is an absolute right in the sense that there is

57
ibid
58
Liu xiaojun, 'Novelty Requirement for Granting Patent Right for Design' (China Intellectual
Property, 2008.1.1) <http://www.chinaipmagazine.com/en/journal-show.asp?id=261> accessed 13 April 2016

59
World Intellectual Property Organization (WIPO),
<http://www.wipo.int/designs/en/faq_industrialdesigns.html#accordion__collapse__02>

60
European space agency , 'ABOUT INDUSTRIAL DESIGNS' (Space for Europe , 2000)
<http://www.esa.int/About_Us/Law_at_ESA/Intellectual_Property_Rights/About_industrial_designs/(print)>
accessed 18 April 2016

12

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infringement even though the infringer acted independently or without knowledge of the registered
design. 61

Cumulative Protection which is a hurdle for the design innovations

Once industrial processes began to be used introducing articles in large quantities, the
opportunities for commercial designers in many fields grew prolifically and the value of their work
as a means of distinguishing one manufacturer's goods from those of his competitors became
important. It was obvious that this value could be greatly increased by giving the designer power
to prevent others from using the same design, and manufacturers soon enough began campaigning
to obtain such protection for their designs.62

Thus, as aforementioned it’s evident how the Novelty requirement, Exclusion of Functional
features and other means of protection has demotivated the Sri Lankan designer industry.

According to the statistical data obtained by the National Intellectual Property office of Sri Lanka,
It’s evident that application and registration of design rights in Sri Lanka has recorded a slow
growth over the last 10 years with fluctuating numbers in certain years.63 Filings of design
applications have recorded a small increase from 345 in 2002 to 385 in 2011. Also there has been
a considerable increase in filing the registrations in the year 2006 which is 477 applications.
Nevertheless the increase has not remained constant in the following years. Significantly, in recent
years such as 2007, 2008 and 2011 there has been a decline in the number of registered designs.
In other words the rate of rejection seems to be very high. Most strikingly over the last decade, the
recorded design applications remain less than 500 per year.

Thus, one conclusion that we can draw from this data is that the design regime has not been very
64
attractive for domestic industries in Sri Lanka. Most notably in 2007, 2008 and 2011 has been

61
John b pegramt, 'THE SCOPE OF INDUSTRIAL DESIGN PROTECTION UNDER TRADEMARK AND
UNFAIR COMPETITION LAWS ' [1990] 19(1) Baltimore Law Review 22

62
WR Cornish, 'CUMULATIVE PROTECTION FOR INDUSTRIAL DESIGNS' [1973] 8(2) UBC LAW
REVIEW 221
63
Supra 30, 115
64
Ibid, 116

13

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low as less than 100 annually. One possible explanation for this decrease of registrations would be
that the high threshold of novelty, filters out many applications for designs that were not
65
universally new. Another reason that can be attributable to this situation is many design
application has fallen in to the exclusion clause for being functional and became un - protectable.
66
In Sri Lanka mainly its textiles and garments, toys, cottage industries like Handicrafts as well
as producers of gem and jewelry are the prime candidates for design protection.67 Also the major
fault in obtaining protection for minor and incremental innovations under design law is that the
scope of protection may be limited to the overall impression of the design. 68 In other words law
will not protect the underlying function or principle but rather the appearance of the product.
Therefore the minor innovations will not qualify for design protection. 69

Other reasons that can attribute cumulative protection for designs.

Lack of awareness among industries will make the application files for design protection a minor
number.70 It was also revealed that design protection was not very attractive for fast moving
industries (of short product life cycle) such as fashion designers and manufacturers due to delays
in granting procedure. In particular Novelty examination for industrial design applications is
carried out by the NIPO71 of Sri Lanka and is generally takes a quite long time.

Although the IP Act of Sri Lanka in article 2972 states and scandalous designs contrary to morality
and public order the Act does not provide any guidance as to what public order or morality means.

65
Nishantha Sampath Punchi hewage, Promoting a second - Tier protection regime for innovation of small and
medium - sized enterprises in South Asia (1 edn, Nomos Verlagsgesellschaft, Baden - Baden, Germany 2014)117

66
ibid
67
Ibid,115
68
U Suthersanen, Utility models and Innovation in Developing countries’ (2006) ICTSD Issue paper No 13, 32<
http://unctad.org/en/docs/iteipc20066_en.pdf> (accessed 18th April 18, 2016)
69
Supra 67
70
Supra 67
71
National Intellectual Property office
72
Must not be anti – social in the sense that it does not consists of any scandalous design or is contrary to
morality or public order or public interest or which, in the opinion of the Director-General or of any Court to
which such matter has been referred to is likely to offend the religious or racial susceptibilities of any
community

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And arguably it has to be understood in light of the moral and socio cultural climate of the country
which can cause severe uncertainties in granting protection.73

Comparative Jurisdictions
United States

As in the United States, the concept of design protection is incorporated into the law based on
patent-oriented approach. It is however questionable whether this legislative concept prevails in
the wider world. In European countries, design laws are copyright-oriented and EU rules on
designs have been drafted based on a design-oriented approach.74

In USA whoever invents any new, original and ornamental design for an article of manufacture
may obtain a patent subject to prescribed conditions and requirements.' Not only are novelty and
originality required but the design must be the result of invention.

This means that the protection of designs varies widely both in form and type, in a way
incomparable with patent and trademark protection. This results in many difficulties in advancing
toward the uniform international protecting of designs, though the international treaties and
agreements concerning design protection are currently in force.75

In the case Mazer v. Stein76 United States Supreme Court put an end to doubts and disputes over
the validity of copyrights in an important branch of the arts, the field of industrial design. It’s been
stated that that the scope of the Copyright Statute extends beyond the traditional fine arts and that
under copyright law the utility of an article does not render its design any less a work of art.77

Canada

73
ibid
74
Supra 40,1
75
ibid
76
Mazer v. Stein, 347 U.S. 201 100 U.S.P.Q.325.
77
Stewart l whitman , 'Preventing Design Piracy: A Copyright Law for Industrial Designs' [1955] 41(3)
American Bar Association Journal 242

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Canadian experience seems to be vague in the case of Industrial design protection because article
46 of the Canadian Copyrights Act states that This Act does not apply to designs capable of being
registered under the Industrial Design and Union Label Act, except designs that, though capable
of being so registered, are not used or intended to be used as models or patterns to be multiplied
by any industrial process.78 Also the Industrial Design and Union Label Act provides that an
exclusive right for an industrial design may be acquired by registration.

However, problems come up like when a work is an artistic work subject to copyright and when
is it a design that is not subject to copyright? When and under what circumstances may an artist or
the designer of an artistic work rest secure in his knowledge that, under Canadian copyright law,
his protection is automatic and requires no formality on his part? When may he be sure that
copyright vests in him as soon as he has made the work? When and under what circumstances
must an artist or designer decide that he is not the author of an artistic work subject to copyright
under the Copyright Act? on the contrary, the author of a design that will receive protection only
if it is registered in accordance with the provisions of the Industrial Design and Union Label Act.
These are problems of somewhat lively present interest and the ensuing discussion may possibly
assist in their solution.79

Moreover in Canada, neither the Copyright Act nor the Design Act contains any definition of a
design.80 Under this handicap81 both the Exchequer Court and the Supreme Court of Canada turned
to the English jurisprudence for assistance. In Kaufman Rubber Co. Ltd. v. Miner Rubber Co.

78
Article 46 of the Canadian Copyrights Act
79
HAROLD g fox, 'COPYRIGHT AND INDUSTRIAL DESIGNS IN CANADA' [1958] 5(3) Bulletin of the
Copyright society of USA 117
80
ibid
81
The latter Act merely provides for the keeping by the appropriate Minister of a "Register of Industrial
Designs for the registration therein of industrial designs." The proprietor applying for registration is required
to present a drawing and description of his design and 'a declaration that it was not in use to his knowledge by
any other person than himself at the time of his adoption thereof.' The 'Minister causes the design to be
examined to ascertain whether it resembles any other design already registered" and if it does not the Minister
is required to register it. The statute provides that "an exclusive right for an industrial design may be acquired
by registration of the same." As will be seen, there is no word of assistance on the vital question of what may
be registered-other than that registration is to be of "industrial designs."

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Ltd82.' MacLean J. called in aid the definition given by Parker L. J. in Pugh v. Riley83 and in
Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd.84'o Lamont J., delivering the judgment of the
Supreme Court of Canada, observed: "No definition of a 'Design' is given in the Act. The word
must therefore, be taken in its ordinary signification which Lindley L.J., in In re Clark's Registered
Design." stated means: "something marked out-a plan or representation of something.' A 'Design'
is, therefore, a pattern or representation which can be applied to a manufactured article.

United Kingdom

Even in British Law there have been cumulative protection because of the loopholes in the design
Protection Act of 1787. An industrial design might be the subject of registration rights and
copyright and reasons for this dual protection would be the deep respect of them for the act of
artistic creation and their appreciation of the need to foster it by providing adequate legal
protection.85

The relatively high novelty standard and non – protection of technical features prevent most
incremental and minor innovations from receiving protection under this mechanism.86

India

Law relating to protection of design was amended by India's Design Act, 2000 and also to comply
with the articles 25 and 26 of TRIPS agreement.87

As a developing country, India has already amended its national legislation to provide for these
minimal standards.

The essential purpose of design law it to promote and protect the design element of industrial
production. It is also intended to promote innovative activity in the field of industries. The existing
legislation on industrial designs in India is contained in the New Designs Act, 2000 and this Act

82
[19261 Ex.C.R.26 at 29
83
(1912), 29 R.P.C.196 at 202
84
[1929] S.C.R.429 at 431
85
Supra 46, 223
86
ibid
87
Nitya Nanda,Protection of Industrial Design in India: Issues and Challenges,Briefing Paper [2013] 7

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will serve its purpose well in the rapid changes in technology and international developments.
India has also achieved a mature status in the field of industrial designs and in view of globalization
of the economy, the present legislation is aligned with the changed technical and commercial
scenario and made to conform to international trends in design administration.

Recommendations
Firstly high novelty standards expected from designers should be taken down in to reasonable
levels and new inventive steps should be introduced in order to enhance the abilities of the
designers.

Normally the appearance of a product or the functional features of the shape affect technical
performance of that product, because its functions will not be performed without these features.
Thus, they may be regarded as necessary for achieving the technical performance of the product.
Although the industrial design protection is indicated only for the appearance of the product and
not for its functionalities, functional features originality should be taken into account by the
national laws.88

There need be clear standards as to what should be protected by copyrights and what should be
protected through patents and unfair competition. When all these are attributable to industrial
designs, designers will be demotivated and would cause the detriment of the industry.

Finally the industrial design application and registration system in Sri Lanka would need to be
made simpler and faster without insisting on rigorous standards of protection.

Conclusion
Firstly the importance of industrial designs in the field of Intellectual property rights has been
identified as visual appeal of a product when choosing between different options in a similar
category which would create the highest eye appeal. This has been explained in different judicial
precedents and in the Sri Lankan context chapter iii of the Intellectual property Act is dedicated to
Industrial Designs. Moreover provisions related to industrial designs in the main international
agreements of Intellectual property has been discussed.

88
World Intellectual Property Organization(WIPO), Introduction to Intellectual Theory and Practice,
KLUWER Law International 1997, 1st edn 222

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Main thrust of the research is the different hurdles for designers which prevail in the industry and
which would act as the main obstacle to the development and design innovations. Firstly, absolute
novelty will have high threshold and can exclude many design applications in the procedure.
Secondly as per the functionality doctrine, only the appearance and the outlook will be assessed
when granting protection and technical and functional features will be disregarded. And thirdly,
other than for design protection legislation there can be other means such as copyrights, patents,
and unfair competition that would add protection to Industrial designs. Afterwards it has been
discussed how this cumulative protection prevent designers from doing new designs and patterns.
There can be other factors such as delays of procedures which would make the designers
demotivated and all of these aspects has been compared with other jurisdictions of USA, UK and
Canada.

Finally the recommendations are given to soothe these rigorous standards like improving the
awareness among industries to enhance to number of application files for design protection89 and
rectifying the delays of granting procedures especially in novelty examinations90. Also in addition
relaxing the standards of the “functionality doctrine” to draw technical aspects to design
protection.

89
Ibid 117
90
Ibid118

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 Bibliography
Legislation
1. Intellectual property Act No.36 of 2003
2. the Berne Convention
3. the Paris Convention
4. Canadian Copyrights Act
5. The TRIPS agreement
6. India's Design Act, 2000
7. United Kingdom design Protection Act of 1787

Case Law
1. AMP Inc. v. Utilux Pty Ltd (1972)RPC
2. Saunders v. Weil (1893)10 RPC.
3. Dover v. Nurnberger (1910) 27 RPC 495.
4. Chawla v. Bright Auto industries AIR (1981)Del 95.
5. Philips v. Harbo (1920) 37 RPC 23 .
6. Matthew v. Thomas (1967) RPC 23.
7. Rollason (1897) 14 RPC 909
8. Mazer v. Stein, 347 U.S. 201 100 U.S.P.Q.325.
9. In Kaufman Rubber Co. Ltd. v. Miner Rubber Co. Ltd[19261 Ex.C.R.26.
10. Pugh v. Riley(1912), 29 R.P.C.196 at 202.
11. Clatworthy & Son Ltd. v. Dale Display Fixtures Ltd[1929] S.C.R.429 at 431

Books
1. D.M.Karunarathne, Elements of the Law of Intellectual property in Sri Lanka; Sarasavi
publishers (pvt) ltd
2. Uma Suthersanen, Design Law: European Union and United States of America (2nd edn,
Sweet and Maxwell limited 2010).
3. Nishantha Sampath Punchi hewage, Promoting a second - Tier protection regime for
innovation of small and medium - sized enterprises in South Asia (1 edn, Nomos
Verlagsgesellschaft, Baden - Baden, Germany 2014).

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 4. Mario Cimoli and others, Intellectual Property Rights Legal and Economic Challenges for
Development (1st edn, Oxford 2014).
5. WR Cornish, Intellectual property:Patents, copyright, trade marks and allied rights (2nd
edn, Sweet and Maxwell limited 1937).
6. World Intellectual Property Organization(WIPO), Introduction to Intellectual Theory and
Practice, KLUWER Law International 1997, 1st edn

Journal Articles
1. CR Weston, 'WESTERN AUSTRALIAN LAW REVIEW' [1972] 10(65) THE LEGAL
PROTECTION OF INDUSTRIAL DESIGNS

2. Susanna Monseau, 'THE CHALLENGE OF PROTECTING INDUSTRIAL DESIGN IN

A GLOBAL ECONOMY' [2012] 20(495) Texas Intellectual Property Law Journal 501
3. Lena schickl, 'Protection of industrial design in the US and in the EU - Different concepts
or different labels? ' [2013] 16(1-2) The Journal of World Intellectual Property.
4. WR Cornish, 'CUMULATIVE PROTECTION FOR INDUSTRIAL DESIGNS' [1973]
8(2) UBC LAW REVIEW
5. John b pegramt, 'THE SCOPE OF INDUSTRIAL DESIGN PROTECTION UNDER
TRADEMARK AND UNFAIR COMPETITION LAWS ' [1990] 19(1) Baltimore Law
Review.
6. Stewart l whitman , 'Preventing Design Piracy: A Copyright Law for Industrial Designs'
[1955] 41(3) American Bar Association Journal

Internet resources
1. WIPO Wipoint, 'Industrial designs' (World Intellectual Property
Organization, 2010) <http://www.wipo.int/designs/en/> accessed 17 January 2016.
2. World Intellectual Property Organization (WIPO), <
http://www.wipo.int/designs/en/faq_industrialdesigns.html#accordion__collapse__02>
3. Liu xiaojun, 'Novelty Requirement for Granting Patent Right for Design' (China
Intellectual Property, 2008.1.1) <http://www.chinaipmagazine.com/en/journal-
show.asp?id=261> accessed 13 April
4. China ipr sme helpdesk, 'Understanding and Using China’s Design Patent' (Understanding
and Using China’s Design Patent, 4/12/2015) <http://www.china

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 iprhelpdesk.eu/sites/all/docs/publications/China_IPR_SME_Helpdesk-
Design_Patent_Guide.pdf> accessed 12 April 2016

5. Intellectual Property, About Industrial designs

http://www.esa.int/About_Us/Law_at_ESA/Intellectual_Property_Rights/About_industri
al_designs.
6. Liu xiaojun, 'Novelty Requirement for Granting Patent Right for Design' (China
Intellectual Property, 2008.1.1) <http://www.chinaipmagazine.com/en/journal-
show.asp?id=261> accessed 13 April 2016

7. World Intellectual Property Organization (WIPO), <

http://www.wipo.int/designs/en/faq_industrialdesigns.html#accordion__collapse__02>
8. European space agency , 'ABOUT INDUSTRIAL DESIGNS' (Space for Europe , 2000)
<http://www.esa.int/About_Us/Law_at_ESA/Intellectual_Property_Rights/About_industr
ial_designs/(print)> accessed 18 April 2016
9.

Other resources
1. Angela Dumas, Theory and practice of Industrial design; Report produced for the EC
funded project INNOREGIO: dissemination of innovation and knowledge management
techniques, 2000

2. T. Fryer William , 'Protection of Ornamental Designs of Useful Articles-the Legislative

Opportunity' [1982] 111(APPENDIX 3) HR 20 97th Congress 1st Session, symposium
meetings 160.
3. WIPO, STANDING COMMITTEE ON THE LAW OF TRADEMARKS, INDUSTRIAL
DESIGNS AND GEOGRAPHICAL INDICATIONS, NDUSTRIAL DESIGNS AND
THEIR RELATION WITH WORKS OF APPLIED ART AND THREE-DIMENSIONAL
MARKS,[2002].
4. INDUSTRIAL DESIGNS AND THEIR RELATION WITH WORKS OF APPLIED ART
AND THREE-DIMENSIONAL MARKS, standing committee on the law of
trademarks,industrial designs and geographical indications,Ninth Session, Geneva,

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 November 11 to 15, 2002, World Intellectual Property Organization, [Document prepared
by the Secterariat].
5. Mr. Riichi Ushiki, Legal Protection of Industrial Designs, Japan Patent office.
6. U Suthersanen, Utility models and Innovation in Developing countries’ (2006) ICTSD
Issue paper No 13, 32< http://unctad.org/en/docs/iteipc20066_en.pdf> (accessed 18th April
18, 2016)
7. HAROLD g fox, 'COPYRIGHT AND INDUSTRIAL DESIGNS IN CANADA' [1958]
5(3) Bulletin of the Copyright society of USA 117
8. Nitya Nanda,Protection of Industrial Design in India: Issues and Challenges,Briefing Paper
[2013]

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