Intellectual Property Rights &

Design Law

Urvi Shah
Assistant Professor of Law
Unitedworld School of Law

Knowledge Economies

21st Century is the often labeled as the

century of Knowledge as the ability to
create, access and use knowledge has
become
even
more
than
before
a
fundamental
determinant
of
global
competitiveness
of
enterprises
and
Economies.

Knowledge Economy has brought about

structural changes to the economies of
developing
countries
making
it
indispensable for companies and policy
makers to address new challenges.

Globalization and Intellectual

Property Rights

Globalization or (globalization) is the process

by which the people of the world are unified
into a single society and function together
Competition
not
confined
to
national
boundaries
Sources
of
competitiveness
shifting
to
knowledge-based factors of production (high
technology and specialist skills)
Intellectual
Property
Rights
(IPR)
are
monopoly rights granted by the State to an
inventor/author for the protection of certain
intangible creations

Increasing value of Intangible

Assets

Over 80% of the market value of Microsoft

derives from its intangible assets, especially
its intellectual property.

The value of the Coca-Cola trademark

exceeds US$ 50 billion.

Kinds of Intellectual Property

Copyright
Patents
Trademark
Industrial design rights
Utility models
Geographical indication
Trade secrets
Layout Designs of
Integrated Circuits
Plant variety Protection
and Farmers Rights

IP Scenario in India

For an economy that is growing as fast as Indias

and is touted globally as an emerging
powerhouse, the IP scenario in the country

remains at a nascent stage.

intellectual
protection in India are very low in
A look at other countries reveals

comparison to many developing countries such

as China, Korea, even a small country like
Taiwan.

IP
regime must be such that it fulfils the
needs of all the sectors.
India still has a long way to go and hence

Innovation is the key to survival

for Indian Business

If you always
do what youve
always done
youll always get
what you always
got (or worse)

Why Design has become important

?Apples Revolutionary
Designs
Designer: Jonathan Eve
Apple has put the design
of great customer
experiences on the
forefront.
1,273% rise in Apple
shares over the past 10
years
Excellent Designs:
Apples way to earn
billions of dollars
UNIQUE & INNOVATIVE
DESIGN CAN THUS BE THE

Why Design Law ?? What is the

objective of Design Law?

Now a days ,the appearance of the product is

one of the most crucial determining factors
in consumer choice.
Progress in science and Technology
It was felt that the legal system of protection
of Designs Requires to be made more
efficient in order to ensure effective
protection to Registered Designs.
Promote Design Activity in order to promote
Design Element.

Various components of a product

can be protected by different IP

The same bottle

could be protected
by
Industrial design
Trademark
Patent

DESIGNS

Functional /
utilitarian

Patents
Act, 1970

Purely
artistic works

Copyright
Act, 1957

Designs with
eye-appeal & capable of
Industrial application

Designs
Act, 2000

The Definition of design under

Section 2(d) The Designs Act,
2000
2D
or 3D features of shape, configuration,
2D or 3D features
pattern, ornament, composition of lines, colours

Applied to any article by any industrial process

or means

The finished article appeals to the eye

Does not include anything which is in substance

a mere mechanical device
Not an artistic work or trademark

Designs can be 2d or 3d or
combination of both

Surface pattern
(2D)

Cut of the garment

(3D)

Definition of the article under

Section 2(a) of The Designs
Act,2000

"article" means any article of

manufacture and any substance,
artificial, or partly artificial and partly
natural; and includes any part of an
article capable of being made and
sold separately

Designs excluded from protection

Section 4 of The Designs Act,2000

Not NEW or ORIGINAL

If the design has been disclosed to the public

in India or elsewhere (exception is provided
for exhibitions)

Not significantly distinguishable from known

designs or a combination of known designs

Comprises or contains scandalous or obscene

matter

NEW OR ORIGINAL

Original: Means that it must originate

from the creator

New: May involve a design which is known

but is applied for the first time to that
article

But over the years, the test has become

NEW AND ORIGINAL

The degree of novelty required

New or original does not simply

mean different

A trade variant of an old design does

not make it novel

Substantial novelty required

Trade variants

Le May v. Welch:
It cannot be said that there is a new
design every time a coat or waistcoat
is made with a different slope or
different number of buttonsto hold
that would be to paralyse industry.

Thus, trifling variations/immaterial

details would not be considered
NEW

what is novelty??

Strikingly different appearance

Pattern made up of old features but

resulting combination with strikingly
different appearance can be novel

Requirement of non-disclosure

Prior to application, one should be

careful not to launch the design into
the market

The Design, prior to the filing of the

application should be treated as
confidential information

What if your design is also

functional?

The intent of the Designs Act is to

protect shapes & not functions

But, there may be a design which also

has functional features

Test is to see if design is solely

dictated by function. If yes, it will not
be registrable

WHY REGISTER YOUR DESIGN

under the Designs Act ?

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

11]

Gives you a Unique Selling Point (USP)

Is an asset & can be licensed

[Section

Case Law: Reckitt & Coleman

(RCI) vs.Renkit Industries (RIL)
RCI filed a case in the Kolkata High Court in
India against
RIL on the grounds of
infringement of their design registered harpic
bottle. The principal basis of the allegation was
the inclined nozzle besides allegation of passing
off.

Plainti
ffs
Design

Accused
Design

VARIOUS PRODUCTS
IN MARKET

Decision in the above case

The defendant RIL argued that the nozzle

angle is solely dictated by function and
hence is not a subject matter for a design
registration. Moreover other competing
products
in
the
market
also
have
same/similar angle of the inclined nozzle.
The Court refused injunction

Who can apply for a design

registration?

If design has been specially commissioned

for good consideration, the person for whom
it is executed

An assignee or exclusive licensee

In any other case, the AUTHOR

Importance of getting clarity on

ownership of the DESIGN

In the context of joint design efforts, who

owns the design should be spelt out in the
contract

Also, where a part of the design process is

sourced out, it should be spelt out

While designing for someone else, be clear

in the contract on who owns the design

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

Licensing of a Design

The design can be licensed to third parties

to exploit markets or commercialise it on a
scale much bigger scale than the resources
of the author

Essential to specify in the license- the term,

territory, amount of royalty & type of
products for which design can be used by
licensee

Piracy of registered design

[Section 22]

Anyone who applies or causes to be applied

to any article the design or any fraudulent
or obvious imitation of it

To see whether the essential design features

are substantially similar between the article
and the design representation

It is the overall general impression

similarity which is taken into account

of

Important Aspects

Dont just wake up when your design gets

copied, start thinking about it from Day 1 of
product creation and development.

A unique design for which you see

commercial value and which you intend to
commericalise, get it registered as a design

Till the time you file a design application,

treat it as confidential when you need to
disclose it to wholesalers/exporters/in a
portfolio

Have clarity on the ownership of the designs

that you create by entering into contracts
that spell out who owns the designs

Maintain documentation and records at

every stage of product development helps
you claim copyright even if your design is
unregistered

When using designs, do your due diligence

on the ownership of these designs give
credit, take licenses

Commercialize your design through license

arrangements

Thank you