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INSTITUTE OF INTELLECTUAL PROPERTY STUDIES


Importance of Industrial Designs
| ID adds value to a product- great marketing
tool
| Makes a product visually appealing &
attractive-article with a design may sell better
than one without it
| Distinguishes a product from others in the
market place
| Specific designs appeal to specific market
segments- Swatch
| Creative designs create niche markets for
products
| Designs help build brands & customer loyalty
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hat is Industrial Design??
| Refers to a products overall/finished form &
function
| Refers only to the ornamental or aesthetic
aspects of a product-impression on sight
| Must consist of shape & configurations
| Refers to the external features of the
product
| Is distinct from the technical & functional
aspects of product

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@ssential Features of ID
| Must be new and original-wrt class of
article to which applied
| Should create new visual appeal
| Should not have been published earlier
| Refers to features applied to the article
and not the article itself
| Should not be defy public order &
morality
| Also includes electronic desktop icons,
etc
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2wo and three dimensional

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hy IDs Must Be Protected?
| Designs are protected through registration.
| Regn prevents unauthorized copying or
imitation of owners designs
| Strengthens competitive position
| @nsures fair return on investment made in
creating & marketing product
| ID are business assets-valuable IPs- increase
commercial value of a company
| Protection encourages fair competition &
honest trade practices

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Protecting IDs
| National Design Law-registration, in order to be
protected
| Under Copyright laws- designs also considered works
of art & artistic expression- attractive option
| Protection period ranges from 10 to 25 years-
includes in some countries µgrace period¶ for regn

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hat cannot be protected?
| Designs that do not meet standards of
originality, novelty and individual character
| Designs disclosed to the public
| Designs dictated exclusively by technical
function of the product-such design features
may be protected by other IP rights
| Designs not distinguishable from known
designs
| Designs incorporating official symbols/
emblems
| Designs contrary to public order & morality
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(istory of Designs
| Importance of designs was recognized way back in 1787
in UK- beginning of industrial revolution
| 1st law protecting ID was in relation to 2extile industry
| 2he Designing & Printing of Linens, Cottons & Muslins Act
of 1787 gave protection for a period of 2months to every
person who invented, designed or printed any new &
original patterns for aforementioned materials
| 2he Patents and Design Act, 1872 was the first piece of
Legislation on the subject, in British India.
| Designs Act was passed in 1911 as part of the Patent &
Designs Act 1911
| 2RIPS obligations- new Designs Act 2000 introduced

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Design Act 2000

| Purpose is to protect novel designs, devised & applied to


articles to be manufactured & marketed commercially
| Object is to see that the originator of a profitable design
is not deprived of his just rewards by others applying it
to their goods
| Act also intended to promote and encourage design
activity, innovation and creativity
| Also ensures that the law does not unnecessarily extend
protection beyond what is necessary
| Contains provisions for non-registrable designs
| @xtends period of protection- 10+5

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Designs Contd
| Designs means ONLY 2(@ F@A2UR@S OF S(AP@,
CONFIGURA2ION, PA22@RN OR ORNAM@N2
applied to any article- V 

    V
| Designs are aesthetic impressions of the finished
article solely judged by the @Y@- eg for a dress-
buttons, a frill, a smock, collars, halters, gathers
| ID protection is concerned solely with protecting
appearance and not functions of the articles
| Sec. 5- any person who is the µproprietor¶
/author of new & original design may register
the design
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Conditions for Registration of IDs
| ORIGINAL/New- not previously seen or
published
| NOV@L2Y- must be substantial- a known design
can be applied to a new article- shape of teddy
bear for a school bag
| 2est of novelty is in the eye of the arbiter-
determination rests on the general impression
| A combination of known designs can be
registered if the combination produces a new
visual appeal
| Color per se is not design -can form part of
design
| No registration, no protection
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Miscellaneous

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Issues of Publication
| Designs must not be previously published -
cannot be claimed as new or novel
| Publication means if knowledge was made
available to public- actually shown or disclosed
or public put in possession of design
| Publication of two types:
In prior documents like in the inventory of a
fashion house or
By prior use like exhibition in a fashion show

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Other Conditions
| Design should not be previously published
in any other country
| Should be reproducible by industrial means
| Should not be contrary to public order and
morality, not scandalous/obscene
| Should be significantly distinguishable
| Should be appealing
| Should not be a mere mechanical or
functional device- a curved handle of a
toothbrush
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ho can file for registration?
| Proprietor of new or original design-sec 5
| Proprietor is:
Author of the design who for consideration executes
the work for another
Any person who acquires the design or right to
apply the design
Author of the design generally or his agent
| A foreigner can also apply for registration of design
| (ague System for international registration gives
owner of ID the facility to have design protected in
several countries by filing single application with IB
in IPO

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Procedure for Registration
| Submission of application
| Acceptance/objections/refusal
| Removal of objections to be removed in a
month or appeal to central govt.
| Decision of central govt- direct registration
& publication
| Registration of Design- register of Designs-
maintained on computer & certificate of
registration

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Design Right
| @xclusive right conferred - termed as µCOPYRIG(2 IN
D@SIGN¶
| Protection for 10 years , on application extension
of further 5 years
| Registered designs cannot be protected under
the Copyright Act.
| Otherwise Copyright Act may protect designs as
artistic expressions - certain designs may qualify
for registration under both- but not for the same
subject matter
| Owner of the right can then sell, distribute,
license, exploit his right in any manner he
chooses
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Piracy of Designs
| Big problem-  

 
| Section 22- provisions for infringement
| Fraudulent & obvious immitation- distinction
| Pirated design must be identical or similar to
the registered design- Õ     

 ÕV -functional similarity not included eg
pens, watches, clocks, chairs etc
| 2est-¶ordinary observer¶-person of average
intelligence-is fooled or not
| Pirator seeks to gain commercial benefit from
act of infringement

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Remedies for Infringement
| In case of infringement of registered designs
maximum fine of Rs. 25000/-
| 2otal sum recoverable cannot exceed
Rs.50,000/-
| Civil Suit for recovery of damages
| Suit can be instituted in District Cout or (igh
court depending on quantum of damages
| Injunction against the infringer
| Burden of proof on the party making the
charge

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Designs and Copyrights
| Copyrights lie in original artistic, literary, musical &
dramatic works, ads, photos, cinematic expressions all of
which have design elements
| No statutory requirement for registration of copyright
| Lithographs,etchings, drawings, paintings,maps,
diagrams, models, plans are all subject of copyright but
not designs.
| Fashion designers generally protect themselves under CA
| Protection under copyright laws will cease when the
article to which the design has been applied has been
reproduced more than 50 time
| Copyright can be claimed in fabric patterns but in dress
patterns sketches, cutting pattern and prototype will
have copyright.
| Copyright -life of author + 60 year- BuntyBabli case
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Piracy of Designs

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Provisions under Customs Law
| Custom Authorities recently promulgated-
IPR(Imported Goods) @nforcement Rules, 2007
| Rights holder can record registered designs with
custom authorities
| 2o prevent/prohibit importation of goods
infringing rights of holder
| @mpowers customs to seize infringing goods
without court orders
| On acceptance of notice, registration valid for a
period of 1 year ± customs assistance
| Authorities act on info or suo moto- suspend
goods or even destroy/dispose them
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Conclusion
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  Õ  Õ   V 
 V VÕ 
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So knowledge must be protected!

  
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