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INDUSTRIAL DESIGNS

DESIGN RIGHTS HAVE AN IMPORTANT ROLE TO PLAY IN THE FASHION INDUSTRY

Industrial designs
Refers only to the ornamental or aesthetic aspects of a product, and is distinct from any technical or functional aspects. An industrial design consists of: - Three-dimensional features, such as the shape of a product, - Two-dimensional features, such as ornamentation, patterns, lines or colors of a product; or - A combination of one or more such features.

A three-dimensional design

A two-dimensional design

DESIGNS CAN BE 2D OR 3D OR COMBINATION OF BOTH


Surface pattern (2D)

Cut of the garment (3D)

Application of Design in Industries


Small Scale Industries:
Shoe, Chappal, Pen, Textile Goods, Carpet, Wall Clock, Ceramic Tiles, Plumbing Equipments, Sanitary Goods, Package, Chairs, Tables, Photo - Frame, Tiffin Box, Water Jug, Casserole, Water Bottle, Bags, Suitcase, Flower Vase, Ash-Tray, Tooth-Brush, Toy, Fan etc.

Medium Scale Industries:


Washing Machine, Refrigerator, Television, Computer, A.C. Machine, Wrist Watch, Mixer-Grinder, Vacuum Cleaner

Consumer Products

Pharmaceutical Product

Textile & Jewellery

Computer-generated graphic symbols, screen displays, graphic user interfaces, web pages are also protected under industrial design.

Industrial designs
New and original designs are created to: 1. Customize products to appeal to specific market segments 2. Create a new niche market 3. Strengthen brands

Why protect industrial designs?


An industrial Design adds value to a product. It makes a product attractive and appealing to customers, and may even be its unique selling point. The owner obtains the exclusive right to prevent its unauthorized copying or imitation by others.
This includes the right to exclude all others from making, offering, importing, exporting or selling any product in which the design is incorporated or to which it is applied.

Improves the competitiveness of a business and brings in additional revenue in following ways:

Why protect industrial designs? Registering a valuable design contributes to obtaining a fair return on investment (creating and marketing the relevant product) and improve your profits. ID designs are business assets that can increase the commercial value of a company and its products. A protected design may also be licensed (or sold) to others for a fee. Registration of industrial designs encourages fair competition and honest trade practices aesthetically attractive products.

Protecting Industrial designs:


Under industrial design law the industrial design generally needs to be registered in order to be protected by the applicant before publication or public use anywhere, or at least in the country where protection is claimed.

To register an industrial design you must file an application at the national intellectual property (IP) office of the country where you are seeking protection.

Protecting Industrial designs


For some countries or common economic areas such as the European Union, where recent legislation has made it possible to obtain limited industrial design protection for unregistered designs for three years from the date on which the design has been published in the European Union.

Protecting Industrial designs


The unregistered design provides companies with the opportunity to test market their products before going through the effort and expense of registering all designs, many of which may not succeed in the marketplace. In addition, some designs may remain on the market for a very short time, especially in the fashion industry.

Protecting Industrial designs


For such products, the unregistered design provides a good alternative. However, once the product is manufactured, designers have up to 12 months in which to register it. The protection provided to an unregistered design is limited, in that it is more difficult to enforce than for a registered design, and shorter, as it lasts for three years as opposed to the 25 years provided to registered designs in the European Union.

Requirements for Registration


A Design must: Be New Be Original Be Distinguishable from known designs Be applied to an article:
e.g., three-dimensional- Shape of a bottle or flower vase two dimensional- design on a bed sheet

Not be disclosed to public in any form Appeal to eye Not comprise of obscene matter Not be contrary to public order or morality

Requirements for Registration


The design must be new. A design is considered to be new if no identical design has been made available to the public before the date of filing, or the application for registration. The design must be original. A design is considered original if it has been independently created by the designer and is not a copy or an imitation of existing designs.

Requirements for Registration Novelty is judged solely by eye w.r.t. external appearance of the finished article. Design must have a visual appeal. Feature to be registered must appeal to the eye and be judged by the eye. Neither constructional details nor utility of article are relevant for registration Novelty may reside in its application to article Absolute novelty- i.e. Not publicly known or used in India or elsewhere. Strikingly different appearance

A DESIGN UNDER THE DESIGNS ACT, 2000


2D or 3D features of shape, configuration, 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 EXCLUDED FROM PROTECTION


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

What cannot be protected by industrial design rights ? 1. Designs that do not meet the requirements of novelty, originality and/or individual character. 2. Designs that are considered to be dictated exclusively by the technical function of a product. 3. Designs incorporating protected official symbols or emblems. 4. Designs which are considered to be contrary to public order or morality.

NOT REGISTRABLE ARTICLES - Calendar, certificates, forms, greeting cards, leaflets, Maps, building plan, medals - Labels, tokens, stamps - Religious symbols - Building and construction or real estate - Flags, emblems, or signs of any country, computer icons - Layout designs of integrated circuits - Mere workshop alteration - Mere change in size - Any principle or mode of construction

Handicrafts
Some countries exclude handicrafts from design protection, as industrial design law in these countries requires that the product to which an industrial design is applied is an article of manufacture or that it can be replicated by industrial means.

The International Classification System


Locarno Classification system Designs is divided into 32 classes. The application for design has to be filed in a particular class to obtain protection in that class.

Classifications pertaining to Fashion Industry : CLASS 2: Articles of clothing and haberdashery CLASS 3 :Travel goods, cases, parasols and personal belongings, not elsewhere specified. CLASS 5 :Textile piece-goods, artificial and natural sheet material CLASS 6 :Furnishing CLASS 10 :Clocks and watches CLASS 11: Articles of adornment. CLASS 26 :Lighting apparatus CLASS 28: Pharmaceutical and cosmetic products, toilet articles and apparatus CLASS 99 :Miscellaneous.

Registration of a design 1. Fill in the application form provided by your national IP office including your name, contact details and drawings, and/or photographs of the design.

Registration of a design 2. You may also be required to file a written description or statement of novelty of the industrial design. The description generally needs to be of the design and not of the product to which it has been applied. It should cover all the distinctive aesthetic features of the design and should describe which feature is most important.

Particulars required for application


(i) Application form 1, with Fee of Rs. 1,000/Should contain full name, nationality, address, class no, articles name and address for service in India. (ii) Four sets of Representation sheets in durable paper of A4 size, pasted with the photographs/ drawings of the article from different angles.

(iii) Power of attorney (if required)


(iv) Priority document (for convention application).

Priority Date in case of Convention Applications


Any person who has applied for protection for any design in the convention countries or group of countries or countries which are members of inter-governmental organizations, or his legal representative or assignee, either alone or jointly with any other person, is entitled to claim registration of the said design citing a priority date in India. This date is the date of filing of the application in any of the countries mentioned above. However, the application should be made in India within six months from the date of application for registration in those countries.

Contd

Contd from previous slide

PREPARATION OF THE REPRESENTION SHEET


A4 Size white durable paper Sheet nos. To be mentioned in each sheet Photographs/line diagrams/ computer graphics of the article Name of the views Statement of novelty Disclaimer Signature of the applicant/ agent DATE

REPRESENTATION SHEET
Name of the Applicant XYZ, PVT.LTD. Date :No. of sheet - 05 Sheet No.- 01

Side view

(1) STATEMENT OF NOVELTY


(2) DISCLAIMER
1

Signature of Applicant

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Registration of a design 3. You will also be required to pay the appropriate filing fee. 4. You may choose to employ an IP agent to assist you in filing the application and completing the registration process. You will also have to file a document certifying the transfer of power to your representative.

Registration of a design
Some offices register the design only after undertaking a formal examination to ensure that administrative formalities have been complied with.

Others may conduct a substantive examination checking the existing designs on the register for novelty and/or originality.

Registration of a design Once a design is registered, it is entered into the design register, published in the official design gazette and a design registration certificate is issued. In some countries/regions, it may be possible to request deferment of publication in which case the design will be kept secret for a certain period specified by the relevant law.

The process of registration of an industrial design generally takes six to 12 months. The term of protection for a registered industrial design varies from country to country, but it is usually at least 10 years. An industrial design is valid in India for 10 + 5 years. Registration initially confers this right for 10 years from the date of registration. It is renewable for a further period of 5 years. If the fee for extension is not paid for the further period of registration within the period of initial registration, this right will cease.

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

Grace period
In some countries, the legislation allows for a grace period for registration of generally six months or a year from the moment a design was made public, disclosed or published. This is the case when articles bearing the design are sold, displayed at a trade show, exhibition or fair, or are published in a catalogue, brochure or advertisement prior to filing an application.

During that period, you may market your design without it losing its novelty and you may still apply for registration.

Grace period
Under Designs Act, 2000 The application for registration is made within six months from the date of first exhibiting the design or article or publishing a description of the design.

Cost to protect an industrial design 1. Registration fees to be paid to the national or regional IP office. 2. Costs associated with the hiring of the services of an IP agent to assist you in the registration process. 3. Most countries require the payment of renewal fees, usually on a five-year basis, to maintain their exclusive rights over an industrial design. 4. Costs associated with the translation of the industrial design if it is to be protected abroad.

Who owns the rights over an industrial design?


The creator of a design - the designer, is usually the first owner of the design, unless there are special circumstances. Eg: in most countries, if an employee has developed a design under the terms of an employment contract, that is, during his working hours within the enterprise and as a part of his regular duties within the enterprise, the design (and the related rights) will belong to the employer or may require to be transferred by a formal written assignment.

Who owns the rights over an industrial design?


If the design was developed by an external designer under contract, the rights will generally belong to the company that commissioned the design.

Registration of many different designs through a single application? The answer varies significantly from country to country. In many countries, you may apply for the registration of many designs (10, 20 or even 50 designs) through a single application as long as they all relate to the same product or class of products. In some countries, however, you may have to file a separate application for each design.

Many of these countries, while limiting an application to a single design, permit several variants of that design.

Variants would include, for example, two earrings, which differ in that one is a clipon and the other is for pierced ears.
To be considered variants, the designs must be applied to the same article and must not differ substantially from one another.

Some countries allow for an exception to the single design rule when all the designs relate to a set of articles.

A set, on the other hand, is defined as a number of articles of the same general character which are normally sold together, or intended to be used together, and which share some common design features. Examples include, cutlery (forks, spoons, knives) and household appliances (a hairdryer and its nozzles and brushes).

Licensing your industrial designs


Industrial designs are licensed when the owner of the design (licensor) grants permission to another person (the licensee) to use the design for whatever mutually agreed purposes. In such cases, a licensing contract is generally signed between the two parties specifying the terms and scope of the agreement. Authorizing others to use your industrial designs through a licensing contract will enable your business to receive an additional source of revenue and is a common means of exploiting a companys exclusivity over its registered designs.

Protect designs abroad


Export products bearing an original design.

Intends to license the manufacture, sale or export of such products to other firms in foreign countries, it should consider protecting its designs in such countries in order to enjoy the same benefits of protection abroad as it enjoys in the domestic market.

Protect designs abroad


Industrial design protection is territorial. This means that industrial design protection is generally limited to the country or region where you have registered your design. You usually have six months from the date on which you applied for protection in the first country to claim the right of priority when you apply for design protection in other countries. Once this period has lapsed, you will be unable to apply for design protection in foreign countries, as your design will no longer be considered new.

Protect designs abroad


There are 3 ways of protecting your industrial designs abroad: 1. The National Route: Companies may seek protection by applying separately to the national IP offices of each country in which they intend to obtain protection.

2. The Regional Route: If you are interested in a group of countries that are members of regional agreements which enable the registration of designs, then you can consider filing a single application at the regional IP office concerned.

Protect designs abroad


3. The International Route: Companies that wish to register their designs internationally in several countries may also use the procedures offered by the Hague Agreement concerning the International Deposit of Industrial designs. An applicant can file a single international deposit either with WIPO or the national office of a country which is party to the treaty.

Protect designs abroad


The design will then be protected in as many member countries of the treaty as the applicant wishes. The agreement provides applicants with a simpler and cheaper mechanism for applying for industrial design registration in various countries.

Enforcing Your Industrial Designs You are responsible for monitoring the use of your design in the marketplace, Identifying any imitators or counterfeiters and deciding whether, how and when to take action against them. Whenever there is an infringement, you may send a cease or desist letter informing the infringer of a possible conflict between his design and your exclusive rights. The assistance of a lawyer in drafting such a letter is recommended.

Enforcing Your Industrial Designs In order to prevent the importation of infringing goods, measures at the international border are available to the design owner in many countries through the national customs authorities.

Other Legal Instruments for Protecting Industrial Designs In some countries, the applicable law recognizes copyright protection for certain designs, for example, in the design of textile and fabrics. In many countries you may obtain cumulative protection, (i.e., copyright protection and industrial design protection) which can exist concurrently for the same design, while in a few countries, the two forms of protection are mutually exclusive.

Alternate ways of protecting Industrial designs


Depending on the particular national law and the kind of design, one such alternative for protecting designs is copyright law. Copyright generally provides exclusive rights for literary and artistic works. As some designs may, in some countries, be considered works of art or applied art, copyright protection may apply and may represent an attractive option for SMEs.

SECTION 15(2), COPYRIGHT ACT, 1957

Copyright does not subsist in design registered under the Designs Act.
Design capable of being registered, but which has not been so registered enjoys copyright protection. Copyright ceases as soon as article to which the design has been applied has been reproduced >50 times by an industrial process

Copyright & Designs Law


Important to maintain documentation and records at every stage of product design and development as this may help in claiming protection for a design under the Copyright Act. If you think of getting into mass production of a unique design, file a design application as that would provide you stronger protection & complete monopoly.

Cases
Samsonite Vs. Vijay Sales 1998 PTC 372
Suitcases made by plaintiff copied by defendant The entire range was copied Claim was based on drawings & copyright No registered design No protection granted as it is manufactured industrially more than 50 times.

Industrial design
Under industrial design law the industrial design generally needs to be registered by the applicant before publication or public use anywhere, or at least in the country where protection is claimed.

Copyright
Copyright in works considered to be original subsists without formalities. While registration is not necessary for protection, copyright depositaries exist in some countries where you may deposit your design and obtain a certificate.

Industrial design protection generally lasts for a period that varies between 10 and 25 years depending on the country where protection is sought.

Copyright endures in most countries for the life of the author and 50 or 70 years after his death.

The right conferred by registration of an industrial design is an absolute right in the sense that there is infringement whether or not there has been deliberate copying.

To enforce rights under copyright law, the copyright owner must prove that the allegedly infringing work is a direct or indirect reproduction of the work protected by copyright.

Alternate ways of protecting Industrial designs


In addition, in some countries, if an industrial design functions as a trademark in the marketplace, then it may be protected as a three-dimensional mark. This may be the case when the shape of the product or its packaging are considered to be distinctive. The bottle of Coca-Cola or the triangular shape of the Toblerone chocolate bar are some such examples.

What if your design combines functional improvements with aesthetic features? Many designers protect different aspects of their products with different intellectual property rights. Patents and utility models are for inventions that bring about functional improvements to a product and Industrial design protection is for the appearance of the product.

Alternate ways of protecting Industrial designs


Laws on unfair competition may also protect a companys industrial design in some countries from imitation by competitors. However, protection under unfair competition is generally significantly weaker and infringement is more difficult to prove.

Precautions
Create and develop the concepts and specifications that optimize function, value and appearance of products.
Enormous amount of creativity and potential of Indian designers can be supported by Design rights. Do not wait till your design gets copied. Think of protecting design from the beginning which can have commercial value.

Precautions
Treat your design as confidential till you file an application. Clarify the ownership of the designs.
Maintain records at every stage of product development. Commercialize your design through license arrangements.

EXAMPLE Company A has successfully invented a new laptop with lots of additional features over the existing ones. They call it HAPPY and use a phrase Use it, enjoy it for marketing it. The rights under which they can seek protection: Patent Technology Copyright Plans & drawings Trademark slogans (Use it, enjoy it) Trademark HAPPY Industrial design overall look Trade secret production plans

The Suneet Verma controversy Lessons to be learnt


Suneet Varma Design Pvt. Ltd. Vs. Mr. Jas Kirat Singh Narula Where central female protagonist of film is shown wearing a particular dress designed by a designer, producer of film, notwithstanding his defense that he has engaged some other costume designer who has supplied dress, is a necessary and proper party in a case alleging infringement of copyright.

The Suneet Verma controversy Lessons to be learnt o At the same time, if you need to use a design, do due diligence over its ownership give credit take a license if you do need to use it.

Cases
Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del) Case relating to design of upholstery Plaintiff claimed to have copyright in the artistic work applied to upholstery design Did not have a registered design however they claimed a copyright in the drawings

Cases
Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del)
Question was whether without a registered design, the plaintiff could protect the same and whether the copyright was lost because of more than 50 reproduction of the said upholstery fabric design

Cases
Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del)
The Court although upholding that the motives etc. of the plaintiff was artistic and also holding that the defendants had copied it, on a legal and technical argument that more than 50 reproduction had been made, refused to grant injunction

Dabur India Ltd. Vs. Rajesh Kumar & Ors 2008 (37) PTC 227
Suit filed alleging infringement of design in respect of a bottle which is being used by plaintiff for packing hair oil Court found plaintiffs bottle to be common bottle used by several other companies Bottles were held to be in use much prior to the registration of the design of the plaintiff No peculiar feature of the bottle registered as a design and the plaintiff had not pin pointed any novelty in the design of the bottle Held that for validly of the registered design there must be some novelty and originality in the design sought to be protected and it must have not been pre-published

Cases
1997(17) PTC 268: Baldev Singh vs. Shriram Footwear
Plaintiff claimed an injunction on the ground that his designs of shoe soles had distinctive shape and configuration During the course of argument, it was revealed that the plaintiff himself had copied designs from Bata India Ltd. Thus Court had held that the plaintiff himself being a pirater, no injunction can be granted in favour of the plaintiff

Hindustan Sanitaryware & Industries Ltd. vs. Dip Crafts Industries: 2003(26) PTC163 (Del)
Case under the Designs Act, 2000 Plaintiff had claimed that defendants copied the design Stylush, Corel and Ultra in respect of bath tubs Defendant had not established that he had been selling bath tubs prior to the registration obtained by plaintiff in respect of similar designs Plaintiff had a registered design Sufficient resemblance between the two designs and the plaintiffs design was protected