Module 5

Part 1: Industrial Designs

Part 2: Geographical Indication
Part 3: Case Studies on Patents
Industrial Designs
• ‘Design‘ is defined as the features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any article.
• The Design may be of any dimension i.e. one or two or three
dimensional or a combination of these.
• It may be created by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the
finished article appeal to and is judged solely by the eye.
• ‘Design‘ does not include any mode or principle of construction or
anything which is in substance a merely mechanical device.
• The main object of registration of industrial Designs is to protect and
incentivize the original creativity of the originator and encourage
others to work towards the art of creativity.
Eligibility Criteria
• Novel or Original
• Significantly Distinguishable
Acts and Laws to Govern Industrial
Designs
• In India, Industrial Designs are governed under ‘The Designs Act‘,
2000 and ‘Design Rules‘, which have been amended from time to time
in 2008, 2013, 2014 and 2019.
• The Design should include the following characteristics:
• It should be novel and original.
• It should be applicable to a functional article.
• It should be visible on a finished article.
• There should be no prior publication or disclosure of the Design.
 Some of the famous Industrial Designs are
mentioned below:
• Coca-Cola Bottle
• Piaggio Vespa
• iPhone
• Mini Cooper
• Rocking Wheel Chair
• Juicy Salif
Design Rights
• The Design registration also confers a monopolistic right to the
Proprietor by which he can legally exclude others from reproducing,
manufacturing, selling, or dealing in the said registered Design
without his prior consent.
• The Design registration is particularly useful for entities where the
shape of the product has aesthetic value and the entity wishes to
have exclusivity over the said novel and original Design applied to its
product(s) or article(s).
Enforcement of Design Rights
• Once the applicant has been conferred with the rights over a specific Design, he has
the right to sue the person (natural/entity) if the pirated products of his registered
design are being used.
• He can file the infringement case in the court (not lower than District Court) in order
to stop such exploitation and for claiming any damage to which the registered
proprietor is legally entitled.
• The court will ensure first that the Design of the said product is registered under the
Designs Act, 2000.
• If the Design is found not registered under the Act, there will not be legal action
against the infringer.
• If the infringer is found guilty of piracy or infringement, the court can ask him to pay
the damage (₹ 50,000/-) in respect of infringement of one registered Design.
Non-Protectable Industrial Designs in
India
• Any Industrial Design which is against public moral values.
• Industrial Designs including flags, emblems or signs of any country.
• Industrial Designs of integrated circuits.
• Any Design describing the ‘process of making of an article‘.
• Industrial Designs of – books, calendars, certificates, forms and other
documents, dressmaking patterns, greeting cards, leaflets, maps and plan
cards, postcards, stamps, medals.
• The artistic work defined under Section 2(c) of the Copyright Act, 1957 is not a
subject matter for registration for Industrial Designs, such as:
• Paintings, sculptures, drawings including a diagram, map, chart or plan.
• Photographs and work of architecture.
• Any other work related to artistic craftsmanship.
• Industrial Designs does not include any Trademark (The Designs Act, 2000).
Protection Term
• The registered Designs are protected for 10 years in India and can be
extended by 5 years after making a renewal application.
Procedure for Registration of Industrial
Designs
• Prior Art Search
• Application for
Registration
Duration of the Registration of a Design
• Initially, the Design registration is valid for ten years from the date of
registration.
• In the case wherein the priority date has been claimed, the duration
of the registration is counted from the priority date.
• The period of registration may be extended further for five years.
• An application has to be made in Form-3 accompanied by prescribed
fees to the Controller General before the expiry of the said initial
period of ten years.
Importance of Design Registration
• Registration of Design ensures the exclusive rights of the applicant on
the Design.
• The owner can prevent the registered Design products from piracy
and imitation.
• This helps the owner to boost the sale of the products and establish
goodwill in the market.
Cancellation of the Registered Design
The registration of a Design may be cancelled at any time. The petition
has to be filed in Form-8 with prescribed fee to the Controller of
Designs. The application can be made on the following grounds:
• Design has already been registered.
• Design has been published in India or elsewhere before the date of
registration.
• Design is not novel and original.
• It is not a Design under Clause (d) of Section 2.
Application Forms – 24 Nos.
Classification of Industrial Designs
• Designs are registered in different classes as per the Locarno Agreement, 1968;
• It is used to classify goods for the registration of Industrial Designs as well as for Design
searches.
• The signatory parties have to indicate these classes in the official documents too.
• The classification comprises a list of classes and subclasses with a list of goods that
constitute Industrial Designs.
• There are 32 classes and 237 subclasses that can be searched in two languages i.e.
English and French.
• For example, Class 1 includes foodstuff for human beings, foodstuffs for animals and
dietetic foods
• packages are classified under Class 9 (Bottles, Flasks, Pots, Carboys, Demijohns, and
Pressurized Containers).
• Class 32 classifies the Design of graphic symbols and logos, surface patterns,
ornamentation.
Designs Registration Trend in India
International Treaties
The WIPO has put in place two important treaties (international)
dealing with the smooth functioning of various aspects of Industrial
Designs:
• Hague Agreement for international registration (1925)
(https://www.wipo.int/treaties/en/registration/hague/)
• Locarno Agreement (1968) for international classification
(https://www.wipo.int/treaties/en/classification/locarno/)
Famous Case Law - Apple Inc. vs.
Samsung Electronics Co.
• In 2011, Apple Inc. filed a case against Samsung Electronics Co. in the United States
District Court for the Northern District of California for infringing their Designs and
Utility Patents of the user interface like screen app grid and tap to zoom.
• As evidence, Apple Inc. submitted the side-by-side image comparison of the iPhone
3GS and the i9000 Galaxy S to demonstrate the alleged similarities in both models.
• However, later it was found that the images were tempered by the Apple Company to
match the dimensions and features of the controversial Designs.
• So the counsel for Samsung Electronics blamed Apple of submitting false and
misleading evidence to the court and the company countersued the Apple Company in
Seoul, South Korea; Tokyo, Japan; and Mannheim, Germany, United States District
Court for the District of Delaware, and with the United States International Trade
Commission (ITC) in Washington D.C.
• The proceedings continued for the 7 years in various courts. In June 2018 both
companies reached for a settlement and Samsung was ordered to pay $539 million to
Apple Inc. for infringing on its patents.