27 March 2014

INDUSTRIAL DESIGN

 INDUSTRIAL DESIGN
OVERVIEW
Industrial design rights are defined as the part of the intellectual property rights which confers the rights of exclusivity to the visual designs of objects which are generally not popular utilitarian. It safeguards the appearance, style, design of the industrial object such as a spare parts,textiles,furniture.
According to the Industrial Design Society of America (IDSA), “  Industrial Design is the professional service of creating and developing concepts and specifications that optimize the function, value and appearance of products and systems for the mutual benefit of both user and manufacturer”.
As these designs  consist of the aesthetic features therefore they do not provide any protection to the technical feature of the article. The origin of the design rights can be tracked back in the United Kingdom as ‘Designing and  Printing of Linen Act’(1787).
Design are used in different products and across the various industries like medical,handicrafts,jewellery,electrical appliances etc.It precludes of any trademark or artistic type of work. In India the ever first design related legislation was enacted by the British Government and was named as the Design Act,1911.

ADVANTAGES OF INDUSTRIAL DESIGN RIGHTS
Industrial designs help in making any product or item more beautiful and appealing ,henceforth they help in increasing commercial viability of product and increases its market potentiality. The industrial design registration helps in safeguarding the ornamental or aesthetic elements of the article. Whenever an industrial design is being registered, it  gives exclusionary rights to the owner against unauthorized use like copying or imitation of third party without his consent. This in turns felicitates fair flow of investment. An effectual system also helps in benefiting public by encouraging fair and effective competition and trading practices which at large bolster the creativity and the final result comes in the form of attractive and beautiful products. Safeguard of industrial designs help in the overall economic development, which promote creativity in the industrial arena.

INDIAN DESIGNS ACT, 2000  
The Design Act,2000 has been enacted to consolidate and amend the law relating to registration and protection  of new and original industrial designs. It repealed and replaced the Designs Act,1911.According to the Designs Act,2000,the term ‘design’ means only the features of shape,configuration,pattern,ornamentor composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, does not include any trademark as defined in the Indian Penal Code or any artistic work as defined in the Copyright Act,1957” 
Under the Act, the controller-General of Patents, Designs and Trade Marks under Department of Industrial Policy and promotion, Ministry of Commerce and Industry is the controller of designs. The Controller General of Patents, Designs and Trade Marks directs and supervises the functioning of ‘Industrial Designs Wing’. The registration of industrial design under the Designs Act id done by the ‘Industrial Designs Wing’. The registration of industrial design under the Design Act is done by the ‘Industrial Designs Wing’ of the Head Office of Patents located at Kolkata, West Bengal.

Main Provision of the Act:
1. The ‘Controller General of Patents, Designs and Trade Marks’ appointed under the Trade and Merchandise Marks Act,1958 shall be the Controller of Designs for the purpose of this Act.
2. The Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in any country and which is not contrary to public order or morality, register the design under the act. Every application shall be in the prescribed form and shall be filled in the Patent office in the prescribed manner and shall be accompanied by the prescribed fee. A design may be registered in not more than one class, and, in case of doubt as to the class in which a design ought to be registered, the controller may decide the question.

3. Prohibition of registration of those designs which: are not new or original; or have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other country by publication in tangible form or by use or in any other way prior to the filling date, or where applicable, the priority date of the application for registration; or are not significantly distinguishable from know designs or combination of know designs; or comprise or contain scandalous or obscene manner
4.  The Controller should grant a certificate of registration to the propitiator of the design when registerd.Also, there shall be kept at the Patent office a book called the ‘register of designs’, wherein shall be entered the names and addresses of proprietors of registered designs, notification of assignments and of transmissions of registered designs, and such other manner as may be prescribed.
5. When a design is registered, the registered proprietor of the design shall, subject to the provision of this Act, have copyright in the design during ten years from the date of registeration.If,before the expiration of the said ten years, application for the extension of the period of copyright is made to the controller in the prescribed manner, the controller shall, on payment of the prescribed fee, extend the copyright for a second period of five years from the expiration of the original period of ten years.
6. The controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in such a manner as may be prescribed and thereafter the design shall be open to public inspection. During the existence of copyright in a design, any person on furnishing such information may enable the controller to identify the design and on payment of the prescribed fee may inspect the design in the prescribed manner.Also, any person may, on application o the controller and on payment of such fee as may be prescribed, obtain a certified copy of any registered design.
7. Any person interested may present a petition for the cancellation of the registered of a design, at any time after the registration of  the design, to the controller on any of the following grounds: (1) that the design shall  has been previously registered in India, or (2) that it has been published in India or in any other country prior to the date of registration; or (3) that the design is not a new or original design; or (4) that the design is not registered under this Act. The controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so  referred.
8. The exhibition of a design, or of any article  to which a design is applied, at an industrial or other exhibition to which the provisions of the Act have been extended by the Central Government by notification in the Official Gazette, or the publication of a description of the design, during or after the period of holding the exhibition, or the exhibition of the design or the article or the publication of a description of the design by any person else-where during or after the period of the holding of the exhibition, without  the privet or consent of the proprietor ,shall not prevent the design from being registered or invalidate the registration thereof, subjected to the conditions that : (1) the exhibitor exhibiting the design or article, or publishing a description of the design ,gives to the controller previous notice in the prescribed form; and (2) 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.
9. During the existence of copyright in any design it shall not be lawful for any person:
For the purpose of sale to apply or cause to be applied to any articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor ,or to do anything with a view to enable the design to be so applied; or
To import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it design or any fraudulent or obvious imitation thereof; or
Knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed  for sale that article.
10. Where an application for a design has been abandoned or refused, the application and any drawings,photographs,tracings,representations or specimens left in connection with the application shall not at any time be open to public inspection or be published by the controller.
11.If any person acts in contravention of the Act , he shall be liable for every contravention to pay to the registered proprietor of the design a sum not exceeding certain prescribed amount as a contract debt, or if the  proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the reputation thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly. 
Article 25: Requirements for Protection
 1. 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.

2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.

Article 26: Protection
 1. The owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.
 2. Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.
 3. The duration of protection available shall amount to at least 10 years.
Registration of Designs 
The registration of industrial designs under the Designs Act, 2000 is done by the Designs Wing of the Patent Office located at Kolkata. However, applications can be filed at other offices of the Patent Office, namely, at Delhi, Mumbai and Chennai. 

The thrust of the modernization programme of the Designs Wing includes a transition from the essentially paper-based examination procedures to an IT-based system supported by the computerization of existing records, on line search facilities, setting up of a user-friendly website and creation of a digital library. 
Ten Steps for Registration of industrial design given by the Designs Wing are as follows :

                                                                Step 1.
                               Finding out whether any registration already exists

                                                                 Step 2.
                                     Preparing a representation of the design
                                                                    
                                                                 Step 3.
                                             Identifying the class of design


                                                                  Step 4.
                                             Providing a statement of novelty

                                                                   Step 5.
                                                     Including a disclaimer
                                                            
                                                                   Step 6.
                                                    Claiming a priority date
                                                                      
                                                                   Step 7.
                                                Determining the fee to be paid
                                                                      
                                                                   Step 8.
                                            Ensuring all enclosures are attached
                                                                      
                                                                   Step 9.
                                              Complying with objections (if any)
                                                                      
                                                                   Step 10.
                                                      Providing full details

The Designs office can assist you to search whether the design has been previously registered. If the registration number is known, Form No.-6 should be filed along with the prescribed fees of Rs. 500. If the representation of the article or the specimen of the article is filed Form No.-7 along with the prescribed fees of Rs. 1,000 is required. 
A representation is the exact representation of the article on which the design has been applied. It should be prepared on white A4 size paper of durable quality. Do not prepare it on cardboard or mount it on other paper. Indicate details of the design and applicant clearly. 
Designs are required to be categorized in separate classes in order to provide for systematic registration. An internationally accepted classification of Industrial Designs based upon the function of the article is required. The class and sub-class should be mentioned in the application. There are 32 classes and most of the classes are further divided into sub-classes. 
A statement of novelty should be included on the representation of a design as per the Act in order to specify the claim. This will enable speedier examination and provide a more specific protection. The claim will protect the overall visual appearance of the design as described in the representation of drawing.
If the ornamental pattern on an article is likely to be confused with a trade mark, suggests any mechanical action or contains words, letters, numerals, etc., a disclaimer should be included in the representation.
If you have applied for protection of the design in convention countries or countries which are members of inter-governmental organizations, you can claim registration of the design citing a priority date in India. This is the date of filing of the application in any of such countries provided the application is made in India within six months.
Applications are to be accompanied by the required fee through cheque or draft payable at Kolkata or in cash (if filed in Design Office, Kolkata). Application for the registration of design is Rs 1,000 and for renewal it is Rs. 2,000.
File an application only after ensuring that all enclosures and fee in the required numbers are attached. Applications can be filed in either the Design Office in Kolkata or the branch offices of the Patent office in Delhi, Mumbai or Chennai.
If the Design Office seeks additional information or clarifications after preliminary examination, please ensure that these are provided promptly. This will help the office to take up your application for early examination.
While filing an application make sure that all contact details and addresses are clearly and legibly filled in. This will enable the office to keep in touch with you and convey decisions.
The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date. This initial period of registration may be extended by further period of 5 years on an application made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Copyright.
Please remember that all designs are not register able. Designs registered come into force from the date of registration. Designs registered should be renewed in time for them to be valid.
                    CLASSIFICATION FOR INDUSTRIAL DESIGNS

 The Locarno Classification (LOC), established by the 
Locarno Agreement (1968), is an international classification used for the purposes of the registration of industrial designs.
The Locarno Classification consists of a classification for industrial designs.  The Locarno Classification is based on a multilateral treaty administered by WIPO. This treaty is called the Locarno Agreement Establishing an International Classification for Industrial Designs, which was concluded in 1968. This Classification is commonly referred to as the Locarno Classification. The Agreement is open to States party to the Paris Convention for the Protection of Industrial Property. 
      According to the Locarno Classification system the Designs Register is divided into 32 classes. The application for design has to be filed in a particular class to obtain protection in that class. List of classes:
• Class 1: FOODSTUFFS
• Class 2: ARTICLES OF CLOTHING AND HABERDASHERY
• Class 3: TRAVEL GOODS, CASES, PARASOLS AND PERSONAL BELONGINGS,
• Class 4: BRUSHWARE
• Class 5: TEXTILE PIECEGOODS, ARTIFICIAL AND NATURAL SHEET MATERIAL
• Class 6: FURNISHING
• Class 7: HOUSEHOLD GOODS, NOT ELSEWHERE SPECIFIED
• Class 8: TOOLS AND HARDWARE
• Class 9: PACKAGES AND CONTAINERS FOR THE TRANSPORT OR HANDLING OF GOODS
• Class 10: CLOCKS AND WATCHES AND OTHER MEASURING INSTRUMENTS, CHECKING AND SIGNALLING INSTRUMENTS
• Class 11: ARTICLES OF ADORNMENT
• Class 12: MEANS OF TRANSPORT OR HOISTING
• Class 13: EQUIPMENT FOR PRODUCTION, DISTRIBUTION OR TRANSFORMATION OF                            ELECTRICITY
• Class 14: RECORDING, COMMUNICATION OR INFORMATION RETRIEVAL EQUIPMENT
         Class 15: MACHINES, NOT ELSEWHERE SPECIFIED
• Class 16: PHOTOGRAPHIC, CINEMATOGRAPHIC AND OPTICAL APPARATUS
• Class 17: MUSICAL INSTRUMENTS
• Class 18: PRINTING AND OFFICE MACHINERY
• Class 19: STATIONERY AND OFFICE EQUIPMENT, ARTISTS' AND TEACHING MATERIALS
• Class 20: SALES AND ADVERTISING EQUIPMENT, SIGNS
• Class 21: GAMES, TOYS, TENTS AND SPORTS GOODS
• Class 22: ARMS, PYROTECHNIC ARTICLES, ARTICLES FOR HUNTING, FISHING AND PEST KILLING
• Class 23: FLUID DISTRIBUTION EQUIPMENT, SANITARY, HEATING, VENTILATION AND AIR-CONDITIONING EQUIPMENT, SOLID FUEL
• Class 24: MEDICAL AND LABORATORY EQUIPMENT
• Class 25: BUILDING UNITS AND CONSTRUCTION ELEMENTS
• Class 26: LIGHTING APPARATUS
• Class 27: TOBACCO AND SMOKERS' SUPPLIES
• Class 28: PHARMACEUTICAL AND COSMETIC PRODUCTS, TOILET ARTICLES AND APPARATUS
• Class 29: DEVICES AND EQUIPMENT AGAINST FIRE HAZARDS, FOR ACCIDENT PREVENTION AND FOR RESCUE
• Class 30: ARTICLES FOR THE CARE AND HANDLING OF ANIMALS
• Class 31: MACHINES AND APPLIANCES FOR PREPARING FOOD OR DRINK, NOT ELSEWHERE SPECIFIED
• Class 32: GRAPHIC SYMBOLS AND LOGOS, SURFACE PATTERNS, ORNAMENTATION






Industrial Designs Not Registrable under the Indian Patent Office

1.      Any industrial design being opposing to public moral values.
2.      Any industrial design describing any process of construction.
3.      Any industrial design which is not distinguishable from previously registered designs.
4.      Any industrial design which includes trademark.
5.      Industrial Designs of following objects – Books, jackets, calendars, certificates, forms and other documents, dressmaking patterns, greeting cards, leaflets, maps and plan cards, postcards, stamps, medals
6.      Industrial Designs including flags, emblems or signs of any country.
7.      Industrial Designs of integrated circuits.





CASE STUDY
1. Bharat Glass Tube Limited vs Gopal Glass Works Limited on 1 May, 2008
PETITIONER: Bharat Glass Tube Limited
RESPONDENT: Gopal Glass Works Limited
In this case of Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd. the Supreme Court upheld the decision of the single judge of the Calcutta High Court to reverse an order passed by the Asst. Controller of Patents cancelling the registration of a design by the respondent under the Designs Act.
The facts of the case are quite straight-forward: The respondents – Gopal Glass Works – had registered their designs for diamond shaped glass sheets (pictured above left) under the Designs Act, 2000 and were granted a certificate of registration for the same in the year 2002 in a record 6 days! The respondents therefore acquired the sole right to manufacture and market the glass sheets in the design that was registered in their names. The appellant however started marketing his glass sheets with the same design. The designs that were formed on the glass sheets were formed by engraved rollers which were developed by a German Company which had licensed all Indian rights to the respondent.
On learning that the appellants were manufacturing glass sheets in the same protected design the respondents moved Court for an interim injunction which they were granted following which the appellants moved the Asst. Controller of Patents for cancellation of the respondents design on the ground that it already been published by the German Company in the year 1992 as was evidenced by a letter produced from the German Company and also that the design had been published on the website of the U.K Patent Office by another company which had sought for design protection. The respondents countered by pointing out that the German Company manufactured only the engraved rollers and not the glass sheets. They contended that the engraved rollers could then be applied to a wide variety of material from glass sheets to plastic and that their registration for design protection under Class 25-01 was for the application of that design to glass sheets.
The Asst. Controller of Patents found merit in the appellant’s contentions that the respondents design was not new or original since the German company had been manufacturing the engraving rollers with the same design since 1992 and also because the design had already been published in the U.K. Patent Office Website by another German Company and thus the registration of the respondent’s design was cancelled since it did not meet the requirements of originality laid down by Section 4. When the matter went on appeal to the High Court the single judge over-ruled the Asst. Controller of Patents and restored the design to the respondents. The Appellants then appealed against this decision to the Supreme Court.
Supreme Court Decision: In its decision the Supreme Court accepted the respondent’s distinction between the design on the engraved rollers and the glass sheets. The Court noted that under Section 2(d) design means the application of shape, configuration etc. to any article and since in this case the respondent had specifically mentioned in the application form that he was applying the designs only to glass sheets, he would have exclusive rights to do so despite the fact that the design already existed on the engraved rollers. On the question of whether the design was new and original the Supreme Court held that the appellant had failed to establish that the design had already been published. The publication of the design on the U.K. Patent Office Website was dismissed since it did not clearly establish that the designs in question had been applied to glass sheets and also because on a visual comparison the designs did not match each other. The appeal was therefore dismissed and the registration of the design was restored to the respondent.
It is however strange that the Supreme Court did not simply dismiss the appeal on the basis of the statutory definition of original which is as follows: “original”, in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application. The Court could have simply held that the German designs were on rollers and any novel application of this design to new articles was eligible for protection. Ultimately the Court’s decision was on similar lines but it unnecessarily got itself tangled up in the statutory definition of ‘design’ without a single mention of the statutory definition of ‘original’.
By:Prasant Reddy
2.The case of a toymaker
The Indian Toy Industry is dominated by SMEs and micro enterprises even though toy majors such as Fun School and Mattel are also present. The domestic industry has been in existence for over 50 years and has considerable reach through an extensive distribution network. Innovation in the form of IP creation has, however, been extremely poor. With generational change occurring in the industry, businesses have started becoming open to new ideas.With the liberalization of the economy, since the late 1980s there was a sudden increase in the number of automobiles being offered to Indian consumers. This, in turn, inspired some toy manufacturers to start producing plastic miniatures of automobiles being introduced in the market. Much like Matchbox Cars, these manufacturers faithfully reproduced the shape of every new car they saw on the road. Over the years a large number of models became available and coupled with extensive reach their miniatures were soon available across the length and breadth of the country.
Keeping in mind the low awareness of IP related issues amongst the SME Sector in the country, the Small Industry Development Organization (SIDO) - the SME Development Agency of the country - working under the Ministry of Small Scale Industries had embarked upon a series of workshops and sensitization programmes on IPR for SMEs. One such workshop was devoted exclusively to the toy industry. One of the prominent manufacturers of these miniature cars happened to attend this workshop.
After the workshop, he met some of the Resource Persons and confessed that it was the first time that he understood the implications of IP to his business. He understood that if a design was protected then he, as an entrepreneur, could not escape liability for passing off through the defence of miniaturization. He also understood that he could legally copy the design of certain automobiles by doing so intelligently. For instance, he could do a design search at the design office and determine which designs were over 15 years old and hence no longer protected. He could now also assess which were the designs where protection had not been extended by the company in question beyond the initial 10 years or such cases where a foreign company had never obtained design protection in India. This, itself, gave him a substantial number of models to miniaturize.
In addition, as a canny entrepreneur, he approached one of the car manufacturers and presented 10 pieces of the miniature cars to a senior executive with the suggestion that whenever any potential customer of the car comes for a test drive to the car showroom, his miniature could be offered to the potential customer as a memento from the automobile company. The automobile company thought it was a good idea and today offers this toy miniature to all its potential customers opting for a test drive. In the process, even though the design of the automobile is protected, the fact that the automobile has acquiesced in the reproduction of its registered design protects the SME entrepreneur.
Case study compiled by Pankaj Jain, Director (IPR Cell), Ministry of Small Scale Industries, Government of India
3.Turning an IP Dispute into a Business Opportunity
There is a small firm of goldsmiths at Chikpet, Bangalore in the Southern Indian State of Karnataka. Over the years, the goldsmith, assisted by his son, has been creating new designs, making ornaments, and selling them directly to customers. One day, while visiting an upmarket road in downtown Bangalore, he happened to stop at a famous Jewelry retail outlet of a large Indian industrial conglomerate and was horrified to find on display items of jewelry based on some of his original designs.
The goldsmith was shell-shocked and did not know what to do. His son, however, decided not to take things lying down. He approached an intellectual property rights (IPR) Attorney at Bangalore. Although the goldsmith had not registered his novel designs under the Design law in India, he was able to produce before the Attorney the a number of paper-based sketches and drawings (protected automatically by copyright) that he had made earlier in respect of the design in question, which clearly indicated the evolution of the designs. A legal notice was sent to the large Indian industrial conglomerate. In reply the large Indian industrial conglomerate's lawyer argued that there was no malafide and, in fact, the designs had been developed independently by their employees and were co-incidentally common.
On receiving this reply, the goldsmith's son went through the records of sales. In the sale register, he was able to locate the details of sale to the large Indian industrial conglomerate who had purchased from them a few pieces of this presentation item for distribution as New Year gifts. This turned out to be clinching evidence and the large industrial conglomerate agreed to settle the matter out of court. As a part of the settlement, a lumpsum payment was made to the goldsmith. It was also agreed that the large industrial conglomerate would stop manufacturing this item and would outsource its entire requirements over the next five years from the small firm.
This case study provides a number of important insights. Firstly, it shows the importance of keeping good records of any drawings, designs and business transactions that may be used in future as evidence in case of an IP dispute. Admittedly, the case would have been simpler had the goldsmith registered his design under the design law of India in the first place. However, having preserved the drawings in a systematic manner (dated, numbered, signed and properly filed) of the gold ornaments in question and having made proper entries in the sale register showing that the large company had once purchased the items proved crucial in turning the case in the goldsmith's favor. Secondly, it illustrates the importance of relying on qualified IP advice. Thirdly, it shows how an IP dispute, may be turned into a business opportunity, as the large company has now become a key client of the small firm of goldsmiths.

Compiled by: 
Pankaj Jain, Director (IPR Cell),
Ministry of Small Scale Industries,
Government of India






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