industrial design

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Industrial DesignIndustrial Design

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Evolution of CompetitionEvolution of Competition

Traditional product Traditional product Traditional product Traditional product

Technology Technology Technology Technology

Pricing of productPricing of productPricing of productPricing of product

Quality of ProductQuality of ProductQuality of ProductQuality of Product

Design differentialDesign differentialDesign differentialDesign differential

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“When companies are competing

at equal price

&

functionality

Design is the only differential

that matters”

––Mark Dziersk, Mark Dziersk, quoted in quoted in

TIME MagazineTIME Magazine

What is an industrial DesignWhat is an industrial Design

It is a new or original idea in

relation to the features of

shape, configuration, Pattern,

Ornament, Composition of lines

or colours or combination

thereof applied to any article by

an industrial process

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It signifies something solid (in

three dimensions) where an

idea is incorporated into the

article

Example - feeding bottle

Shape and configurationShape and configuration

� It relates to something two dimensional

Example- engraving on metal or like

ornamentation on carpet by various

geometric figures in combination of color

etc.

�Mere painting of natural scenes or like on

plain paper- is not an industrial design

Pattern, OrnamentPattern, Ornament

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Business (Idea) point of view:

� Make your product appealing to consumers

� Customize products in order to target different

customers (e.g. Swatch)

� Develop the brand (e.g. Apple ’s « Think

Different » strategy; i Pod)

Industrial DesignsIndustrial Designs

Department of IP &P covers

The Patents Act, 1970 (as amended in 2005)

The Patents Rules, 2003 (as amended in 2006)

The Designs Act, 2000The Designs Act, 2000

The Designs Rules, 2001 (as amended in 2008)The Designs Rules, 2001 (as amended in 2008)

The Trade Marks Act 1999

The Trade Marks Rules 2002

The Geographical Indications of Goods (Registration &

Protection) Act, 1999

The Geographical Indications of Goods (Registration &

Protection) Rules, 2002,

Department of Education covers

The Copyrights Act 1957 (amended in 1999)

Legislative Framework of IP Legislative Framework of IP

AdministrationAdministration

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�Exclusive right to apply design to the

article in the class in which design is

registered.

�Better protection and can sue for piracy of

design.

� Licensing of design as legal property for

consideration or royalty.

Benefits of RegistrationBenefits of Registration

�Scope of definition of terms ‘Article’ &

‘Design’ enlarged

�Addition of definition of the term ‘Original’

� Introduction of delegation of powers to

Examiners & other Officers by Controller

�Codification of non- registerable Designs

Designs Act, 2000 Designs Act, 2000 -- Salient Features Salient Features

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�Removal of secrecy period of two years for

a registered Design

�Public inspection available after notification

�Rights of Registered Proprietor defined

�Provision of Restoration of Lapsed Design

�Electronic Register of Design


� Initial term of protection for 10 years,

extendable by 5 years on request

�Provision for preferring Appeal on the

Controller’s order before High Court

�Substitution of Applicants before registration

of design

�Additional grounds for Cancellation of design


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�Registration of assignments/transfer of right

made mandatory

�Penalty for piracy of registered design

enhanced

� Inclusion of Paris Convention Countries apart

from Commonwealth Countries for priority


Sec 2(d) Design:

Means only features of shape,

configuration, pattern, ornament or

compositions of lines or colours appliedapplied toto

anyany articlearticle whether in two or three

dimensional or both by any industrial

process or means whether manual,

mechanical or chemical, separate or

combined,………

The Designs Act, 2000 The Designs Act, 2000 -- DefinitionsDefinitions

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Sec 2(d) Design:

……… which in the finished article appeal

to and judged solely by eye but does not

include any mode or principle of

construction and does not include any

Trade Mark or Property Mark and Artistic

work as defined in clause (c) of section 2

of the Copyright Act’1957.


ArtisticArtistic workwork means-

(i) A painting, a sculpture, a drawing

(diagram, map, chart or plan) or

engraving or photograph……

(ii) Any work of architecture and

(iii) Any other work of artistic craftsmanship.

Such work isis notnot aa subjectsubject mattermatter ofof anan

industrialindustrial designdesign

Sec 2 (c ) Sec 2 (c ) –– Copyright ActCopyright Act

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Sec 2(a) Article:

Means any article of manufacture and

any substance, artificial or partly

artificial and partly natural and includes

any part of article capable of being made

and sold separately


Sec.4 - A design which-

(a) is not new or original;not new or original; or

(b) has been disclosed to the public has been disclosed to the public any where in India or

in any other country by publication in tangible form or

by use or in any other way prior to the filing date, or

where applicable, the priority date of the application for

registration; or

(c) is not significantly distinguishablenot significantly distinguishable from,known designs

or combination of known designs; or

(d )(d ) comprises or containscomprises or contains scandalous or obscene matterscandalous or obscene matter

shall not be registered shall not be registered

Prohibition of registration of certain designsProhibition of registration of certain designs

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A Design should:

� Be New or Original

� Be Distinguishable from known designs

� Be applied to an article

� 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 RegistrationRequirements for Registration

� Novelty is judged solely by eye w.r.t.

external appearance of the finished

article

� 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.

New or OriginalNew or Original

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In relation to design means:

originating from the author of such design

and includes the cases which though old in

themselves yet are new in their application

[sec 2(g)]

OriginalOriginal

�When design to applied to the inner portion of the

article not visible or noticeable in finished article.

� Principle or mode of construction of the article

� Building and structures

� Sole functional features

� Part of an article not sold separately

� Variation commonly used in trade

� Stamps, Labels, Tokens, Medals, Trade Marks ,

Property Marks, Cards, Cartoons.

�Mere change in size.

� Designs contrary to public order or morality or

scandalous

� Computer chip, Integrated circuit designs

What are not RegistrableWhat are not Registrable

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� Calendar, certificates, forms, greeting cards,

leaflets, maps, building plan, medals

� Mere mechanical contrivance

� Basic shape, variations commonly used in the

trade

� Mere workshop alteration

� Flags, emblems, or signs of any country,

computer icons

The following articles are not registrableThe following articles are not registrable

� Applicant : Applicant means any individual or legal entity.

� Application : One application in prescribed form for one design in one class with prescribed fee.

� Representation: Four sets of Representation with the different views of the article for clear understanding the nature of article.

� Declaration :- Statement of novelty and disclaimers.

� Power of Attorney : (If required).

Filing RequirementsFiling Requirements

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KOLKATA

H.O.Receiving & Examination

Receiving Center Receiving CenterReceiving Center

Delhi Mumbai Chennai

Filing of Design ApplicationFiling of Design Application

� Application form 1 with requisite fee of Rs. 1,000/-

� Four sets of Representation sheets indurable paper of A4 size, pasted with thephotographs/drawings of the article fromdifferent angles.

� Power of attorney (if required)

� Priority document (for convention Appln.)

Particulars required for applicationParticulars required for application

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� 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

Preparation of the Representation SheetPreparation of the Representation Sheet

(1) STATEMENT OF NOVELTY

(2)DISCLAIMER

Signature of Applicant

Name of the Applicant

XYZ, PVT.LTD.

Date :-

No. of sheet - 05

Sheet No.- 01

Side view

Representation SheetRepresentation Sheet

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Name of the Applicant

XYZ, PVT.LTD.

No. of sheet

Sheet No.-

Novelty resides in the shape and

configuration of the “Pressure cooker” as

illustrated.

Or

Novelty resides in the shape and

configuration particularly in the portions

marked ‘A’ & ‘B’ of the “Pressure cooker”

as illustrated.

Statement of NoveltyStatement of Novelty

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� No claim is made by virtue of this registration to any right to

the use as a trade mark of what is shown in the

representations.

� No claim is made by virtue of the registration in respect of

any mechanical or there action of the mechanism whatever

or in respect of any mode or principle of construction of the

article.

� No claim is made by virtue of this registration to any right to

the exclusive use of the words, letters, numerals, flags,

crowns, etc. appearing in the design.

Statement of Disclaimer Statement of Disclaimer

Example of RepresentationExample of Representation

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The novelty resides in the shape & configuration of the 'CHAIR' as illustrated.

No claim is made by virtue of this registration in respect of any mechanical or other action of any mechanism whatever or in respect of any mode or principle of construction of the Article.

No claim is made by virtue of this registration to any right to the exclusive use of the words, letters, numbers, or trade marks appearing in the representation.

Dated: Signature of the applicant/agent(Name of the Signatory)

(SPECIMEN OF REPRESENTATION SHEETS)

(SPECIMEN OF REPRESENTATION SHEETS)

The novelty resides in the shape & configuration of the 'CHAIR' as illustrated.

No claim is made by virtue of this registration in respect of any mechanical or other action of any mechanism whatever or in respect of any mode or principle of construction of the Article.

No claim is made by virtue of this registration to any right to the exclusive use of the words, letters, numbers, or trade marks appearing in the representation.

Dated: Signature of the applicant/agent(Name of the Signatory)

RIGHT SIDE VIEW LEFT SIDE VIEW

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No. of

entry

On What possible Form

No.

Fee (Rs.)

1 On application for registration of Design under

Section 5 & 441 1000.00

2 On claim under Section 8(1 ) to proceed as an

applicant or joint applicant2 500.00

3 On application for extension of copyright under

Section 11(2)3 2000.00

4 On Application for Restoration of lapsed design

under Section 12(2)4 1000.00

5 Additional fee for Restoration --- 1000.00

6 Inspection of Registered design under Section

17(1)5 500.00

7 On request for information of design when

registration No. is given under Section 18.6 500.00

8 On request for information of design when

registration No. not given .7 1000.00

THE FIRST SCHEDULE FEESTHE FIRST SCHEDULE FEES

Contd …

No. of

entry


No.

Fee (Rs.)

9 On application for cancellation of design under

Section 198 1500.00

10 Notice of intended exhibition or publication of an

unregistered design under Section 219 500.00

11 Application for registration of a document in

Register of Designs under Section 30(3):

(i) In respect of one Design;

(ii) For each additional Design

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500.00

200.00

12 One application for entry of name of proprietor or

part proprietor in Register of Designs under Section

30:



11

500.00

200.00

13 On application for entry of mortgage or license in

Register of designs under Section 30:



12

500.00

200.00

(Contd. from previous slide…)THE FIRST SCHEDULE FEESTHE FIRST SCHEDULE FEES

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No. of

entry


No.

Fee (Rs.)

14 Application for entry of notification of a document in

the Register of designs under Section 30 and Rule

37:



13

500.00

200.00

15 On request for correction of clerical error under

Section 2914 500.00

16 On request for certificate under Section 26 and

Rule 4215 500.00

17 On application for certified copy of Registered

design Under Section 17(2)16 500.00

18 On application for rectification of Register of

design Under Section 3117 500.00

19 On application for extension of time for filing

priority Document under Rule 15.18 200.00

(per month)

20 On Notice of opposition under Rule 40 19 100.00


No. of

entry


No.

Fee (Rs.)

21 Notice of intention to attend hearing under Rule

29 and 4020 500.00

22 Form for authorization of agent or other person. 21 ----

23 On request to alter name or address or address

for Service in the Register of design under Rule

31.

22 200.00

24 On request for entries of two addresses in the

Register of Design.23 200.00

25 On petition under Rule 46 for amendment of any

document--- 500.00

26 On petition under Rule 47 for amendment of any

document--- 500.00

27 Inspection of Register of Design under Rule 38 (in

respect of each design).--- 250.00


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STAGES FROM FILING TO REGISTRATIONSTAGES FROM FILING TO REGISTRATION

Abandoned

Examination Filling of

Application

Numbering &

Dating of

Application

Noncompliance

of Objection (s)

Communication

of Objection (s)

Removal of

Objection (s)

Hearing if

objection (s) is

/are contested

RefusalRefusal

Re- Examination

Appeal to

High Court

Waiving /

removal of

Objection (s)Acceptance

In case of allowance

of appeal

Notification in the

Official Gazette

Issue of Certificate

Consumer Products

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Pharmaceutical Product

Textile & Jewellery

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Shape & Configuration signify something solid Shape & Configuration signify something solid

where an idea has been incorporated into the where an idea has been incorporated into the

article.article.

Contd.

Example with a toothbrush

Pattern or ornament or composition of colour / Pattern or ornament or composition of colour /

lines relates to something two dimensional.lines relates to something two dimensional.

Contd.


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Contd.

When a figure, showing the feature of the design of When a figure, showing the feature of the design of

an article, is drawn on a paper it will be regarded as an article, is drawn on a paper it will be regarded as

if design has been applied to the article sought to be if design has been applied to the article sought to be

registered. registered.


A new shape applied to toothbrush which A new shape applied to toothbrush which

produces a new visual appearance on the produces a new visual appearance on the

article.article.

Contd.


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Design means a conception or suggestion or idea Design means a conception or suggestion or idea

of a shape or pattern which can be applied to an of a shape or pattern which can be applied to an

article by industrial process or means.article by industrial process or means.

Contd.


Any mode or principle of construction or operation Any mode or principle of construction or operation

or anything which is in substance a mere or anything which is in substance a mere

mechanical device, would not be registerable mechanical device, would not be registerable

design.design.

Contd.


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The features of the design in the finished article The features of the design in the finished article

should appeal to and are judged solely by the should appeal to and are judged solely by the

eye.eye.

Contd.


The design should be applied or applicable to The design should be applied or applicable to

any article by any industrial process.any article by any industrial process.

Contd.


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Designs of artistic nature like paintings, Designs of artistic nature like paintings,

sculptures and the like which are not produced sculptures and the like which are not produced

in bulk by any industrial process are excluded in bulk by any industrial process are excluded

from registration under the Act.from registration under the Act.


OVERLAP OF DESIGN,

COPYRIGHT & TRADE MARK

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Design is for aesthetic appearance. Anything functional isnot registrable as a design

Copyright in a design comes to an end if the work hasindustrial application and is reproduced more than 50 times

Is there diff. between copyright in a design and copyright ina drawing. Yes.

Copyright & Design

Confusion is worse with Trade mark definition being

amended

Shape is also a trade mark – But articles like dresses,

sculpture etc., cannot come in trade marks.

However commercial products have more overlaps in

protection.

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� As per Copinger and Skone James on Copyright, a design is, in broad

terms, the plan or scheme for the appearance of an article (or a part of

an article).

� It primarily concerns with what an article looks like or is intended to look

like.

� It is not concerned with how an article performs its function. The design

of an article may be recorded in any form including the written

description, sketch, drawing, photograph or it could actually be embodied

in the article itself. “Design” has also been defined as the design of any

aspect of the shape or configuration (whether internal or external) of the

whole or part of an article.

Copinger & Skone James on Copyright, 15th Edn., Vol. 1, pg. 730

Design

� Infringement in the context of Indian Textiles, Apparels and Life Style

Industry:

Indian Textiles:

� If artistic patterns are drawn up on a piece of cloth to be used for any

purpose, including but not limited to for instance, making of garments,

bed sheets, sofa covers, table cloths, etc., then the artistic patterns

printed on the piece of cloth are protected as copyrights.

� On the other hand, if a designer of clothes creates a new pattern of

garment to be used as a fashionable attire, then the sketch/ drawing

that is drawn of the pattern of the garment is protected as a copyright.

Infringement

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� However, once the idea of the creative pattern is implemented on the

piece of cloth, then the same may be protected as a design right.

� If, the intention of the designer is to ensure that only one piece of the

garment is manufactured, then the same could also be protected as

the artistic work imprinted on the piece of cloth having copyrights.

� Alternatively, if the designer’s intention is to produce several

thousands of garments in different scheme of colours, etc., then the

intention of the designer is to use the said design in the industry.

Accordingly, the latter form of use of the same material may be

considered to be a design.

� There is an ongoing debate on the issue and a lot depends on the

manner, in which the author of the work intends to use the work.

Infringement

Indian Cases

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Tahiliani Design Private Ltd. vs. Renu Tandon & Anr.

C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court

Cases

� Allegation that the Defendants’ garments were copies of the

garments designed and crafted by the Plaintiff

� The said garments were supposed to be developed, designed

and crafted by the plaintiff as a part of their collection for the

year 2006

� The Hon’ble Delhi High Court vide order dated 21.10.2008

granted ex-parte ad-interim injunction



Cases

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� Defendant served notice.

� Application for vacation of stay moved claiming that both

designs are separate.

� The impugned prints are generic Jamawar Prints

� Matter is sub-judice – Referred to Mediation



Cases

� Allegation of infringement of copyright as the defendant used the dress in a movie which was worn by an actress

� Importance of costumes worn by actors and actresses in a film play special role and serve purpose of promotion of the movie

� Held that all kinds of clothes worn by actors cannot be stated as Fair Use permitted under sec 52 (1) (u).

Suneet Varma Design Pvt. Ltd. Vs Jas Kirat Singh Narula &

Anr. [2007 (34) PTC 81 (Del)]

Cases

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Technological advancement made the job of

the creator easy

………it also made the job of the copier easy.

Consciousness in IPR is the only way to

prevent the latter.

ConclusionConclusion

industrial design

Documents

terms article design

piracy of design

cancellation of design

design whichis

licensing of design

registrationa design

piracy of registered

designs rules