Intellectual Property - Industrial Design

Author: Surbhi Sawaria

Abstract

In 1787, in the United Kingdom, the Design rights started expanding with the Designing and Printing of Linen Act. In India, Industrial Designs are protected under the Design Act, 2000 which has replaced the Design Act, 1911. India being a member of WTO is under TRIPS, obliged to maintain a minimum standard of protection. Under TRIPS, intellectual property protection also extends to traditional IPRs such as patents, trademarks and copyright.

INTRODUCTION

Intellectual Property Right refers to the right over the intellectual activity in the industrial, scientific, literary or artistic fields. It gives the creator exclusive ownership of the product or article for a certain period of time. Consequently, recognition is given to the creator and the inventor and availability of original and genuine product are also ensured.

Design refers to the “feature of shape, configuration, pattern, ornament, composition of lines, or colours applied to any article whether in two dimensional or three dimensional or in both form, by any industrial process or means, whether manual, mechanical and chemical, separate or combined, which in the finished article solely judged by the eye”. In India, the Design Act, 2000 and the DesignRules, 2001, as amended in 2008, provides for registration and protection to the industrial design which is a type of intellectual property right which provides the unshared right to selected people to make, sell and use products and articles with the protected design.

Article means “any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of the article capable of being made and sold separately”.

REGISTRATION OF THE DESIGN

By whom: Any person who claims to be the proprietor of a new or original design may register the design under the Design Act, 2000. The ‘proprietor of a new and original design’ is defined u/s 2(j) of the Act which means a person for whom the work has been executed by the author of design in return of good consideration, or a person by whom the design or the right to apply the design to an article has been acquired, or the author or any other person upon whom the right in the design has devolved.

Before whom:As per sec. 3 of the Act, an application for registration of the design has to be filed before the Controller General of Patents, Designs and Trade Marks.

Tenure, renewal and restoration of Design: The time period for the design protection extends for 10 years which can be renewed once for another 5 years. The Design falls in the public domain after the expiry of the above-said tenure and may be used unrestricted. The Design when registered shall be registered as of the date of the application for Registration. The renewal fee has to be paid before the expiry of the original period of ten years and on the failure of payment of such fees, the registration of design will cease to be effective. However, the lapsed design can be restored by filing an application for restoration wherein stated the reason for such non-paymentand paying the of restoration fees.

Advantages- following are the advantages of registration of the Design

1. Increases the commercial value of the product- when any design is registered its market value increases

2. Helps to take purchase decision- As the design is subject to be judged solely by the eyes, therefore a good design or the aesthetics of the product helps the consumer to make a purchase decision.

3. Safeguard the aesthetic value of the product- In order to gain market share, the companies which manufacture the Counterfeit product usually copy the design, therefore, registration is important for the protection of the design.

4. Helps in increasing creativity- Registration and protection of the design help to boost the creativity of the industrial field.

5. Evidentiary value – the registered design is recorded in the Register of Design which is kept at Patent Office. These contain details of the details of the proprietor of the registered design. Therefore, it acts as a prima facie evidence if at any time the ownership is in question.

Pre-requisites: The pre-requisites for registration are:

a. New or original.

b. Capable of being made and sold as an individual item.

c. Prior to filing an application, should not be disclosed to the public in India or in any country by publication or by any means.

d. Should be significantly distinguishable from existing designs.

e. Should not contain or comprise scandalous or obscene matters.

Other pre-requisites are:

f. The design should solely be judged by the eyes.

g. The design should not be a functional feature.

h. Should be applied by an industrial process.

i. Trademark or property mark or artistic work as defined under the Copyright Act should not be included.

Documents required:The following documents are required for the registration of the Design:

a. Application Form-1 is required to be filled by the applicant.

b. As per Rule 11(1) of the Design Rule, 2001, four copies of the representation of the design and the application shall be submitted which should be signed and dated by the applicant or the agent.

c. Under Rule 14 of the Design Rule, 2001, the Representation shall consist of the exactly similar drawings, photographs, tracing or other representation of the design.

d. Power of Attorney has to be submitted by the applicant.

e. As per Rule 11(3) of the Design Rule, 2001, If the same design is desired to be registered in more than one class of article then a separate application has to be made in each class of articles.

f. Under Rule 4 of the Design Rule, 2001, address for service to be provided by the applicant which would include an address for service in India. Such Address may include an actual address, e-mail or digital address of the applicant or the Agent.

g. Under Rule 13 of the Design Rule, 2001, the may be asked to provide with one or more representation or specimen of the design, if so required by the Controller.

Process: The Registration process of the Design is as follows:

1. Filing of the Application- The application is to be filed before the Controller in the prescribed manner and it should contain the following details:

• Details of Applicant

• Class of articles in which the design is to be registered.

• The applicant shall be asked to state the purpose for which the article to be used if so required by the Controller.

• Statement of Novelty

The Design can be registered under one or more class of article. And if any question arises as to which class the design falls then the decision of the Controller will be final.

2. Power of the Controller to make orders regarding substitution or amendment of the Application, etc., -The examiner will inspect the application and will make Acceptance Statement or Objection Statement.The objection statement may also require the applicant to make certain amendments to the application form. If the Acceptance Statement will be there then the Controller accepts the Application and the design will be registered. If the Objection Statements are there the Controller will intimate the same in writing to the Applicant. Within three months from the date of such intimation the applicant will be required to remove the objection or apply for hearing and if not done so the applicant shall be deemed to have withdrawn his application.

After and based on such hearing, the Controller may accept or refuse to register design if he so thinks fit. Such decision shall be communicated to the applicant or his agent in writing and the person aggrieved of refusal can appeal to High Court.

3. Publication of the Registration-after the Application for Registration has been accepted, the Controller shall cause the publication of the particulars of the Design in the Official Gazette so that the design is open to public inspection.

4. Certificate of Registration-after the design gets registered, the Controller grants the Certificate of Registration to the proprietor of the design. Further, the Controller also has the authority to issue one or more copies of the certificate in case the original is lost.

5. Register of Design-u/s 10 of the Act, a book called as Register of Design is to be maintained in the Patent Office which would contain details of the proprietors of the registered designs such as name, address, notification of assignment and other matters as prescribed. It would serve as the prima facie evidence of any matter authorized to be entered therein.

Cancellation of Registration of Design- Even after the registration of the Design, the petitioncan be filed for the cancellation of registration. The same is to be done under sec. 19 of the Act and the grounds on which it may be done will be the same as the pre-requisite for registration of the design as stated above. Such a petition can be made by a person who is a registered proprietor as well as the person who is not so. Here, the statement, counter-statement and ‘evidence and evidence in reply by way of affidavit’ will be exchanged between the parties and a date of hearing will be fixed by the Controller if the parties intend to be heard. Even if the parties do not attend the hearing the Controller gives the decision as to whether the registered design stands canceled or not which is based on the petition and objection made by the parties.

Piracy act- U/s 22 of the Design Act, 2000, during the existence of copyright and without license or consent of the registered proprietor, certain acts would be considered as piracy. Such acts are as follows:

1. For the purpose of sale, the registered design of any article or any class of article is applied,

2. To import such article for sale’

3. Publish or expose or cause to be published or exposed for sale.

The remedy available- Under the above circumstances, the registered proprietor can institute a suit of injunction and recovery of damages against any person engaged in such piracy act.

Penalty- Person involved in piracy is liable to pay a sum not exceeding Rs. 25,000/- for every contravention. Though the sum recoverable should not exceed Rs. 50,000/- in respect of any one design.



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