UNIVERSITY OF MUMBAI LAW

ACADEMY

INTELLECTUAL PTOPERTY RIGHTS

Name- Shubham Khaire

2. NATURE

3. LEGAL PROVISIONS

4. QUESTIONS RELATED TO INDUSTRIAL DESIGNS

5. CASE LAWS

6. CONCLUSION
 INDUSTRIAL DESIGN

Meaning
Industrial designs belong to the aesthetic field, but are at the same time intended to serve as
patterns for the manufacture of products of industry or handicraft. Generally speaking, an
industrial design is the ornamental or aesthetic aspect of a useful article. The ornamental aspect
may consist of the shape and/or pattern and/or color of the article. The ornamental or aesthetic
aspect must appeal to the sense of sight. The article must be reproducible by industrial means,
which is why the design is called ‘industrial’. If this latter element is missing, the creation may
rather come under the category of a work of art, the protection of which is assured by the
copyright law rather than by a law on industrial property.

Industrial Design is the use of both applied art and applied science to improve the aesthetics,
ergonomics, functionality, and/or usability of a product, and it may also be used to improve the
product's marketability and even production. The role of an industrial designer is to create and
execute design solutions for problems of form, usability, physical ergonomics, marketing, brand
development, and sales. Industrial design studies function and form and the connection between
product, user, and environment. Generally, industrial design professionals work in small scale
design, rather than overall design of complex systems such as buildings or ships. Industrial
designers don't usually design motors, electrical circuits, or gearing that make machines move,
but they may affect technical aspects through usability design and form relationships. Usually,
they work with other professionals such as marketers to identify and fulfill customer needs and
expectations.

Industrial design can overlap significantly with engineering design, and in different countries the
boundaries of the two concepts can vary, but in general engineering focuses principally on
functionality or utility of products whereas industrial design focuses principally on aesthetic and
user-interface aspects of products. In many jurisdictions this distinction is effectively defined by
credentials and/or licensure required to engage in the practice of engineering. Industrial design as
such does not overlap much with the engineering sub-discipline of industrial engineering, except
for the latter's sub-specialty of ergonomics. In order to be protectable an industrial design must
according to other laws be new and/or original. Industrial designs are usually protected against
unauthorized copying or imitation. The protection usually lasts for five, ten or fifteen years.14
Novelty or originality is determined with respect to the existing design corpus. An industrial
design is primarily of an aesthetic nature, and does not protect any technical features of the
article to which it is applied.

The design refers to features of shape which appeal to the eye and should be judged solely to the
eye and should be judged solely by the eye and not by any functional considerations. A design in
order to be registered must be both new and original and not previously published. The words
‘new’ or ‘original’ involves the idea of novelty or originality evidence of experts in the trade is
admissible.

The design for registration should not be published previously. Publication may be of two types-
i) Publication in prior documents, and

ii) Publication by prior use.

The document that certifies the protection of an industrial design may be called a registration
certificate or a patent. If it is called a patent, one must, in order to distinguish it from a patent for
invention, always specify that it is a patent for an industrial design. With the remarkable
evolution in design art in recent years, consumers have become more and more interested in a
combination of utility and pleasing aesthetic appearance in the articles they buy. This tendency
results in an increasing investment by manufacturers in design development and in a
corresponding necessity to protect the result of their creative work through the registration of the
relevant designs. Industrial designs are applied to a wide variety of products of industry and
handicraft: from technical and medical instruments to watches, jewelry, and other luxury items;
from house wares and electrical appliances to vehicles and architectural structures; and from
textile to leisure goods. Only particular class of articles can be registered under the Designs Act,
2000.

The design must be capable of being applied to an article in such a way that the article to which
it is applied will appeal to and be judged solely by the eye. The particular shape, configuration,
pattern or ornamentation must have only an appeal. Designs which are not new or original or
have been disclosed to the public anywhere in India or in any other country by publication or not
significantly distinguishable from known designs or combinations of known designs or comprise
or contain scandalous or obscene matter are not registerable under the Designs Act.
 Nature of Industrial Designs
Consumers are influenced by the appearance of the article of their choice. Many people blindly
choose the article which catches their eye by appearance. At the time of purchase, people are
attracted by a design which has an artistic merit. Some articles with a particular design may
attract the public and within a short period, the whole stock may be sold in the market. Hence,
design of goods increases profits by attracting customers. Producers hunt for an attractive design
which will increase sales. Some intellectuals do hard work by putting much thought, time and
expense to find a design for a particular article which will increase sales. The object of design
registration is to see that the creator of a profitable design is not deprived of his reward by others
applying it to their goods without his permission.

Design according to the Indian Designs Act, 2000, means only the features of shape,
configuration, pattern or ornament or composition of lines or color or combination thereof
applied to any article whether 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 or construction or anything which is in substance a mere mechanical device,
and does not include any trade mark.

Legal Provisions
The Designs Act was passed in 1911 by the then British Government in India. Since then
extensive amendments had been made in the Designs Act. Meanwhile, India made tremendous
progress in the field of science and technology. There had been considerable increase in the
registration of designs. To provide more effective protection to registered designs and to promote
design activity in order to promote design element in an article of production, it had become
necessary to make the legal system of providing protection to industrial designs more efficient. It
was also intended to ensure that the law did not unnecessarily extend protection beyond what
was necessary to create the required incentive for design activity while removing impediments to
the free use of designs.

To achieve these objectives and in order to repeal the Designs Act, 1911 which had been
extensively amended, the Designs Bill was introduced in the Parliament. Since the enactment of
the Designs Act, 1911, considerable progress has been made in the field of science and
technology. The legal system of the protection of industrial designs requires to be made more
efficient in order to ensure effective protection to registered designs. It is also required to
promote design activity in order to promote the design element in an article of production. An
article is distinguished not only by its utility but also by its visual appeal which too usually play
an important role in shaping the buyers preference for the article. Therefore, the design of an
article and even design of its packaging is important from the commercial point of view.
The Designs Act, 2000, after repealing the Act of 1911 aims at protecting the designs which
serve the purpose of visual appeal. A design to be registerable under the Designs Act, 2000, must
be of some shape, configuration, pattern or ornamentation or composition of lines or colors
applied to such article in any form by any industrial process or means but does not include any
mode or principle of construction or anything which is in substance a mere mechanical device
but does not include any Trade or Property mark or artistic work. In order to get statutory
protection under the Designs Act, 2000 the design has to satisfy the definitional requirements of
Section 2(d). As per the definition, design “does not include any mode or principle of
construction or anything which is in substance a mere mechanical device.”The entities having
unique and distinct pattern, appearance and design can register under Indian Design Act.

The registered owner, under the act, gets the exclusive right to apply the design to any article in
the class in which the design is registered. Apart from providing protection of design element of
industrial protection, the law aims to promote innovative activity in the field of industries. From
an intellectual property law perspective an industrial design is concerned only to the ornamental
or aesthetic aspects of a product. As per Indian law protecting industrial design, ‘design’
constitutes only the features of shape, configuration, pattern, ornament or composition of lines or
colors 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, and does not include any trade mark as defined in clause (v) of sub-section
(1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in
section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of
the Copyright Act, 1957.

In the context of the act, an article implies any object of manufacture and any substance,
artificial or partly natural and includes any part of an article capable of being made and sold
separately. For the purpose of registration under the Act the design must be new or original,
unpublished previously or in existence in any other country and the article must have its
existence independent of the designs applied to it. So, the design as applied to an article should
be integral with the article itself. Trademark and property mark, stamps, labels, tokens, cards,
etc. are excluded from the registration under the act as these cannot be considered as an ‘article’.
Moreover, any mode or principle of construction or operation, which is in substance a mere
mechanical device and it is required that the design should be visible on the finished article.
 Questions related to Industrial design

Why Protect Industrial rights?

Industrial designs are what make a product attractive and appealing. Hence, they add to the
commercial value of a product and increase its marketability. When an industrial design is
protected, this helps to ensure a fair return on investment. An effective system of protection also
benefits consumers and the public at large, by promoting fair competition and honest trade
practices. Protecting industrial designs helps economic development, by encouraging creativity
in the industrial and manufacturing sectors and contributes to the expansion of commercial
activities and the export of national products.

How Can Industrial Designs Be Protected?

In most countries, an industrial design must be registered in order to be protected under industrial
design law. As a general rule, to be registrable, the design must be new or original. Different
countries have varying definitions of such terms, as well as variations in the registration process
itself. Generally, new means that no identical or very similar design is known to have existed
before. Once a design is registered, the term of protection is generally five years, with the
possibility of further periods of renewal up to, in most cases, 15 years. Depending on the
particular national law and the kind of design, an industrial design may also be protected as a
work of art under copyright law. In some countries, industrial design and copyright protection
can exist concurrently. In other countries, they are mutually exclusive: once the owner chooses
one kind of protection, he can no longer invoke the other. Under certain circumstances an
industrial design may also be protectable under unfair competition law, although the conditions
of protection and the rights and remedies ensured can be significantly different.

What Cannot Be Protected By Industrial Design Rights?

Designs that are generally barred from registration in many territories include:

a) Designs that do not meet the requirements of novelty, originality and/or individual character;

b) Designs that are considered to be dictated exclusively by the technical function of a product;
such technical or functional design features may be protected, depending on the facts of each
case, by other IP rights (e.g. patents, utility models or trade secrets);

c) Designs incorporating protected official symbols or emblems (such as the national flag);

d) Designs which are considered to be contrary to public order or morality.

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 me
 What Rights Are Conferred By Industrial Design Protection?

When an industrial design is registered, the holder receives the right to prevent unauthorized
copying or imitation by third parties. This includes the right to prevent all unauthorized parties
from making, selling or importing any product in which the design is incorporated or to which it
is applied. Because industrial design rights are territorial in nature, this right is limited to the
territory for which the design is registered.

What Is The Grace Period For Filing Application?

The existence of a grace period and the corresponding requirements can be provided by national
or regional laws applicable in some countries. If so, the law can allow the filing of an application
for registration of an industrial design after its disclosure, within a limited time period from the
date of disclosure (generally six months or a year).During the grace period, the product which
constitutes the industrial design or in relation to which the industrial design is used could in
particular be commercialized without destroying the novelty of the industrial design and it could
still be possible to file a application for registration in the country concerned before the expiry of
the grace period.30

How Extensive Is Industrial Design Protection?

Generally, industrial design protection is limited to the country in which protection is granted.
Under The Hague Agreement Concerning the International Registration of Industrial Designs, a
WIPO-administered treaty, a procedure for an international registration is offered. An applicant
can file a single international application with WIPO. The applicant can designate as many
Contracting Parties as he wishes.

How Can You Enforce Your Rights?

When Your Industrial Design Is Being InfringedIn case of infringement, the holder of industrial
design rights could, firstly, decide to send a cease or desist letter to the alleged infringer,
informing him of a possible conflict between his industrial design rights and the alleged
infringing product and asking him to cease said infringement. If the infringement persists, the
holder of the industrial design rights could decide to take all appropriate legal measures against
the infringer, as provided for by the applicable law. The enforcement of industrial design rights
may be a complex issue for which it is usually advisable to seek professional assistance from a
lawyer who would in principle be the competent person to provide with advice on how to settle
any dispute.
 Conditions For A Registerable Design
A design can be registerable only when it is new or original and not previously published in
India. A design would be registerable if the pattern though already known is applied to a new
article, e.g., the shape of a teddy bear if applied to a school bag would be registerable. What is
essential is that the design must be new with respect to the class of article to which it has been
applied. A combination of previously known designs can be registered if the combination
produces a new visual appeal. Colour may form a part of design but the color by itself cannot
constitute a subject-matter of design. The novelty or originality is to be judged on the evidence
of experts in the trade. An expert who is aware of what is common trade knowledge and usage in
the class of goods to which the design is applied would be the one entitled to pass the verdict on
the novelty and originality.
 Case Laws
Britannia Industries vs. Sara Lee Bakery, 2001 PTC 23 (Mad)

Britannia industries filed a suit for interim injunction restraining the respondent from
committing the acts of piracy of the applicant’s registered design of its biscuits by the
manufacture of the impugned product ‘Milk Wala’ ‘Milk cream biscuits’ bearing the design
which is identical with or similar to applicant’s design. The Court held on facts, that the main
features in both the biscuits are not substantially same in the eyes of the customer, namely,
children. Therefore, there is no infringement by the respondent in respect of the Designs Act.

Texla Metals and Plastics Pvt. Ltd. Vs Anil K. Bhasin, 2001 PTC 146 (Del)

The court held that the concept of a new or an original type of design is relatable to the
publication of such a design or its availability to the public in India. The court further held that if
the contention that the defendant has received brochures from Malaysia, Korea and Japan with
regard to such goods, the mere receipt of such brochures would amount to publication of such
designs within India.
 Conclusion
A design is something that catches the eyes of the consumers. The design itself may not be of
much use to the consumers yet the uniqueness or attractiveness may tempt them to purchase it.
The more unique the design, the better are the chances of demand increasing. Manufacturers are
ever willing to come up with something new that meets the eye in order to push their sales right
up. The strong competition among various manufacturers benefits the consumers in the end as
they enjoy a variety in products offered by different manufacturers.

However it cannot be forgotten that the creator of the design has spent a whole lot of time and
money in preparing the design, and it is certainly unfair if the design is copied and put to use by
others without the knowledge and permission of the creator. Companies invest large sums in
research and development of products coming up with innovative and useful designs. Therefore
the protection of the industrial designs becomes very important in today’s times when such
designs are prone to copying. In India, the Designs Act, 2000, is a legislation meant to protect
industrial designs. A design to be registerable under the Act must be of some shape,
configuration, pattern or ornamentation or composition of lines or colors applied to such article
in any form by any industrial process or means. However it does not include any mode or
principle of construction or anything which is in substance a mere mechanical device and does
not include any Trade or Property mark or artistic work. In order to get statutory protection under
the Designs Act, 2000, the design has to satisfy the definitional requirements of Section 2(d).
The products which have a unique appearance or a pattern or design can be registered under the
Act. The main aim of law, hence, is to promote innovation.

Design being intellectual property, what law is concerned when it comes to an industrial design
is the ornamental or aesthetic aspect of a product. In the International sphere the Hague
Agreement is an international registration system which offers the possibility of obtaining
protection for industrial designs in a number of States and/or intergovernmental organizations by
means of a single international application filed with the International Bureau of the World
Intellectual Property Organization. Hence under this agreement the need to have a series of
applications in different countries is done away with. Under the The Locarno Classification a list
of classes and subclasses along with an alphabetical list of goods in which industrial designs are
incorporated, with an indication of the classes and subclasses into which they fall and
explanatory notes are prepared. The advantage of the Locarno Classification system is that there
is an industrial design-specific classification system. Hence industrial design searches are much
simpler both at the national and international level.

The Paris Convention covers a wider aspect of industrial property like patents, marks, industrial
designs, utility models, trade names, geographical indications and repression of unfair
competition. In case of any infringement of any designs registered under the Designs Act, 2000,
the judicial remedy is damages along with an injunction. Section 22(2) stipulates remedy in the
form of payment of a certain sum of money by the person who pirates a registered design. Thus a
suit may be filed in the appropriate Court and appropriate manner.