INDUSTRIAL DESIGN

Everyday Language refers to products form and

function; e.g. a comfortable armchair
Business products functional and aesthetic features
affecting its marketability, cost of manufacturing, storage,
repair and disposal
IPR industrial design refers only to the ornamental
or aesthetic aspects of a product. Only appealing to
the eye and is distinct from any technical or functional
aspects

Evolution of Competition
Traditional product
Technology
Pricing of product
Quality of Product

Design differential
1

When companies are competing

at equal price
&
functionality
Design is the only differential
that matters
Mark Dziersk, quoted in
TIME Magazine

INDUSTRY, FASHION &

HANDICRAFTS
Technical and medical instruments
Watches, jewelry and other luxury items
Household products, toys, furniture and electrical
appliances
Cars and architectural structures
Textile designs
Sports equipment
Packaging, containers and get-up products

An industrial design consists of:

Three dimensional features, such as the shape of a
product
Two-dimensional features, such as ornamentation,
patterns, lines or color of a product; or
A combination of one or more such features

What is a Design
Sec 2(d) of The Designs Act, 2000
design means only the feature of shape,
configuration, pattern, ornament or
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,
and does not include any trademark as
defined by the Trade Marks Act, property
mark as defined in the Indian Penal Code
or any artistic work as defined by the
Copyright Act

Shape and Configuration

It signifies something solid (in

three dimensions) where an
idea is incorporated into the
article
Example traveling bag

Pattern, Ornament
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

Consumer Products

Pharmaceutical
Products

Textile & Jewellery

Sec 2 (c) Copyright Act

Artistic work 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 is not a subject matter of an

industrial design

Sec 2(a) of the Designs Act, 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

Creativity in Business
Customize products to appeal to specific
market segments
Small modifications in a product
suitable for different age groups, cultures or social
groups
E.g. watch

Create a niche market

Introduce new products
to differentiate from competitors
Locks, shoes, crockery or jewelry, cars
etc.

Strengthen brands
combined with trademarks to enhance
distinctiveness of their brand
E.g. Apple i-pod, Nike

Why protect a design

ID adds value to product attractive and appealing
may become its unique selling point
Exclusive right to prevent its unauthorized copying or
imitation by others
Fair return on investment valuable design helps in it
Business assets the more successful a design, the
higher the value of a company
Licensed enter markets unable to serve
Fair competition promotes the production of
aesthetically attractive products

In order to irreplaceable, one must

always be different Coco Chanel

How to protect
A design must be registered in order to be
protected
File an application in the national
Intellectual Property Office

How to protect
European Union unregistered designs for
three years from date of publication in the EU
limited protection
Provide companies an opportunity to test market
for products before registering
All designs may not succeed
Some designs have short lifespan
Important for fashion industry where some
designs remain in market for very short time
Once manufactured register within 12 months

Rights provided by industrial design

protection
Owner gets the right to prevent
unauthorized copying or imitation
Exclude all others from making, offering,
importing, exporting or selling any product
in which design is incorporated
The law and practice of actual country
determine the actual scope of protection

Example: If your company has designed

an umbrella
innovative design and registered
exclusive right over the design
Competitor - making, selling or importing
the same or substantially the same design:
prevent him from making the same
design,
obtain compensation for damages which
your business has suffered from

Requirements for Registration

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
Not comprise of obscene matter
Not be contrary to public order or morality

New or Original
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.

Original
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)]

Designs that cannot be protected

Designs that do not meet the criteria of novelty,
originality and/or individual character
Designs that are dictated exclusively by
technical function
Designs incorporating protected official symbols
or emblems
Designs which are considered to be contrary to
public order or morality
Any trade mark
Some countries exclude handicrafts

What are not Registrable

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

Sec(4), Designs Act

Prohibition of registration of certain
designs. A design which:
Is not new or original; or
Has 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 way prior to the filing date, or
where applicable, the priority date of the
application for registration; or

Sec(4), Designs Act

Prohibition of registration of certain
designs. A design which:
Is not significantly distinguishable from
known designs or combination of known
designs; or
Comprises or contains scandalous or
obscene matter,
Shall not be registered

How important to keep design confidential

Absolutely crucial
Central requirement of design protection `newness
Confidentiality agreements in place
A design advertised in a companys
catalogue or brochure is not `new

Some countries allow grace period

registration within six months or a year
from the moment design was made public
Example articles bearing the design are
sold, displayed at a trade show, exhibition
or fair, or published in a catalogue,
brochure or advertisement prior to filing an
application

Industrial and International

Exhibitions
Sec (21), The Designs Act, 2000 states that the
exhibition of a design or of any article to which a
design is applied shall not prevent the
design from being registered or invalidate the
registration thereof:
Provided that the exhibitor exhibiting the design
or article, or publishing a description of the
design, gives to the Controller previous notice in
the prescribed form

Provided that 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

How to register a design

An application form, drawings and/or photographs of
design
Seven different views for a three dimensional design
Written description or a statement of novelty
Pay the appropriate filing fee
Examination
Examination report within 1-2 months
Reply within 6 months from the date of filing to
objections, if any
From 6 to 12 months registered

Filing Requirements
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 Representations 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 of Design Application

KOLKATA
H.O.

Delhi

Mumbai

Receiving Center Receiving Center

Receiving & Examination

Chennai
Receiving Center

Contd

Contd. from previous slide

Preparation of the Representation Sheet

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

Representation Sheet
Name of the Applicant
XYZ, PVT.LTD.
Date :-

No. of sheet - 05
Sheet No.- 01

Side view

(1) STATEMENT OF NOVELTY

(2) DISCLAIMER
Signature of Applicant

Name of the Applicant

XYZ, PVT.LTD.

No. of sheet
Sheet No.-

Statement of Novelty
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.

(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)

(SPECIMEN OF REPRESENTATION SHEETS)

RIGHT SIDE VIEW

LEFT SIDE VIEW

Example with a toothbrush

Shape & Configuration signify something solid
where an idea has been incorporated into the
article.

Contd.

Example with a toothbrush

Pattern or ornament or composition of colour /
lines relates to something two dimensional.

Contd.

Example with a toothbrush

When a figure, showing the feature of the design of
an article, is drawn on a paper it will be regarded as
if design has been applied to the article sought to be
registered.

Contd.

Example with a toothbrush

A new shape applied to toothbrush which
produces a new visual appearance on the
article.

Contd.

Example with a toothbrush

Design means a conception or suggestion or idea
of a shape or pattern which can be applied to an
article by industrial process or means.

Contd.

Example with a toothbrush

Any mode or principle of construction or operation
or anything which is in substance a mere
mechanical device, would not be a registerable
design.

Contd.

Example with a toothbrush

The features of the design in the finished article
should appeal to and are judged solely by the
eye.

Contd.

Example with a toothbrush

The design should be applied or applicable to
any article by any industrial process.

Contd.

Example with a toothbrush

Designs of artistic nature like paintings,
sculptures and the like which are not produced
in bulk by any industrial process are excluded
from registration under the Act.

STAGES FROM FILING TO REGISTRATION

Filling of
Application

Abandoned

Refusal

Numbering &
Dating of
Application

Examination

Noncompliance
of Objection (s)

Communication
of Objection (s)

Hearing if
objection (s) is
/are contested

Removal of
Objection (s)
Re- Examination

Appeal to
High Court

Waiving /
removal of
Objection (s)

In case of allowance
of appeal

Acceptance
Notification in the
Official Gazette

Issue of Certificate

Combining functional and aesthetic features

Functional features patent protection or where
function not obvious from the product keep it as
trade secret
New product combines functional features with
new design elements then both need to be
protected
Apple i-pod classic case of using innovation
and design to build and sustain competitive
edge

Who owns the design

Creator
Employer if generated under the terms
of employer contract, unless otherwise
agreed upon

External designer under contract the

rights belong to company that commissioned the
contract, unless otherwise agreed upon

Different designs through a single

application
If all designs relate to a single product
some countries allow a single application; in
India one design one application
Single design to a set of articles
Variants two earrings, one clip on and one for
pierced ears must apply to same article

Set of articles articles of same general character,

e.g. cutlery (forks, spoons, knives), household
appliances (hair dryer with its nozzles and brushes)

Cancellation of Registration
Any time after the registration, interested
person can present a petition to the controller for
cancellation of the design, on following grounds:
The design has been
Previously registered
Published in India or anywhere else
Not new or original
Not registrable under the Act
Not a design

IP dispute - opportunity
A small jeweler in Chickpet, Bangalore
One day horrified to see his designs at a
Jewelry retail outlet of a large Indian
industrial conglomerate
His son immediately contacted an IP
lawyer
The designs had not been registered by
them

paper-based sketches and drawings

(protected automatically by copyright)
Also clearly indicated evolution of the
design
Opponents argued that their designers
had independently created the designs
just a coincidence
However, sale of record register also
showed that the conglomerate had bought
the pieces for giving as gifts
Immediately settled out of court

Results
Small designers got a lump some as
compensation
The industrial house agreed to stop production
and outsource all requirements of five years to
them
Highlights the importance of archiving the
documents in a systematic manner
Good IP advice
IP dispute turned into an opportunity

Cases
Hindustan Sanitaryware & Industries Ltd. vs. Dip Crafts
Industries: 2003(26) PTC163 (Del)

Case under the Designs Act, 2000

Plaintiff had claimed that defendants copied the design
Stylush, Corel and Ultra in respect of bath tubs
Defendant had not established that he had been selling
bath tubs prior to the registration obtained by plaintiff in
respect of similar designs
Plaintiff had a registered design
Sufficient resemblance between the two designs and
the plaintiffs design was protected

Cases
Dabur India Ltd. Vs. Rajesh Kumar & Ors 2008 (37) PTC 227
Suit filed alleging infringement of design in respect of a bottle
which is being used by plaintiff for packing hair oil
Court found plaintiffs bottle to be common bottle used by several
other companies
Bottles were held to be in use much prior to the registration of the
design of the plaintiff
No peculiar feature of the bottle registered as a design and the
plaintiff had not pin pointed any novelty in the design of the bottle
Held that for validly of the registered design there must be some
novelty and originality in the design sought to be protected and it
must have not been pre-published

Cases
Faber Castell Vs. Pikpen - 2003 PTC 538

Faber Castell Textliner.

A dark green body
Unique cap of same colour as
colour of ink
Gold lettering on green body
Regd design.
Injunction granted

Cases
Samsonite Vs. Vijay Sales 1998 PTC 372

Suitcases made by plaintiff

copied by defendant
The entire range was copied
Claim was based on
drawings & copyright
No registered design
No protection granted as it is
manufactured industrially
more than 50 times.

Cases
Preeti Gupta Vs. Rajendra Prahladkar 2002 PTC 64

Design of photo-frames
Registered design
Defendant no.2 was an
employee of plaintiff
Injunction granted protecting
the copyright in the design of
photo-frames

Trademark & Design Overlap

Design configuration of an article
Trademark in configuration only if it has acquired
secondary meaning through use
Secondary meaning configuration, e.g. shape of a soft
drink bottle or a perfume bottle has come to be
associated with a particular source of supply of the soft
drink or perfume
Initially take design protection, then when it acquires
secondary meaning through use, can go for trademark
protection
If design serves function of a trademark, nobody else
should be allowed to use so as to cause confusion

Famous designs as trademarks

Conclusion
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.