CONDITIONS FOR A

REGISTERABLE DESIGN
• ORIGINAL & NOT PREVIOUSLY
PUBLISHED IN INDIA.
• COMBINATIONS OF PREVIOUSLY
KNOWN DESIGNS CAN BE DESIGNED IF
IT PRODUCES NEW DESIGN APPEAL.
• COLOUR,SHAPE & SIZE ALSO CAN BE
SUBJECT MATTER OF REGISTRATION.
• NOVELTY OR ORIGINALITY IS JUDGED
BASED ON THE EXPERTS EVIDENCE.
• . DESIGN MUST NOT BEEN
PREVIOUSLY PUBLISHED IN PRIOR
DOCUMENTS.
• IF THE FIRST DESIGNER DRAWS ON
PIECE OF PAPER & ITS BECOMES THE
PART OF THE INVENTORY.
• SECOND DESIGNER CANT REGISTER
IT.
• IF A FASHION DESIGNER WORKS ALSO
INCLUDED CAN COME UNDER
DESIGN
• DESIGN MUST BE INCORPORATED IN
THE ARTICLE & IT SHOULD HAVE
VISUAL APPLEAL.
 Elements Of Design
India
• DESIGN SHOULD BE NEW OR ORIGINAL, NOT
PREVIOUSLY PUBLISHED OR USED IN ANY
COUNTRY BEFORE THE DATE OF APPLICATION FOR
REGISTRATION

• NOVELTY MAY RESIDE IN THE APPLICATION OF A

KNOWN SHAPE OR PATTERN TO NEW SUBJECT
MATTER
– A STATEMENT TOWARDS NOVELTY OF DESIGN NEEDS TO
BE MADE IN THE APPLICATION

• DESIGN SHOULD BE APPLIED OR APPLICABLE TO

ANY ARTICLE BY ANY INDUSTRIAL PROCESS

• DESIGN MUST APPEAR AND SHOULD BE VISIBLE

ON THE FINISHED ARTICLE, FOR WHICH IT IS
MEANT
4/9/23 Copyright 2008 4
 Drawings
• MOST IMPORTANT ELEMENT OF A DESIGN
APPLICATION
• BEST WAY TO REPRESENT ONE’S DESIGN
• “PICTURES SPEAK A THOUSAND WORDS”
• TYPICALLY, EITHER A DRAWING OR A BLACK
AND WHITE PHOTOGRAPH OF THE CLAIMED
DESIGN ACCEPTABLE
• BEST TO INCLUDE A SUFFICIENT NUMBER
OF VIEWS
– THIS WILL ENSURE COMPLETE DISCLOSURE OF
THE APPEARANCE OF THE CLAIMED DESIGN
4/9/23 Copyright 2008 5
 Not A Design
• IF ON REMOVING ORNAMENTATION
ONLY A PIECE OF PAPER, METAL OR LIKE
MATERIAL REMAINS AND THE ARTICLE
REFERRED CEASES TO EXIST THEN
DESIGN IS NOT REGISTRABLE
• ARTICLE MUST HAVE ITS EXISTENCE
INDEPENDENT OF THE DESIGNS
APPLIED TO IT

4/9/23 Copyright 2008 6

 PROCEDURE FOR THE
REGISTRATION
• SUBMISSION OF APPLICATION: THE
PROPRIETOR OF THE DESIGN MAY HAVE
TO FILE A APPLICATION WHICH IS
ACCOMPANIED BY THE PRESCRIBED
FEE.
• HE HAS TO ALSO FILE A BRIEF
STATEMENT OF NOVELTY.
• ACCEPTANCE/REFUSAL: ONCE
RECEIVED CONTROLLER FINDS
APPLICANTS FULFILLS THE
• IF ANY OBJECTIONS APPEAR
CONTROLLER SENDS THE STATEMENT OF
THESE OBJECTIONS.
• REMOVAL OF OBJECTION: THE
APPLICANTS HAS TO CLARIFY ON THESE
OBJECTIONS WITHIN ONE MONTH,
FAILURE TO DO SO THE APPLICATION
SHALL BE DEEMED TO BE WITHDRAWN.
• WHEN THE CONTROLLER REFUSES THE
APPLICATION TO REMOVE THE OBJECTION
AFTER THE SUBMISSION, THE APPLICANT
MAY APPEAL TO THE SUPREME COURT
• DECISION OF THE CENTRAL
GOVERNMENT IS FINAL.
• PUBLICATIONS OF PARTICULAR: ON
ACCEPTANCE OF THE DESIGN FILED
THE CONTROLLER SHALL DIRECT THE
REGISTRATION & PUBLICATION OF
THE PARTICULARS OF THE
APPLICATIONS IN THE OFFICIAL
GAZETTE & CONTROLLER MAY
SELECT ONE OF THE BEST DESIGN.
• . REGISTER OF DESIGNS: AFTER THE
ACCEPTANCE, THE DESIGN WILL BE
ENTERED IN THE REGISTER ALONG
WITH CLASS, DATE OF FILING, CLAIMS
ETC.
• IF IT IS MAINTAINED IN THE FORM OF
SOFTCOPY IT WILL BE MAINTAINED
UNDER THE SUPERVISION OF
CONTROLLER IN CASE OF ANY
DISPUTE OR DOUBT REGARDING THE
DESIGN, THIS MASTER COPY WILL
HAVE FINAL SAY
• ONE ACCPETED DESIGN IS
REGISTERD ITS EXTENSION,EXPIRY
DATE ARE CALCULATED.
• RIGHT IS GRANETD FOR THE
MAXIMUM OF 10 YEARS FOR THE
PROPERITOR.
• BEFORE THE EXPIRY ON THE
PAYMENT OF THE PRESCRIBED FEE IT
CAN BE EXTENDED FURTHER UPTO
FIVE YEARS.
 Design Patent Contents

– PREAMBLE, STATING NAME OF THE APPLICANT,

TITLE OF THE DESIGN, AND A BRIEF
DESCRIPTION OF THE NATURE AND INTENDED
USE OF THE ARTICLE IN WHICH THE DESIGN IS
EMBODIED
– CROSS-REFERENCE TO RELATED
APPLICATIONS (UNLESS INCLUDED IN THE
APPLICATION DATA SHEET)
– STATEMENT REGARDING FEDERALLY
SPONSORED RESEARCH OR DEVELOPMENT
– DESCRIPTION OF THE FIGURE(S) OF THE
DRAWING
– FEATURE DESCRIPTION
– A SINGLE CLAIM
– DRAWINGS OR PHOTOGRAPHS
4/9/23 Copyright 2008 12
 Design Patent

• A Single Claim
– DEFINES THE DESIGN WHICH APPLICANT
WISHES TO PATENT, IN TERMS OF THE ARTICLE
IN WHICH IT IS EMBODIED OR APPLIED
– CLAIM MUST BE IN FORMAL TERMS TO “THE
ORNAMENTAL DESIGN FOR (THE ARTICLE
WHICH EMBODIES THE DESIGN OR TO WHICH IT
IS APPLIED) AS SHOWN OR AS SHOWN AND
DESCRIBED.”
– DESCRIPTION OF THE ARTICLE IN THE CLAIM
SHOULD BE CONSISTENT IN TERMINOLOGY
WITH THE TITLE OF THE INVENTION
4/9/23 Copyright 2008 13
 Term of Protection

Country Term in Years

India 10 + 5
OHIM*, Germany, France, Spain 25
U.S. 14
Japan 15

*OHIM: Office of Harmonization of Internal Market

4/9/23 Copyright 2008 14

 PIRACY OF DESIGN
• INFRINGEMENT IS TERMED AS PIRACY
IN DESIGN
• IT IS NOT LAWFUL FOR ANY PERSON
TO UNAUTHORISLY USE THE
REGISTERD DESIGN FOR ANY
COMMERCIAL BENEFITS.
• OBVIOUSLY IMITATION OF DESIGNS
ALSO NOT ALLOWED BY THE COURT
AS IT DECIEVS THE PUBLIC.
• REMEDY:EITHER IT WILL LEAD TO
PAYAMENT OF CERTAIN MONEY TO
ORIGINAL PERSON BY THE PIRATED
PERSON.

• A SIUT FOR INJECTION CAN ALSO BE

FILED RESTRAINING THE REGISTERD
DESIGN FOR FURTHER MISUSE.
 ENTITLED TO FILE AN
APPLICATION
• THE AUTHOR OF THE DESIGN WHO
EXECUTES THE WORK.
• OTHER PERSON WHO ACQUIRES THE
RIGHTS OF THE WORK .
• JOINT AUTHORSHIP CAN ASLO BE ENTITLED
TO APPLY FOR THE DESIGN.
• A FOREIGNER CAN ALSO ENTITLED TO
APPLY FOR THE DESIGN DEPENDING ON
THE COUNTRYS DESIGN ACT.
 Design Infringement
• IN INDIA – APPLICATION OF A DESIGN OR ITS
IMITATION TO ANY ARTICLE BELONGING TO CLASS
OF ARTICLES IN WHICH THE DESIGN HAS BEEN
REGISTERED FOR THE PURPOSE OF SALE OR
IMPORTATION OF SUCH ARTICLES WITHOUT THE
WRITTEN CONSENT OF THE REGISTERED
PROPRIETOR

• IN US- NOT EXACT COPY BUT EVEN

SUBSTANTIALLY SIMILAR CONSIDERED
INFRINGEMENT

• PUBLISHING SUCH ARTICLES OR EXPOSING

TERMS FOR SALE WITH KNOWLEDGE OF THE
UNAUTHORIZED APPLICATION OF THE DESIGN TO
4/9/23
THEM ALSO INVOLVES PIRACY OF THE DESIGN 18
Copyright 2008
 BURDEN OF PROOF BY
PLAINTIFF
• DESIGN IS APPLIED WITHOUT THE
LICENCE.
• THE ARTICLES WHICH THE DESIGN
BELONGS MAY OUT OF SCOPE OF
APPLIED REGISTRATION.
• THE APPLICATION HAS BEEN DESIGN
BY THE PIRATOR FOR COMERCIAL
BENEFITS.
• DESIGN IS IMITATED ON THE CLASS OF
GOODS ON WHICH IT IS REGISTERD.
 PROOFS SET UP BY THE
DEFENDENT
• DEFENDANT MAY QUESTION THE
PLAINTIFF WETHER HE HAS
REGISTERD THE DESIGN.
• IF DEFEDENT IS USING THE DESIGN
AFTER THE EXPIRY PERIOD PLAINTIFF
IS NO ENTITLED TO ANY RELEIF.
THE UNREASONABLE DELAY OF THE
PROCEEDINGS MAY ALSO DENY THE
RELIEF FOR THE PLAINTIFF.
 Interesting Designs in India
No.190328
No.190517
Waston Industrial Times of 3
M/s. Panna Plastic
“CLOCK”
“COMB”

No.187325
M/s. Deere & Co.
“TRACTOR”
No.190250
Vedpal Shewag
“MOTORCYCLE”

4/9/23 Copyright 2008 21

 Some famous Design Patents
D265,754 D265,332

4/9/23 Copyright 2008 22

 What good Designs can do
Images obtained from various copyrighted sources, to which it is attributed.
No liability or ownership of material is warranted by the use of these images

Logos and names of products are trademarks and copyrights owned by the corresponding businesses and corporations

4/9/23 Copyright 2008 23

 Recognize this Product?

4/9/23 Source: Jefferies & Co., Inc.Copyright 2008 24

 A Typical MP3 player’s Components
Components of a typical product & the corresponding manufacturers
Company Description
Toshiba 30GB 1.8" HDD st ry
PortalPlayer Decoder/SoC e Indu
a r
Broadcom Video decoder/processor ar d w
h H
Samsung SDRAM - 256Mbit ec
h- T
Wolfson Microelectronics Audio codec Hig
Linear o
USB Power
in Manager/Li-Ion Battery charger
W h
National o’s Down Switching Regulator
Step
W h
of
Philips
List DC/DC converter with I 2C Interface
Silicon Storage
b e
l Technology Parallel Flash - 8Mbit
rit a
e
AV
Philips Power Management Unit
Cypress PSoC Mixed Signal Controller - Touch Pad

4/9/23 Copyright 2008 25

Source: Jefferies & Co., Inc.
 Strategy
• Crowded product & technology area
• Several players
 Sourced in components
 Focused on look, feel &
use aspects

4/9/23 Copyright 2008 26

 Market Share of iPod®
Yearwise Growth in Market Share in Units Sold

2004 56%
2005 72%
2006 72%
2007 70%

Source: http://apple20.blogs.fortune.cnn.com/2008/01/29/beyond-the-incredible-shrinking-ipod-market/

4/9/23 Copyright 2008 27

 Exclusivity in a Crowded Area

19 US Design Patents
D497,618 D472,245

And Others…

4/9/23 Copyright 2008 28

 Copyright in Designs

• AESTHETIC FEATURES OF A USEFUL ARTICLE MAY BE

PROTECTED WHEN THEY ARE NOT IN ANY WAY REQUIRED OR
NECESSARY FOR THE PERFORMANCE OF THE UTILITARIAN
FUNCTION
• COPYRIGHT IN DESIGN:-
• (A) CAPABLE OF BEING REGISTERED AS A DESIGN UNDER THE
1911 ACT,
• (B) WHICH HAS NOT BEEN SO REGISTERED,
• (C) SHALL CEASE AS SOON AS ANY ARTICLE TO WHICH THE
DESIGN HAS BEEN APPLIED HAS BEEN REPRODUCED
MORE THAN FIFTY TIMES BY AN INDUSTRIAL PROCESS BY
THE OWNER OF THE COPYRIGHT OR, WITH HIS LICENCE, BY
ANY OTHER PERSON. 29
AMPRO FOOD PRODUCTS &
ASHOKA BISCUITS(DESIGN)
• APPLENTS& RESPONDENTS ARE THE
MANUFACTURER OF BISCUITS .
• COURT HELD THAT IT WAS COPIED DESIGN
& ISSUED TEMPORARY INJUNCTION NOT TO
USE THIS DESIGN FOR SELLING THE
BISCUITS.
BRITANNIA V/S SARA BAKERY
• BRITANNIA FILED A SUIT FOR INTERIM
INJCUCTION AGAINST THE SARA BAKERY
THAT THEY ARE USING THE DESIGNS OF
MILK WALA & MILK CREAM BISCUITS
APPELLANTS .
• BUT THE COURT DECLARE THAT THE MAIN
FETAURE IS NOT THE SAME IN THE EYE OF
THE CUSTOMER ESPECIALLY CHILDRENS .
• SO THERE IS NO INFRINGEMENT HELD.
HAWKINS V/S ZARERCHAND
SHAH
• BOTH ARE MANUFACTURER OF COOKERS .
• HAWKINS FILED FOR THE INETRIM
INJUCTION AGAINST THE SELLING OF TAWA
UNDER THEIR BRANDS BCOS SHAH WERE
SELLING THE HAWKINS BRAND IT MAY
CREATE SOME DECEPTIONS TO THE
CONSUMERS.
• BUT THE COURT DISMISSED THE INJUCTION
STATING THAT THEY ARE INDEPENDENT TO
DO THE DESIGN REGISTRATION & THEY
CAN SELL THEIR OWN BRANDS