INDUSTRIAL DESIGNS

•The word Design‘ is defined as the features of shape, configuration, pattern,

ornament or composition of lines or colors applied to any article. The Design
may be of any dimension i.e. one or two or three dimensional or a
combination of these.
• In addition, it may be created by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the finished
article appeal to and is judged solely by the eye.
•But the word Design does not include any mode or principle of construction
or anything which is in substance a merely mechanical device.
•The main object of registration of industrial Designs is to protect the original
creativity of the originator and encourage others to work towards the art of
creativity.
ELIGIBILITY CRITERIA
•The Design for which the protection is being sought must be novel or original
i.e., should not be disclosed to the public by prior publication or by prior use
or in any other way.
• The Design should be significantly distinguishable from the already registered
Designs existing in the public domain.
 ACTS AND LAWS TO GOVERN INDUSTRIAL DESIGNS
•In India, Industrial Designs are governed under 'The Designs Act' 2000
(http://www.ipindia.nic.in/acts-designs.htm) and ‗Design Rules‘ 2001
(http://www.ipindia.nic.in/rules-designs.htm), which have been amended from
time to time in 2008, 2013, 2014 and 2019. The Design should include the
following characteristics: It should be novel and original.
• It should be applicable to a functional article.
•It should be visible on a finished article. There should be no prior publication or
disclosure of the Design. Some of the famous Industrial Designs are mentioned
below:
•Coca-Cola Bottle - The contoured-shaped glass bottle of the Coca- Cola
Company is marveled as a master showpiece in the field of industrial design. It
was designed in 1915 and is still a cynosure for all eyes.
• iPhone - It is a highly popular mobile phone manufactured by American
company ‗Apple Inc‘. The sleek, handy and rectangular body is pleasing to the
eyes. The corners are round and smooth. The features, such as on/off and
speech volume are easy to operate
 ENFORCEMENT OF DESIGN RIGHTS

• Once the applicant has been conferred with the rights over a specific Design,
he has the right to sue(take legal action against person or organization) the
person (natural/entity) if the pirated products of his registered design are
being used.
• He can file the infringement case in the court (not lower than District Court)
in order to stop such exploitation and for claiming any damage to which the
registered proprietor is legally entitled.
• The court will ensure first that the Design of the said product is registered
under the Designs Act, 2000.
• If the Design is found not registered under the Act, there will not be legal
action against the infringer.
• If the infringer is found guilty of piracy or infringement, the court can ask
him to pay the damage (₹ 50,000/-) in respect of infringement of one
registered Design.
 NON-PROTECTABLE INDUSTRIAL DESIGNS INDIA
• Any Industrial Design which is against public moral values.
• Industrial Designs including flags, emblems or signs of any country.
• Industrial Designs of integrated circuits.
• Any Design describing the process of making of an article.
• Industrial Designs of – calendars, certificates, forms and other documents,
dressmaking patterns, greeting cards, postcards, stamps, medals.
•The artistic work defined under Section 2(c) of the Copyright Act, 1957 is
not a subject matter for registration for Industrial Designs, such as:
• Paintings, sculptures, drawings including a diagram, map, chart or plan.
Photographs and work of architecture.
• Any other work related to artistic craftsmanship.
• Industrial Designs does not include any Trademark (The Designs Act, 2000)
 PROTECTION TERM
•The outer Shape or Design of a product makes it more appealing and acts
as the value adding factor to the product.
• Therefore, there is a need to protect one’s creation from being used by
third parties without consent from the original creator. The registered
Designs are protected for 10 years in India and can be extended by 5 years
after making a renewal application
PROCEDURE FOR REGISTRATION OF INDUSTRIAL DESIGNS

Prior Art Search

Before filing an application for registration of Industrial Designs, it is

prudent(forecating) to ensure that the same or similar Design has
not been registered earlier.
This search can be carried out using various search engines, such as:
Design Search Utility (CGPDTM), Global Design Database (WIPO), etc.
 Application for Registration
• Once the applicant is satisfied that his Design is novel and significantly
distinguishable from other Designs, he can proceed with filing an application
for Design registration.
•The application for registration of Design can be filed by an individual, small
entity, institution, organization and industry. The application may be filed
through a professional patent agent or legal practitioner.
• If the applicant is not a resident of India, an agent residing in India has to be
employed for this purpose.
•The applicant submits the registration application at the Design Office
Deputy Controller of Patents & Designs, Patent Office, Intellectual Property
Office Building, CP-2 Sector V, Salt Lake City, Kolkata- 700091.
• After the application has been filed, an officer (examiner) analyses the
application for qualifying the minimum standards laid down for eligibility
criteria for registration.
• In case of any query, the same is sent to the applicant and he is supposed to
respond within 6 months from the objection raised.
• Once the objections are removed, the application is accepted for
registration
 IMPORTANCE OF DESIGN REGISTRATION

• Registration of Design ensures the exclusive rights of the applicant

on the Design.
• The owner can prevent the registered Design products from piracy
and imitation.
• This helps the owner to boost the sale of the products and
establish goodwill in the market.
CANCELLATION OF THE REGISTERED DESIGN
•The registration of a Design may be cancelled at any time. The
petition has to be filed in Form-8 with prescribed fee to the
Controller of Designs. The application can be made on the following
grounds:
• Design has already been registered
• Design has been published in India or elsewhere before the date of
registration.
•Design is not novel and original It is not a Design under Clause (d)
of Section 2.
 DESIGNS REGISTRATION TRENDS IN INDIA
• The below figure represents the statistics for Industrial Designs (filed,
examined and registered) for the period 2010-20.
•During this period, an increase of 88%, 117% and 33% was observed in the
parameters of Designs filed, examined and registered, respectively.
• In all three parameters, the graph depicts a similar pattern (more or less) with
the highest numbers observed in 2019-20 for Designs filed (12,268), examined
(13,644) and registered (14,272).
 FAMOUS CASE LAW: APPLE INC. VS. SAMSUNG ELECTRONICS CO.
• In 2011, Apple Inc. filed a case against Samsung Electronics Co. in the
United States District Court for the Northern District of California for
infringing their Designs and Utility Patents of the user interface like
screen app grid and tap to zoom.
• As evidence, Apple Inc. submitted the side-by-side image comparison of
the iPhone 3GS and the i9000 Galaxy S to demonstrate the
alleged(mentioned) similarities in both models.
• However, later it was found that the images were tempered(modified)
by the Apple Company to match the dimensions and features of the
controversial Designs.
• So the counsel for Samsung Electronics blamed Apple of submitting
false and misleading evidence to the court and the company
countersued(take legal action) the Apple Company in Seoul, South Korea;
Tokyo, Japan; and Mannheim, Germany, United States District Court for
the District of Delaware, and with the United States International Trade
Commission (ITC) in Washington D.C.
• The proceedings continued for the 7 years in various courts. In June
2018 both companies reached for a settlement and Samsung was
ordered to pay $539 million to Apple Inc. for infringing on its patents.
 GEOGRAPHICAL INDICATIONS

•A GI is defined as a sign which can be used on products belonging to a particular

geographical location/region and possesses qualities or a reputation associated with
that region.
•In GI, there is a strong link between the product and its original place of
production.

ACTS, LAWS AND RULES PERTAINING TO GI

In India, GI was introduced in 2003 and is governed under the Geographical

Indications of Goods (Registration & Protection) Act, 1999 and the Geographical
Indications of Goods (Registration & Protection) Rules, 2002.
OWNERSHIP OF GI

The ownership/holders of GI (registered) can be of the producers, as a

group/association/ cooperative society or association or in certain cases, government.

RIGHTS GRANTED TO THE HOLDERS

• Right to grant the license to others - The holder has the right to gift, sell,
transfer/grant a license, mortgage or enter into any other arrangement for
consideration regarding their product. A license or assignment must be given in
written and registered with the Registrar of GI, for it to be valid and legitimate.
•Right to sue - The holder of GI has the right to use and take legal action against a
person who uses the product without his consent.
•Right to exploit - The holder of GI can authorize users with exclusive right to use
goods for which the GI is registered.
REGISTERED GI IN INDIA

•GI products registered in India belong to the domains of handicrafts, agricultural, food
stuffs, alcoholic beverages, etc.
• The first GI tag was granted in 2004 to Darjeeling Tea and the latest being Kashmir
Saffron and Manipur Black rice (Chakhao) in May 2020.
• A total of 370 GI have been registered in India till May 2020.
•Nearly 58% of these belong to handicrafts, followed by agriculture (30%).
• Other categories belong to food stuff, manufacturing, and natural goods.
• In the Handicraft category, Tamilnadu holds the maximum number (21) of GI followed
by Uttar Pradesh (20) and Karnataka (19).
•A few stands out GI are mentioned in the below table
IDENTIFICATION OF REGISTERED GI
• Registered GI products are granted a tag, which is printed on the registered
products. The tag confirms the genuineness of the product in terms of its
production (by set standards) and location of production.
•Non-registered GI products cannot use/exploit this tag.
• By and large, GI tags represent the place of origin (of the product) along with
cultural and/or historical identity e.g. Darjeeling Tea, Mysore Silk, Tirupathi
Laddu, etc.
•In India GI tags are issued by the Geographical Indication Registry under the
Department for Promotion of Industry and Internal Trade, Ministry of Commerce
and Industry.
•The head of GI registry is at Geographical Indications Registry Intellectual
Property Office Building, Industrial Estate, G.S.T Road, Guindy, Chennai - 600032.
GI registered products can be grown / produced in any part of the world using
standards laid down by the GI Registry.
• However, these products cannot be labeled as GI as they are not produced/
manufactured in a specific geographical location, as mentioned in the official
records maintained by the GI Office of GI.
• For example, plants of Darjeeling Tea can be grown in any part of India. But the
tea leaves of these plants cannot be sold under the brand name of Darjeeling
Tea, as the concerned plants were not grown in the soil and climate of the
Darjeeling area
CLASSES OF GI

• GI certified goods are classified under 34 different classes, such as Class 1 is for
chemicals used in industry, science, photography, agriculture, horticulture and
forestry; unprocessed artificial resins, unprocessed plastics; manures; fire
extinguishing compositions; tempering and soldering preparations; chemical
substances for preserving foodstuffs; tanning substances; adhesives used in
industry.
•Class 33 is for alcoholic beverages (except beers) and Class 34 is related to
tobacco, smoker‘s articles and matches. More details can be extracted from the
official website of CGPDTM Office
GI ECOSYSTEM IN INDIA
• India is among the geographically and traditionally rich countries.
• The scope of generating GI products in India is enormous. These products can
contribute to the economic development of a particular region or society.
• However, till June 2021, a total of 370 GI have been registered in India, which is much
below its potential.
•The below Figure represents the statistics for GI (filed, and registered) for the period
2010-20. Maximum number (148) of GI was filed in 2011-12 whereas, minimum number
(17) was observed in 2015-16.
• Not much change in the number of GI registrations was observed during the period
2010- 20. Each year the number hovered around in the twenties, with maximum
registrations (34) seen in 2016-17.
PROCEDURE FOR GI REGISTRATION DOCUMENTS

• Prior to filing an application for registering GI, it is prudent to search whether the
concerned GI is already protected or not. This can be done by using search engines
created by WIPO.
• The list of registered GI in India can be accessed from the official website of
CGPDTM.
• Once the prior search for registered GI is done, the applicant has to file an
application.
• The application for GI can be forwarded by an individual or an organization or
authority of people established under Indian law.
• The application in a prescribed format is submitted to the Registrar, Geographical
Indications along with the prescribed fee.
• In the application, the applicant needs to mention the interest of the producers of
the concerned product.
• The application should be duly signed by the applicant or his agent with all the
details about the GI that how its standard will be maintained.
• The submission of three certified copies of the map of the region where the GI
belongs is mandatory. Once the application is filed at GI Registry, the Examiner will
scrutinize the application for any deficiencies or similarities.
•If the examiner finds any discrepancy, he will communicate the same to the applicant,
which is to be replied within one month of the communication of the discrepancy.
•Once the examiner is satisfied with the response/s, he files an examination report and
hands over the same to the Registrar. Once again, the application is scrutinized.
• If need be, the applicant is asked to clear any doubts/objections within two months of
the communication otherwise, the application will be rejected.
•After getting a green signal from the Registrar, the application is published in the official
Geographical Indication Journal for seeking any objections to the claims mentioned in
the application.
•The objections have to be filed within four months of the publication. If no opposition is
received, the GI gets registered by allotting the filing date as the registration date.
• Initially, GI is registered for ten years but is renewable on the payment of the fee
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