Intellectual Property Rights & Design Law

Urvi ShahAssistant Professor of LawUnitedworld School of Law

Knowledge Economies

21st Century is the often labeled as the century of Knowledge as the ability to create, access and use knowledge has become even more than before a fundamental determinant of global competitiveness of enterprises and Economies.

Knowledge Economy has brought about structural changes to the economies of developing countries making it indispensable for companies and policy makers to address new challenges.

Globalization and Intellectual Property Rights Globalization or (globalization) is the process

by which the people of the world are unified into a single society and function together

Competition not confined to national boundaries

Sources of competitiveness shifting to knowledge-based factors of production (high technology and specialist skills)

Intellectual Property Rights (IPR) are monopoly rights granted by the State to an inventor/author for the protection of certain intangible creations

Over 80% of the market value of Microsoft derives from its intangible assets, especially its intellectual property.

The value of the Coca-Cola trademark exceeds US$ 50 billion.

Increasing value of Intangible Assets

Kinds of Intellectual Property Copyright Patents Trademark Industrial design rights Utility models Geographical

indication Trade secrets Layout Designs of

Integrated Circuits Plant variety Protection

and Farmers Rights

IP Scenario in India

For an economy that is growing as fast as India’s and is touted globally as an emerging powerhouse, the IP scenario in the country remains at a nascent stage.

A look at other countries reveals intellectual protection in India are very low in comparison to many developing countries such as China, Korea, even a small country like Taiwan.

India still has a long way to go and hence IP regime must be such that it fulfils the needs of all the sectors.

Innovation is the key to survival for Indian Business

“If you always do what you’ve always done you’ll always get what you always got” (or worse)

Why Design has become important ? Apple’s Revolutionary Designs Designer: Jonathan Eve Apple has put the design of great customer experiences on the forefront. 1,273% rise in Apple shares over the past 10 years

Excellent Designs: Apple’s way to earn billions of dollars

UNIQUE & INNOVATIVE DESIGN CAN THUS BE THE USP AND THE LINCHPIN FOR YOUR BUSINESS

Why Design Law ?? What is the objective of Design Law?

Now a days ,the appearance of the product is one of the most crucial determining factors in consumer choice.

Progress in science and Technology It was felt that the legal system of protection

of Designs Requires to be made more efficient in order to ensure effective protection to Registered Designs.

Promote Design Activity in order to promote Design Element.

The same bottle could be protected by

Industrial design

Trademark

Patent

Various components of a product can be protected by different IP

““DESIGNS”DESIGNS”

Functional /utilitarian

Patents Act, 1970

Purely artistic works

Copyright Act, 1957

Designs with eye-appeal & capable of

Industrial application

Designs Act, 2000

The “Definition of design” under The “Definition of design” under Section 2(d) The Designs Act, Section 2(d) The Designs Act, 20002000 2D or 3D 2D or 3D featuresfeatures of shape, configuration,

pattern, ornament, composition of lines, colours

Applied to any article by any industrial process industrial process or meansor means

The finished article appeals to the eyeappeals to the eye

Does not include anything which is in substance Does not include anything which is in substance a mere mechanical devicea mere mechanical device

Not an artistic work or trademark

Designs can be 2d or 3d or combination of both

Surface pattern (2D)

Cut of the garment (3D)

Definition of the “article” under Section 2(a) of The Designs Act,2000 "article" means any article of

manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately

Designs excluded from protection Section 4 of The Designs Act,2000 Not NEW or ORIGINAL

If the design has been disclosed to the public in India or elsewhere (exception is provided for exhibitions)

Not significantly distinguishable from known designs or a combination of known designs

Comprises or contains scandalous or obscene matter

“NEW OR ORIGINAL”

“Original”: Means that it must originate from the creator

“New”: May involve a design which is known but is applied for the first time to that article

But over the years, the test has become NEW AND ORIGINAL

The degree of novelty required

“New or original” does not simply mean different

A trade variant of an old design does not make it novel

Substantial novelty required

“Trade variants”

Le May v. Welch: “It cannot be said that there is a new

design every time a coat or waistcoat is made with a different slope or different number of buttons…to hold that would be to paralyse industry.”

Thus, trifling variations/immaterial details would not be considered “NEW”

what is “novelty”??

Strikingly different appearance

Pattern made up of old features but resulting combination with strikingly different appearance can be novel

Requirement of “non-disclosure”

Prior to application, one should be careful not to launch the design into the market

The Design, prior to the filing of the application should be treated as confidential information

What if your design is also functional? The intent of the Designs Act is to

protect shapes & not functions

But, there may be a design which also has functional features

Test is to see if design is solely dictated by function. If yes, it will not be registrable

WHY REGISTER YOUR DESIGN under the Designs Act ? Statutory right – accrues only on registration - territorial

Right to prevent all other from producing, importing, selling or distributing products having an identical appearance or a fraudulent or obvious imitation

Monopoly Period of 10 years extendable by 5 [Section 11]

Gives you a Unique Selling Point (USP)

Is an asset & can be licensed

Case Law: Reckitt & Coleman (RCI) vs.Renkit Industries (RIL)

Plaintiffs Design

Accused Design

VARIOUS PRODUCTS IN MARKET

RCI filed a case in the Kolkata High Court in India against RIL on the grounds of infringement of their design registered ‘harpic’ bottle. The principal basis of the allegation was the inclined nozzle besides allegation of passing off.

Decision in the above case

The defendant RIL argued that the nozzle angle is solely dictated by function and hence is not a subject matter for a design registration. Moreover other competing products in the market also have same/similar angle of the inclined nozzle.

The Court refused injunction

Who can apply for a design registration? If design has been specially commissioned

for good consideration, the person for whom it is executed

An assignee or exclusive licensee

In any other case, the AUTHOR

Importance of getting clarity on ownership of the “DESIGN” In the context of joint design efforts, who

owns the design should be spelt out in the contract

Also, where a part of the design process is sourced out, it should be spelt out

While designing for someone else, be clear in the contract on who owns the design

Classification according to goods

Registration is in relation to goods

Locarno classification which is followed throughout the world

32 classes

Protection confined to class for which registered

Licensing of a Design

The design can be licensed to third parties to exploit markets or commercialise it on a scale much bigger scale than the resources of the author

Essential to specify in the license- the term, territory, amount of royalty & type of products for which design can be used by licensee

Piracy of registered design [Section 22] Anyone who applies or causes to be applied

to any article the design or any fraudulent or obvious imitation of it

To see whether the essential design features are substantially similar between the article and the design representation

It is the overall general impression of similarity which is taken into account

Don’t just wake up when your design gets copied, start thinking about it from Day 1 of product creation and development.

A unique design for which you see commercial value and which you intend to commericalise, get it registered as a design

Till the time you file a design application, treat it as confidential when you need to disclose it to wholesalers/exporters/in a portfolio

Have clarity on the ownership of the designs that you create by entering into contracts that spell out who owns the designs

Important Aspects

Maintain documentation and records at every stage of product development – helps you claim copyright even if your design is unregistered

When using designs, do your due diligence on the ownership of these designs – give credit, take licenses

Commercialize your design through license arrangements

Thank you