Microsoft power point law of trademarks and designs for ili ipr diploma-designs [compatibility mode]Presentation Transcript
The Designs Laws Sanjeev Kumar Chaswal IPR Attorney and advocate LLM (IPR and ARB)MS Cyber Law and Cyber security Advocate & IP Attorney High Court of Delhi
Article under the Designs Act, 2000ß Under the Designs Act, 2000 the "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.ß Set of article under Designs Act 2000ß If a group of articles meets the following requirements then that group of articles may be regarded as a set of articles under the Designs Act, 2000: Ordinarily on sale or intended to be used together.ß All having common design even though articles are different (same class).ß Same general character. Generally, an article having the same design and sold in different sizes is not considered as a set of articles. Practical example: "Tea set", "Pen set", "Knife set" etc.
Industrial Design Rightsß Industrial design is the use of a combination of applied art and applied science to improve the aesthetics, ergonomics and usability of a product, but it may also be used to improve the products marketability and 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.ß An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color either can be two- dimensional (based on pattern, colors and lines) or in three dimensional form (as per shape and surface) containing aesthetic value which is applied or used to produce a product, industrial commodity or handicrafts.
History of Industrial Design Rightsß The first use of the term "industrial design" is often attributed to the designer Joseph Claude Sinel in 1919 (although he himself denied this in interviews), but the discipline predates 1919 by at least a decade. Christopher Dresser is considered the worlds first Industrial Designer.ß Industrial designs origins lie in the industrialization of consumer products. For instance the Deutscher Werkbund, founded in 1907 and a precursor to the Bauhaus, was a state-sponsored effort to integrate traditional crafts and industrial mass- production techniques, to put Germany on a competitive footing with England and the United States.
ß The earliest use of the term may have been in The Art Union, A monthly Journal of the Fine Arts, 1839.ß “Dyce’s report to the Board of Trade on foreign schools of Design for Manufactures. Mr Dyces official visit to France, Prussia and Bavaria for the purpose of examining the state of schools of design in those countries will be fresh in the recollection of our readers. His report on this subject was ordered to be printed some few months since, on the motion of Mr Hume.”ß “The school of St Peter, at Lyons was founded about 1750 for the instruction of draftsmen employed in preparing patterns for the silk manufacture. It has been much more successful than the Paris school and having been disorganized by the revolution, was restored by Napoleon and differently constituted, being then erected into an Academy of Fine Art: to which the study of design for silk manufacture was merely attached as a subordinate branch.
ß It appears that all the students who entered the school commence as if they were intended for artists in the higher sense of the word and are not expected to decide as to whether they will devote themselves to the Fine Arts or to Industrial Design, until they have completed their exercises in drawing and painting of the figure from the antique and from the living model.ß It is for this reason, and from the fact that artists for industrial purposes are both well paid and highly considered (as being well instructed men) that so many individuals in France engage themselves in both pursuits.”ß The practical draughtsmans book of industrial design: was printed in 1853
Essential requirements under the Designs Act, 2000ß The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to new Subject matter.ß The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article.ß The designs of industrial plans, layouts and installations are not registerable under the Act.ß The design should be applied or applicable to any article by any industrial process. Designs of artistic nature like painting, sculptures, which are not produced in bulk by any industrial process are excluded from registration under the Act.ß
ß This implies that the design must appear and should be visible on the finished article, for which it is meant; Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state.ß Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device, would not be registerable design.ß For instance, a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act.
ß The features of the design in the finished article should, appeal to and are judged, solely by the eye.ß However, when any design suggests any mode or: principle of construction or mechanical or other action of a mechanism.ß A suitable disclaimer in respect thereof is required to be inserted on its representation, provided there are other registerable features in the design.ß The design should not include any Trade Mark or property mark or artistic works as defined under the Copyright Act, 1957.
Industrial Design Rightsß Can industrial designs be protected?ß In most countries, an industrial design must be registered in order to be protected under industrial design law. As a general rule, to be registerable, the design must be "new" or "original".ß 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.ß 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.
ß 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.ß 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.ß 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.
ß An industrial design right is conferred after considering factors like, novelty, originality and visual appeal.ß The person who has an industrial design right has the exclusive right to make or sell any objects in which the design is applicable.ß Under the Hague Agreement Concerning Industrial Designs, a WIPO-administered treaty, a procedure for an international registration exists. An applicant can file for a single international deposit with WIPO or with the national office in a country party to the treaty. The design will then be protected in as many member countries of the treaty as desired
What is the grace period?ß 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).ß 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 an application for registration in the country concerned before the expiry of the grace period.
What cannot be protected by industrial design rights?ß Designs that are generally barred from registration in many territories include:ß designs that do not meet the requirements of novelty, originality and/or individual character;ß designs that are considered to be dictated exclusively by the technical function of a product;ß 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);ß designs incorporating protected official symbols or emblems (such as the national flag);ß designs which are considered to be contrary to public order or morality.
Rights conferred by industrial design protection?ß When an industrial design is registered, the holder receives the right to prevent unauthorized copying or imitation by third parties.ß 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.ß Because industrial design rights are territorial in nature, this right is limited to the territory for which the design is registered.
How to enforce your rights on infringementß In 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.ß 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 and may seek assistance from a IPR lawyer, who would provide advice on enforcement of industrial design rights and to settle any dispute.
Penalty for the piracy of a registered Designß If anyone contravenes the copyright in a design for the every contravention he/she is liable to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design.ß The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for injunction against repetition of the same.ß Total sum recoverable shall not exceed Rs. 50,000/- as contract debt as stated in Section 22(2)(a). The suit for infringement, recovery of damage should not be filed in any court below the court of District Judge.
Cancellation of Registration of a Designß The registration of a design may be cancelled at any time after the registration of the design, on a petition for cancellation in form 8, with a fee of Rs. 1,500/- to the Controller of Designs, on the following grounds:ß That the design has been previously registered in India orß That it has been published in India or elsewhere prior to the date of registration orß The design is not new or original orß Design is not registrable orß It is not a design under Clause (d) of Section 2.
ßA Fender Stratocaster with sunburst finish, one of the most widely recognized electric guitars in the world. Model 1300 Volkswagen Beetle
Industrial Design Rightsß The right is conferred for a period of 5 year initially and further 5 years on renewal.ß The creation of a new design that can be used to give shape to a three-dimensional mass-produced article may possibly be registered under the Designs Act.
Registration process of Design
DESIGN AS A TRADEMARKßSKB v. HLLßThe “S” shapeßBoth design rights & trademark rights were claimed on itßDesign registration was cancelled during proceedings