USING INDUSTRIAL DESIGNS TO ADD VALUE FOR MARKETING HANDICRAFTS: INDIAN CASE STUDIES Jyotsna Balakrishnan Anand & Anand, New Delhi April 2005

WHAT IS A DESIGN? Aesthetic aspects or outward appearance that is applied to a product 2 D like patterns, lines, composition, colour; or 3 D like shape; or combination of both 2D & 3D

Aesthetic aspects or outward appearance that is applied to a product

2 D like patterns, lines, composition, colour; or

3 D like shape; or combination of both 2D & 3D

WHY REGISTER YOUR DESIGN? – DESIGNS ACT, 2000 • 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 Gives you a Unique Selling Point (USP) Is an asset & can be licensed

• 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

Gives you a Unique Selling Point (USP)

Is an asset & can be licensed

Criteria for Design Registration Finished article appeals to and is judged solely by the eye New or original not prior published in any country and not publicly known in India is significantly distinguishable from known designs or combination of known designs Not a technical or useful function of a product

Finished article appeals to and is judged solely by the eye

New or original

not prior published in any country and not publicly known in India

is significantly distinguishable from known designs or combination of known designs

Not a technical or useful function of a product

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 More than one design may be registered as a set of articles of same character

Registration is in relation to goods

Locarno classification which is followed throughout the world

32 classes

Protection confined to class for which registered

More than one design may be registered as a set of articles of same character

EXAMPLES OF DESIGNS REGISTERED UNDER THE DESIGNS ACT

EXAMPLES OF REGISTERED DESIGNS

WHO OWNS A DESIGN? 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 CREATOR

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 CREATOR

ALTERNATIVE WAYS TO PROTECT A DESIGN Copyright eg., painting as an artistic work Trademark & trade dress eg., source identifier

Copyright eg., painting as an artistic work

Trademark & trade dress eg., source identifier

“ Artistic work” – Overlap of Rights? Copyright does not subsist in design registered under the Designs Act Design capable of being registered, but which has not been so registered - copyright shall cease as soon as any article to which the design has been applied has been produced more than fifty times by an industrial process

Copyright does not subsist in design registered under the Designs Act

Design capable of being registered, but which has not been so registered - copyright shall cease as soon as any article to which the design has been applied has been produced more than fifty times by an industrial process

Samsonite v. Vijay Sales Where design likely to be used for industrial production, copyright protection under the Copyright Act cannot be claimed

Where design likely

to be used for

industrial production,

copyright protection

under the Copyright

Act cannot be

claimed

DESIGN Vs. COPYRIGHT Is not goods specific Only in respect of goods registered for Life of author + 50 years Maximum 15 years No requirement for novelty Has to be NOVEL Subsists inherently Need to register to claim protection Only protects against copying Complete monopoly COPYRIGHT DESIGN

DESIGN AS A TRADEMARK SKB v. HLL The “S” shape Both design rights & trademark rights were claimed on it Design registration was cancelled during proceedings

SKB v. HLL

The “S” shape

Both design rights & trademark rights were claimed on it

Design registration was cancelled during proceedings

IT IS ADVISABLE TO….. Apply for registration when design is final & BEFORE IT IS PUT INTO THE MARKET Very important to keep the design CONFIDENTIAL before filing of the design application and if need to share it, enter into agreements

Apply for registration when design is final & BEFORE IT IS PUT INTO THE MARKET

Very important to keep the design CONFIDENTIAL before filing of the design application and if need to share it, enter into agreements

IT IS ADVISABLE TO….. Keep documentation at every stage of product creation – helps claim different rights Affix a legal notice of design registration on the product – requirement to be able to claim damages Licensing of your design

Keep documentation at every stage of product creation – helps claim different rights

Affix a legal notice of design registration on the product – requirement to be able to claim damages

Licensing of your design

CASE STUDY TANJORE JAMDANI SARI Combination of the Jamdani technique and the dye painting technique Arrangement of motifs completely unique and not known before

TANJORE JAMDANI SARI

Combination of the Jamdani technique and the dye painting technique

Arrangement of motifs completely unique and not known before