Global Designs Registration

Prior to industrialisation, designs meant those products manufactured by craftsmen applying their expertise to the form, shape and aesthetic appeal with the outcome being an outstanding, unique, and one of its kind.  Hence, no two pieces were same or identical to look, feel, touch and/or in their visual appeal. This also led to secrecy in the form of the accumulated experience and expertise of these master craftsmen being passed on from generation to generation without disclosing the process of experimentation applied therein to outsiders. 

Family members had to undergo rigorous and vigorous apprenticeship to attain the skill level that was the pride of the family.  With the advent of industrial revolution along with modern technology and tools, replication of designs became easy and economical thus catering to a wider and larger audience.  In other words, mass production of exact same goods became the norm as it gained popular acceptance especially since the flaws that invariably crept into hand made goods were eliminated to a large extent.

This led to the legislation of Design Law so as to specifically segregate it from Trademark and Copyright laws as these three branches of intellectual property law tend to overlap.  The crystallisation of Industrial Designs with proper definitions and concepts thus led to specific rights being accorded to designers/companies involved in creating these industrial designs.

Following details provide an overview about the Indian Industrial Designs Regime:

1. Applicants Who May Apply For Industrial Designs Protection:

• Author of the Design
• Employer of the author if Design made during course of employment
• Person contracting the author to make the design
• Person to whom the author has assigned the design in writing.
• 2 or more persons owning interests in the design must apply jointly.

2. Requisites For Filing Industrial Designs Applications:

• Copy of the drawings; (six views such as front, rear, left side, right side, top plan and bottom plan views. And additional drawings such as perspective and cross-sectional views also may be submitted) - photographs in jpg format
• The full name and address of each creator;
• The full name and address of each applicant;
• The name of article to which the design is applied;
• The filing date, application number and country of the priority application; and
• The priority document
• Statement of Novelty in respect of the articles to which industrial design is applied to.  However, the same is not required while registering wallpaper, lace or textile articles.
• Full payment of fees.

Statement of Novelty: Novelty refers to originality, something new or unusual.  In this context, if the Controller General so deems necessary, may direct the applicant to endorse the application and the representations with a brief statement of novelty that he claims over the designs so submitted for registration.

Prior Disclosure destroys novelty of the Design so extreme care has to be taken to maintain secrecy of the Design.  However, in India, applicant can file the application within 12 months after disclosure which will still retain novelty.

3. Types of Industrial Design Applications:

• Ordinary application -does not claim priority.
• A convention application claims priority of an application filed previously in a convention country. (Deadline for claiming priority for a design application in India is 6 months from the filing date of the priority application)

4. Kinds of Industrial Designs Registrable:

• To come under the scope of registration, a Design should:
• Be new and / or  original
• Not have been disclosed to the public anywhere by publication in tangible form or by use in any other way prior to the filing date or where applicable, the priority date of the application for registration to which a 12 month exception is provided.
• Be significantly distinguishable from known designs or combination of known designs.
• Not contain scandalous or obscene matter, or be contrary to public order or morality.
• Not be a mere mechanical contrivance.
• Be applicable to an article, should appeal to the eye.
• Original here means, originating from the author of such a design and includes those cases which though old in themselves , are new in their application as well.

Aspects of Designs Registrable:

• 2 Dimensional, 3 Dimensional,  general appearance of a design.
• Contours, Colours, Shapes and Textures
• Material out of which the design is made
• Decoration of the design
• Packaging, Graphic Symbols, Typographic Typefaces

5. Kinds of Industrial Designs Not Registrable:

• A drawing or a model contrary to public order or morality.
• A drawing or a model that relates to a computer program.
• A drawing or a model whose characteristics are solely dictated by technical function of the product to which it relates.
• A product that needs to be combined with another product, so that each can perform its function.
• Designs which have been disclosed to the public anywhere in the world by publication in a tangible form or by use or in any other way prior to the filing date.  However, a 12 months exception is given to this rule.
• Designs which are not significantly distinguishable from known designs or combination of known designs or Comprises or contains scandalous or obscene matter.

Ducis Lawyers through it's associate Law Firms in India, is at hand to help clients with industrial design registration and prosecution.

6.Stepsto Industrial Design Registration:

• Finding out whether such a design has been registered previously.
• Preparing a representation of the design
• Identifying the class of design.
• Providing a statement of novelty.
• Including a disclaimer that the design has not been in the public domain at any point in time.
• Claiming a priority date if the design Is registered in other countries.
• Determining the fee to be paid.
• Ensuring all enclosures are attached.
• Complying with objections if any.
• Providing full details pertaining to contacts and addresses.

Ducis Lawyers along with specialised Industrial Design Lawyers and attorneys in India can assist clients comprehensively with registration and protection of new Industrial Design.

7. Examination Processof Industrial Designs:

• Upon receipt of the application, it is verified to ensure formalities and procedural compliances.  In the event any corrections are required, applicant is notified for correction and re-submission within a prescribed time, else, application is considered abandoned.
• If the examiner finds that all formal and substantive requirements are fulfilled, the design is registered.  Else, the examiner refuses registration of the design which can be appealed by the applicant.
• The design is then published in the Patent Office Bulletin and Certificate of Registration issued.  Post publication, 3rd parties may bring about an action for invalidation of the design.

8. Publication and Registrationof Industrial Designs:

• If the examiner finds that all formal and substantive requirements are fulfilled, the design is registered.  Else, the examiner refuses registration of the design which can be appealed by the applicant.
• The design is then published in the Patent Office Bulletin and Certificate of Registration issued.  Post publication, 3rd parties may bring about an action for invalidation of the design.

9. Term of Industrial Design Protection:

Protection to the Industrial Designs is provided for 10 yrs.

The following facts elaborate further on the International Industrial Designs Regime:

1. Industrial Designs Definitions:

The Dictionary meaning:- attributed to a design is to work out the structure or form of (something), as by making a sketch, outline, pattern, or plans. Industrial designs are not only inclusive of the above but go beyond by incorporating the following as well:

• Enhancing the visual appeal of an object and advancing its usability by way of improvements over existing designs.
• Extending the scope of protection to new and unique designs rendered by upcoming and latest technology.
• Encouraging better forms and shapes of objects which aid in improving working environments that ensure better productivity and output by humans.

Legally an Industrial design’s meaning is:-

• The outward appearance of a product or part of it.
• The lines, shapes, contours, shapes and patterns along with ornamentation that constitute the design.
• Industrial designs must be capable of being produced / manufactured industrially several times over.
• It is very important to note that, industrial designs are not related to the ‘functionality’ aspect of a product as that would fall under the scope of patent protection.

2.  Need to Protect Industrial Designs:

Patent law deals in ‘behind the scenes’ aspects of a company or organization as it deals with inventions that are not easily accessible by the general public.  Designs along with Trademarks on the other hand, are the ‘visual medium’ which aid in brand projection, recognition, association and retention by existing and potential customers.  To prevent rivals from copying industrial designs, it is therefore an important and strategic aspect in the protection of intellectual property rights. Therefore, as with all IP, it is better to begin protection of designs at the earliest before disclosure with the general public.

3.  Benefits of Industrial Design protection:

At the outset, to derive benefits out of Industrial Designs Protection, the designs have to be new and original which accord the following benefits:

• Designs registration gives exclusivity over the registered design which counters copying, selling counterfeit goods, parallel imports in the grey and black markets thereby preventing unlawful gains by unscrupulous persons.
• Designs registration gives statutory rights to sue the infringers by way of civil and criminal remedies and compensation in courts of law.

4.  International Designs Registration and Protection:

It is important to register designs in as many countries as possible  because:-

• Global protection of industrial designs by way of design filings in as many countries as possible will help in better valuation and commercialisation. 
• Protection to industrial designs globally is subjected national laws of the respective countries aided and facilitated by international industrial designs protection regime.

5.  International protection of Industrial Designs:

Internationally, Industrial Designs are protected through various international treaties and conventions such as:-

• The ARIPO treaty for  former English  colonies in the African Region
• OAPI treaty for former French colonies in the African Region
• European Union Community Designs Protection by OHIM
• The Hague System of International Design Registration