THE SHAPE OF THE PRODUCT – INDUSTRIAL DESIGNS . INDIA
The advantage of getting a design registered is multi-fold and cannot be overlooked in
today’s era when the designs are the verge of being infringed per diem. Of the four
pillars of Intellectual property protection . patents, industrial designs, trademarks and copyrights . perhaps the most overlooked is that for industrial (ornamental) designs. In most countries, the available design protection is generally very narrow, with a minimal halo of protection around the exact design depicted in the application. Why would an applicant consider paying for such narrow protection as opposed to relying solely on trademark and/or patent protection to achieve the desired exclusivity for their product?
Protecting the ornamental design of one.s product and/or packaging provides the legal basis to help stop counterfeit product from destroying the legitimate brand.s market and defaulting on the legitimate brand.s visual promise of efficacy and safety. Realizing that most design laws provide a relatively narrow scope of protection beyond what is depicted in the drawings forming the basis of the design application, it is recommended that protection for embodiments similar in appearance, but outside the halo of equivalents, be filed.
The goal of these filings is to give the applicant the broadest scope of protection, covering similar designs that may prove confusing to the customer and making it more difficult for a potential infringer to capitalize on a legitimate product.s visual appearance. Helping to insure that the promise made by a product.s trade dress will not be harmed (or destroyed) by an illegitimate third party.s copycat product is critical to help maintain the “purity” of the reputation of the brand.
DEFINITION OF “DESIGN” UNDER THE DESIGNS ACT, 2000
A design is the ornamental or aesthetic aspect of an article. The object of the Act is to protect aesthetic shape and not function or functional shape. In order to get statutory protection under the Designs Act, 2000 the design has to satisfy the definitional requirements of Section 2 (d).
As per the definition, design “does not include any mode or principle of construction or anything which is in substance a mere mechanical device.” In Escorts Construction Equipment Ltd Vs Action Construction Equipment Pvt Ltd, 1999 PTC 36(Del), the Delhi High Court had occasion to interpret this part of the definition (as contained in the Designs Act, 1911). This case was concerning the alleged illegal copying of a design by the respondent of Pick-N-Carry Hydraulic Self Mobile Cranes manufactured by the plaintiff.
Though the case was not directly coming under the Designs Act, the Court examined whether the said design was capable of registration under the Designs Act. After examining the definition of design under the Act, the Court held that the design in question was incapable of registration. According to the Court the definition made it amply clear that the primary object of the Act was to protect shape and not function, or functional shape. “The expression .design. does not include a method or principle of construction or features or shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform. “Rejecting the contention of the plaintiff who claimed protection of certain specific parts of the crane, the Court held: “The aforesaid parts of the crane are made in a particular shape so as to interrelate with others mechanically. These parts of the crane are not made to appeal to the eye but solely to make the crane work or function. Most of the key components or parts, unseen in the crane for which they were required, had only to pass the test of being able to perform their function. They would be judged by performance and not by appearance. Consequently, the aforesaid key components or parts are incapable of being registered as designs”.
There are two types of design:
1. A two dimensional creation: patterns, lines or colours added to products to give them a special appearance, without their application producing a technical effect.
2. A three-dimensional creation (shape): this gives the product a special appearance, without its application producing a technical effect.
The term “design” is defined in Section 2 (d) of the Designs Act, 2000. This definition reads as follows:
“design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely be the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).”
Designs are applied to a great variety of products from different industry and trade sectors, from complex instruments with a special or exclusive use (such as machines, vehicles, tools, engines, computers, architectural structures, etc.) to simple or everyday articles (such as clothes, footwear, jewellery, electrical appliances, toys and furniture).
National legislation on industrial designs protect these products as regards their aesthetic features, excluding from all protection any technical features or the functional characteristics of the products to which they are applied.
WHAT VALUE DOES A DESIGN HAVE FOR A COMPANY?
. The design as a marketing feature. The reason for including a design in a specific product is to attract the consumer’s attention to the product that is to be commercialised. The design is an ideal feature for increasing the attractiveness of the product to which it is applied.
. The design is a business asset: like any other industrial or intellectual property right, an
industrial design forms part of the fixed assets of a company. The greater commercial success the design achieves, the greater its economic value for the company will be.
. The industrial design is an exclusive right: (registered designs offer greater protection and more advantages than unregistered designs); as with all industrial property rights, a design may be assigned, licensed, mortgaged or transferred mortis causa. Without doubt, a design which has acquired a certain level of popularity in the market can mean a profitable business for the holder.
. The design as an element that increases the competitiveness of a company: Products can be differentiated for the technical features that make them more or less useful to the consumer. But when the practical use of a commonly used product cannot be substantially distinguished from that of another product fulfilling the same function (which is most commonly the case), the consumer will base his/her decision on the design of the product. That is to say, he/she will decide to purchase the most attractive, most original, most appealing product, all in all, the one with a better design.
WHY IS IT ADVISABLE TO LEGALLY PROTECT A DESIGN?
When a new or original design is created and, above all, once it is applied to a product and commercialised, if it obtains a certain level of commercial success, it is very important to protect it legally. This is because if a third party (normally a competitor) manufactures, uses or sells products with the same design or a very similar one that can be confused with the original, it will be highly detrimental for the creator of the design.
The creator of the design has not only made a financial investment in order to develop the design, but has also obtained a competitive advantage in the market. If the design is not legally protected and, therefore, any third party may use and reproduce it freely, the initial financial investment and the real or potential competitive advantage in the market are or might be lost.
Ultimately, the importance of legally protecting a design lies in the fact that the design increases the commercial value of the product to which it is applied.
In accordance with the designs legislation, once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it may please be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000.
The registration of a design provides a solid basis for the holder to legally defend his/her rights and interests. All this helps the holder to recover investments made during the different stages of the creation and exploitation process of the design.
The holder of a registered design has an exclusive right initially for a period of ten years from the date of registration. This initial period of registration may be extended by further period of 5 years on an application accompanied by a fee is made to the Controller before the expiry of the said initial period of Copyright. This registration allows the exclusive exploitation of the design, as well as lawfully preventing third parties from manufacturing, using, selling, copying or imitating the design without prior consent. The exclusive right over a design is NOT (normally) obtained simply through use.
A design that has not been protected will not benefit from the specific legal protection provided by industrial design legislation. That is to say, if no application is made for an industrial design, followed by the relevant registration procedure and subsequent publication of the registration, the design will only benefit from other forms of legal protection, different from the protection conferred by design law. Therefore, it may be protectable under unfair competition law or, as the case may be, under copyright law, as long as it fulfils the relevant legislative requirements.
As a general rule, the holder of registered design rights may oppose the making, commercialization, importation, exportation, exhibition, use or stocking for any industrial or commercial purposes of any product which has the same appearance as the protected design.
The example of the Vase, Bottle and Textile pattern given below are few simple examples of design registration of articles in India by various enterprises for competitive marketing because of their distinctive and novel design features. It may be noted that design registrations are possible with any object be it a spoon, biscuits, tools, bottles, jewellery, fork, drinking cups, watches, handicrafts, textiles, furniture, cycle handles, motorcar bodies, electrical switches, airplane bodies, etc.
Not all designs can be registered.
For example a design which:
1. is not new or original, or
2. has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration.
3. is not significantly distinguishable from known designs or combination of known designs.
4. comprises or contains scandalous or obscene matter.
do not qualify for design registration.
Before applying for a design registration one must conduct a prior art search. It is also
imperative that the design registration is done prior to its use or putting it in the public domain.
HOW CAN WE LEGALLY PROTECT A DESIGN?
For the design to enjoy legal protection as an industrial design, the creator must apply to the Design Office for the registration of the design. A design may be protected if it is new, i.e., provided the form of the product is not already known before protection is applied for.
Apart from being new, according to most national laws on industrial designs, the design must be original or have an individual character.
WAYS OF PROTECTION
A design may be protected in different ways. On the one hand, it may be protectable under an Industrial Property right and, on the other hand, it may be protectable under Intellectual Property or Copyright law.
Likewise, in some cases the design is protectable under Unfair Competition Law. In this case, the scope of protection, design copyright and other features of legal protection are normally very different from those applied under Industrial or Intellectual Property law.
Within the scope of Industrial Property Laws, a design may be protected as:
1. An industrial design:
To have access to this sort of protection the design must be new or original or have an individual character, or be applied to a product having a useful function.
2. A trade mark: The Trademarks Act, 1999 was notified in 2003 and the definition of .trademark. under Section 2(1) (zb) was broadened to include “shape of goods”, there was no amendment to the meaning of a .design. in the Designs Act 2000 to eliminate the definition of trademark under the new-fangled Trademarks Act.
This escorts to an uncharacteristic standpoint wherein it may be probable for the proprietor of a registered design to look for trademark protection even after the expiry of the 15-year protection period existing under the Designs Act. Nevertheless, this altercation would be tried-and-true in paragon of the verity that the “shape of goods” has now been integrated in the definition of .trademarks. under the Trademarks Act and the rationale of the legislature has never been to extend monopolies in design, therefore the obvious exclusion of trademark under Section 2(d) of the Designs Act.
The shape, design or packaging of a specific product may be the distinguishing factor between this and other companies’ products. In this case, the design may be registered as a trade mark. In order to be protected as a trade mark, the design must be distinctive and not consist of an exclusively functional shape or one which is necessary for the functioning of the product to which it is applied.
3. Unfair Competition: In India, the Industrial Design is also protected by Unfair Competition laws. Thanks to these provisions, the design is protected against any acts of unfair competition, especially acts of confusion, imitation, taking advantage of someone else’s reputation, etc. As a means of defence against possible unfair or unjustified conduct by a third party, the design holder has the right to take legal action, including: – Action for cessation
– Action for restitution
– Action for damages
– Action for unfair enrichment
Likewise, the design holder may legally apply for the necessary injunctions to be imposed in order to interrupt or prevent the continuation of any damage to and infringement of his/her rights and to guarantee the real and effective enforcement of the future decision.
Till recently, Indian Courts recognized Unfair Competition tort (passing off) only in trade marks. However, in 2012, Bombay High Court observed that passing off action may lie against a design violation, provided that the consumer.s associate the unique design with the source and that the infringer has copied the design with mala fide to deceive the consumers. [Videocon Industries Limited Vs. Whirlpool of India Limited, 2012 (6) BOM CR 178].
The aforesaid position of law is further clarified by the Larger Bench of Delhi High Court in the case of Micolube India Limited Vs. Rakesh Kumar & Ors. [Delhi High Court in Civil Suit being CS(OS) No. 384 of 2008 on 15-5-2013],which upheld that passing-off remedy is available in respect of a design, which is used as a trade mark upon lapse of the term of registration. Therefore the tort of unfair competition is also recognized in design actions.
Further, taking a cue from the recent Micolube Judgement (supra), it may be suggested that upon lapse of design registration, the owner can also claim quasi-property rights in the design and may initiate a passing-off action against the infringer on the basis of quasi-property claim.
THE GEOGRAPHIC SCOPE OF DESIGN PROTECTION:
Design rights are granted on a country-by-country basis. An Indian registration provides protection only in India and its territories. If the proprietor of a design wishes to protect a design in other countries, the owner must seek protection in each country separately under the relevant laws.
The Paris Convention also provides certain privileges to member countries for design protection. A party who files design application in a member state of the Paris Convention, such as India, can within six months of that filing date file applications in other member countries claiming the priority of the first application. If such a design is accepted for registration it will be deemed to have registered from the same date on which the application is made in the home country.
The geographic scope of design protection may be national, international or for the whole of the European Community, depending on the jurisdiction where protection is applied for. Thus, from the geographic point of view, a design may have different levels of protection:
a. National: An Indian registration provides protection only in India and its territories. The exclusive right obtained can only be asserted within national territory.
b. Registered Community design: Protection granted by the OHIM in compliance with Regulation EC 6/2002, and Regulation EC 2245/2002. The legal protection granted by the Community design covers the whole territory of the European Union.
c. International filing through Hague Agreement: Generally, industrial design protection is limited to the country in which protection is granted. Under the Hague Agreement Concerning the International Deposit of Industrial Designs, a WIPO-administered treaty, a procedure for an international registration is offered. An applicant can file a single international deposit either with WIPO or the national office of a country which is party to the treaty. The design will then be protected in as many member countries of the treaty as the applicant wishes. Hague Agreement is the only international system for filing design applications. Since India is not a signatory of this agreement, Indian companies/individuals do have access to this system.
ENFORCEMENT OF DESIGN REGISTRATION:
A registered design gives the proprietor exclusive right to manufacture, sell, assign and license the design in the country in which the design is registered. Remedies against infringement are by way of civil action with interim remedies such as temporary / interim injunction, maintaining of separate accounts by the defendant, etc till the matter gets into trial with final remedies given are by way of injunction and damages. In addition a passing off action is a common law remedy against misrepresentation amounting to damage /injury to the owner of design as to the source of the design. Defenses in an infringement suit normally include denial of infringement, counter claim that the plaintiff.s design lacks novelty, the design is not valid, that there was prior publication of the design before the priority date of the design registration application, that there was prior use of the design in the country or in any other part of the world, that there is lack of substantive subject matter. The advantages of registering a design therefore lies in taking mileage over competing products, preventing others from using design, keeping options open for granting of license to others, avoiding interim injunction arising out of a suit filed owner of prior registered same/similar design. SELF-HELP CONSIDERATIONS: There are various things you can do to make it harder in general for infringers to copy your product. For example, you could:
. Think about the design of your product, and how easy it would be for somebody to reproduce it without seeing your original designs;
. When you hire staff, have effective IP-related clauses in employment contracts. Also make sure you educate your employees on IP rights and protection;
. Have sound physical protection and destruction methods for documents, drawings, tooling, samples, machinery etc.;
. Make sure there are no .leakages. of packaging that might be used by counterfeiters to pass off fake product;
. Check production over-runs to make sure that genuine product is not being sold under a different name.
CONCLUSION: The commercial importance necessitates that intellectual property be adequately protected. The protection of the resultant Intellectual Property thus assumes significance in order to ensure that the investments are recouped in a profitable manner. The protection prevents third parties using the protected IP in an unauthorized manner and in case of any unauthorized use provides legal remedies to prevent the same and claim damages. The given right to the creator/ inventor is an incentive for them to produce ideas that will benefit the society as a whole. The scope and extent of protection of Intellectual Property Rights are being increasingly harmonized around the world for providing business opportunities to protect and enforce their rights globally.