Industrial Design

Industrial design rights

Industrial design rights are intellectual property rights that protect the visual design of objects that are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three dimensional form containing aesthetic value. An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

CNES protected the Ariane-4 launcher design in 1985

An industrial design registration protects the ornamental or aesthetic aspect of an article. Designs may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color. Designs are applied to a wide variety of products of different industries like handicrafts, medical instruments, watches, jewelry, house wares, electrical appliances, vehicles and architectural structures. These designs are made to look things attractive and beautiful. They also have the commercial value. Due to these reasons, the industrial design is protected. An industrial design is primarily for aesthetic features. They do not protect any technical features of an article. Industrial design protection precludes any trademark or artistic work. One has to register this design against limitation and un-authorized copying Under the Hague Agreement Concerning the International Deposit of 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. Design rights started in the United Kingdom in 1787 with the Designing and Printing of Linen Act and have expanded from there.

In India India's Design Act, 2000 was enacted to consolidate and amend the law relating to protection of design and to comply with the articles 25 and 26 of TRIPS agreement. The new act, (earlier Patent and Design Act, 1911 was repealed by this act) now defines "design" to mean only the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any articlewhether in two or three dimensional, or in both forms, by any industrial process or means, whether manualal or mechanical or chemical, separate or combimed, which in the finished article appeal to and are judged solely bt the eye; but does not include any mode or principle of construction. The first design related legislation in India was passed by the British Government and was known as the Designs Act, 1911. The Designs Act, 2000, has since replaced this Act. The Designs Act, 2000 and the Designs Rules, 2001 presently govern the design law in India. Novelty, originality and visual appeal are essential if an industrial design is to be patented, although these criteria can differ from one country to another. Its aesthetic features should not be imposed by the technical functions of the product. Legally, “industrial design” is the title granted by an official authority, generally the Patent Office, to protect the aesthetic or ornamental aspect of an object. This protects solely the non-functional features of an industrial product and does not protect any technical features of the object to which it is applied. Industrial design rights are granted to the creator of designs to reward them for their effort and investment in manufacturing the product. These rights enable the owner to make articles to which the design is applied or in which the design is embodied. The holder of this legal title has the exclusive right to make, import or sell any objects to which the design is applied. They can authorize others to exploit the design and bring a legal action against anyone using the design without authorization. The protection is provided for five years and it can be renew for fifteen years. In general the period of protection granted is from 10 to 25 years. This is often divided into terms and an extension of the term requires renewal of the registration.

1.1 Why protect an industrial design? Consumers often take the visual appeal of a product into consideration when choosing between different products. This is especially true when the market offers a large variety

of products with the exact same function. As the aesthetic appeal of a product can determine the consumer’s choice an industrial design adds commercial value to a product. Protecting an industrial design is also a reward for creativity and encourages economic development. Above all, it ensures protection against unauthorized copying or imitation of the design and can be relatively simple and inexpensive to develop. An industrial design is not protected unless it has been published in an official bulletin. 1.2 Industrial design versus copyright Objects meeting the requirements for protection under industrial design law can also be protected under copyright law. If a design embodies elements or features which are protected by both, the industrial design laws and the copyright laws, then claims under both laws can be made. The creator can choose to be protected under only one of the laws but in this case they can not then invoke the other law when making a claim. Whereas an industrial design needs to be registered, in most countries copyright does not require registration. Copyright protection lasts longer than industrial design protection. However, the right conferred by registration of an industrial design is an absolute right in the sense that there is infringement even though the infringer acted independently or without knowledge of the registered design. In copyright law, the copyright should always be stated. 1.3 Registering an industrial design

1.3.1 What can be registered as a design and who can apply? Any person (including a partnership firm or a body corporate) claiming to be the proprietor of the design can apply for its registration so long as the design is: • • • • • • • •

New or original; Not previously published in any country; Reproducible by industrial means; Not contrary to public order or morality; Significantly distinguishable from known designs or combination of known designs; Not comprised of or containing scandalous or obscene matter; Appealing to the eye; and Not including anything that is in substance a mere mechanical device.

An application form must be filed to register an industrial design. This should include a clear and complete description of the design so that it provides third parties with new technical information and can be understood by a person with average knowledge of the design in question. Claims made in a foreign country should include an address in that country or that of a person holding power of attorney. Other formalities are often required such as the payment of a fee or authentication by a public notary. The application is then examined by the relevant body in the country concerned; the method used can differ from one country to another. If protection is granted, a certificate is issued stating that the owner’s exclusive rights exist from the date of registration. In cases where protection is refused the applicant should be given the right to make observations and then appeal.

1.3.2 In India India follows the system of "first-to-file." Therefore, it is imperative that a rights holder applies for the registration of its design at the earliest opportunity to ensure that no other person can claim prior rights to the design. Furthermore, an application for design in India has to be filed before publication of the design, in order to be eligible for registration. The Delhi High Court in Wimco Ltd., Bombay v. Meena Match Industries, Sivakasi & Other {1983 (3) PTC 373 (Del.)}, stated that, "publication within the meaning of the Act means the opposite of being kept secret. It is published if the design is no longer a secret. There is publication if the design has been disclosed to the public or the public has been put in possession of the design. Russel-Clarke in Copyright in Industrial Design, Fourth Ed. (pages 41-42) says: "…It is sufficient, and there will be 'publication' if the knowledge was either: (1) Available to members of the public; or (2) Actually in fact shown and disclosed to some individual member of the public who was under no obligation to keep it secret. It is not necessary that the design should have been actually used. There will just as much be publication if it is shown that it was known to the public, without ever having been actually put in use. Thus, publication may be of two types: (a) Publication in prior documents (b) Publication by prior user"" It is advisable that Applicants include the following strategies as a part of their comprehensive overall strategy for protection:

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Hire a local law firm specializing in IPR. See for example, http://www.legal500.com, which lists the various law firms, specializing in different areas of law in India. Apply for a clearance search at the Patents Office in order to ensure that rights holder's design is available for registration. Should the design be available for registration, applicants should immediately apply for registration. After the design has been registered, rights holders should ensure that the article on which the design is being used clearly mentions the word "Registered" (or any of its abbreviations) along with the Design Registration number. This is to inform the public that the design is registered and that the rights holder has the exclusive proprietary right to use the same. Should the rights holder not do this, in case of any infringement, the rights holder will have to prove that the infringer was aware that he was violating the rights holder's exclusive proprietary rights when he used the infringing design. Should a rights holder discover that its design is being infringed; the rights holder should take immediate steps to protect its design, either by the means of filing cancellations, conducting investigations, sending cease and desist notices or initiating other appropriate legal actions.

1.3.2.1 Registration Procedure The registration of a design in India is as follows: •

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Select an IPR law firm in India the designs law in India allows the proprietor to file a designs application only if they have a place of business in India. Should that not be the case, the rights holder will be required to file an application through an attorney/agent. The attorney/agent can do a designs search, prepare, file and prosecute an application. Conduct a design search in order to ascertain the availability of the design Should the design be available for registration, the rights holder - or its attorney/agent - can proceed with the filing of the application in India Preparing the documents and filing the application the application can be filed directly by the Applicant or its assignee or its attorney/agent in the prescribed form. The details that are required in the application form include the name, address and nationality of the rights holder; the class in which the design is to be filed; representation of the design; name of articles to which the design is to be applied; address for service in India and priority details in case the rights holder is claiming priority from a Paris Convention application. The application has to be signed by the Applicant or their

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attorney/agent. The format of the application to be filed is available at http://www.patentoffice.nic.in/ipr/design/designform.htm. The designs under the Indian law have been categorized in separate classes in order to provide for systematic registration. An International classification of Industrial Designs according to the Locarno Agreement is followed in India and this classification of goods is based upon the function of the goods. Presently there are 32 classes (Classes 1 to 31 and 99), which are further divided into sub-classes. The classification of goods as followed in India is available at http://www.patentoffice.nic.in/ipr/design/des_rule.PDF. The application can be filed at the Patents Offices in Kolkata, Mumbai, Delhi, and Chennai. Review by Designs Office After the application has been filed, the Patent Office reviews it to ensure that it is complete in all respects and thereafter allots an application number to the application. Examination of the Application During the process of examination, the Patent Office determines if the design is barred for registration. Accordingly, it may issue a statement of objections and the Applicant must respond to the objections that have been raised within a period of three months from the official communication of objection. Should the Applicant not respond to the objections within this time frame, the Applicant is deemed to have withdrawn its application. Thereafter, based on the response to the objections that have been filed by the Applicant, the Controller of Designs determines if the application should be refused, accepted or put up for a hearing. Should the application be rejected, the Applicant may appeal the order of the Controller of Designs at the High Court. Registration following acceptance of an application, the Controller of Designs may direct the registration of the design. The particulars of the application and the representation of the articles to which the design has been applied will be published in the Official Gazette. After the registration of the design, the particulars are entered in the Register of Designs. Typically it takes about 6 to 12 months for the design to be registered. Term of Designs Registration A design registration is valid for a period of 10 years from the date of registration. This is renewable for a period of 5 years.

The flow chart of the process for registration that is followed by the Designs Office is as follows:

After the design has been registered, any party aggrieved by the registration of the design may file an application for its cancellation. The application for cancellation has to be filed in the prescribed format and has to be accompanied by a statement setting out the nature of the Applicant's interest and the facts on the basis of which his application is based. The registered proprietor of the design can contest the cancellation application and after the Controller of Design has examined the evidence and heard both the parties, the matter will be decided and the decision conveyed to the parties. Any aggrieved person can also initiate a rectification proceeding before the Controller of Designs on the grounds of non-insertion in, or omission from, the register of designs of any entry, by any entry made in such register without sufficient cause, by an entry wrongly remaining on such register or by an error or defect in any entry in such register. After following the prescribed procedure, the Controller of Designs can make an order for making, expunging or varying such entry as he thinks fit.

1.3.3 Filing an industrial design application Identification of the owner of the industrial design Description of the product to which the industrial design protection applies Graphic or photographic representation of the industrial design 1.3.4 Examination of application by the administrative authority National and international screening Examination of basic and formal requirements by the Patent Office 1.4 About semiconductor products A semiconductor product is the final or intermediate form of an incorporated circuit in a chip. It has an electronic function. The topography is the design of the layout, that is, the three-dimensional location of elements and interconnections of an integrated circuit. Whereas the industrial design determines the external appearance of the device, the topography determines the exact location of each element with an electronic function within the integrated circuit. The rights granted by this legal title are similar to those for patents, trademarks, industrial designs, copyright and neighboring rights. The owner has an exclusive right of exploitation as well as the right to prevent third parties from reproducing, selling or importing parts or the entirety of the protected topography. This exclusive right of exploitation usually expires: • •

10 years after the first commercial exploitation anywhere in the world, or 10 years after the registration was filed with the competent authority, generally the Patent and Trademark Office

1.4.1 Why protect the topography of a semiconductor product? The topography of an integrated circuit is the result of a huge investment in terms of both finance and know-how. This is also a field in which there is constant need for improvement, such as reducing the dimensions of integrated circuits. For these reasons, government offices reward these creations of the mind by granting monopoly right of exploitation to the creator.

Topographies of semiconductor products also have considerable commercial value as they can be utilized in a wide range of products. A copy of the design could be done easily by photographing the layers of the integrated circuit. This is why legislation to protect layout designs has been introduced. 1.4.2 Grounds for the request According to the conditions defined by EEC Council Directive 87/54 of 16 December 1986 on the legal protection of topographies of semiconductor products, the semiconductor product must: • • •

be the creator’s own intellectual effort be unknown in the semiconductor industry meet the above-mentioned conditions if made of a combination of commonplace elements

1.5 Registering a topography of a semiconductor product Topography of a semiconductor product, like other industrial property rights, needs to be registered with the competent administrative authority. This entails completing an application form and including a description of the topography of the semiconductor product. The description should be clear and complete, provide new technical information for the use of third parties and be written in such a way that it can be understood by a person having ordinary skills in the art. If filing a claim in a foreign country then an address in that country should be supplied or that of the person holding power of attorney. Other formalities are often required such as the payment of a fee or authentication by a public notary. The application is then examined by the relevant body in the country concerned; the method used can differ from one country to another. If protection is granted a certificate is issued to the owner stating that their exclusive rights commence from the date of registration. In cases where protection is refused, the applicant should be given the right to make observations and then appeal.

1.5.1 Filing an application for rights to a topography of semiconductor product • • •

identification of the creator of the topography of semiconductor products specification graphic or photographic representation

1.5.2 Examination of application by the administrative authority

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national and international screening examination by the Patent Office

1.6 About trade secrets A trade secret is the legal term for confidential business information. It can include any information that is valuable to its owner and that the latter wants to keep secret. Trade secret may include customer lists, recipes and formulas, special processes, devices, methods, techniques, business plans, research and development information, etc. In general, protection is sought to safeguard a trade secret from exploitation by those who obtain access through improper means or who breach an obligation of confidentiality.

1.7 Protecting a trade secret There is no formal registration or application procedure for trade secrets. Public disclosure of a trade secret could destroy an organization’s ability to seek damages for misappropriation or theft. However, simply calling a piece of information a trade secret does not make it a trade secret. An organization must behave in a way that demonstrates its desire to keep the information secret. To meet the criteria for a trade secret the information should meet the three criteria determined by law, these are: •

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The information must not be in the public domain - some legislation states that the information must not be “generally known or readily ascertainable”. If someone can learn how to make a product by simply examining it then trade secret protection does not apply. The information must have an economic value that depends upon its secrecy, i.e. its economic value arises from the inaccessibility of the information to others who could obtain value from the information. Lastly, the trade secret holder must use “reasonable measures under the circumstances to protect” the secrecy of the information. Apart from preventing

public disclosure, those who have potential access to the secret information should acknowledge its secret nature. These essential principles for trade secret protection are recognized by NAFTA, GATT, WTO/TRIPS and the national laws protecting trade secrecy around the world. 1.7.1 Rights arising from trade secret protection The owner of a trade secret can prevent those who are obliged to keep the secret or who obtain the information via improper means from copying, using and benefiting from the trade secret or disclosing it to others without permission. Only people who discover the secret independently, that is, without using fraudulent means or violating agreements, cannot be stopped from using the information. For example, it is not a violation of trade secret law to analyze or ‘reverse engineer‘ any lawfully obtained product and determine its trade secret.

1.8 Trade secrets and other IPRs Contrary to other IPR titles which, in order to be opposed to third parties, need to be filed and granted by the competent administration, to protect a trade secret you cannot go through an application process. A trade secret requires you to actively keep the information secret. Theoretically trade secret protection could last forever if the secret is carefully maintained. For example, inventions and processes that do not meet patentability criteria can be protected under trade secret law. The advantage of a trade secret is that as long as the secret is properly maintained, the secret cannot be used by business competitors. One of the most famous examples is the Coca Cola formula that has now been kept secret for more than 100 years. Had Coca Cola patented the formula, it would have fallen into the public domain a long time ago and anyone would be allowed to reproduce the exact same product. When protecting information by means of trade secret, it is vital to restrict access to the information and to ensure that those with access sign a non-disclosure agreement, also known as a confidentiality agreement. This ensures that in the case of misappropriation resulting from industrial espionage for instance, or violation of a non-disclosure agreement, it is possible to bring an action before the courts.