REGISTERING INDUSTRIAL DESIGNS UNDER IP LAW: A STRATEGIC APPROACH TO PROTECTING CREATIVE ASSETS

OVERVIEW

In today’s market, layout play a completely vital position with inside the visible look of a piece of writing or a product as those days’ humans get extra drawn to the layout or look of the product and have a tendency to shop for the fine layout which grabs their interest because the visible look of the product makes it extraappealing, attractive, and awesome from others. Therefore, proper designs are of tremendous commercial enterprise as an organization normally invests its money and time to innovate, create and expand with new or unique articles. So, it’s crucial to defend the designs of diverse merchandise with a purpose to keep away from infringement. Earlier this Act changed into ruled through the Design Act, 1911. In order to deliver the Design Act at par with the international regulation the enactment of the Design Act, 2000 took place. So, currently the layout legal guidelines are regulated through the Design Act of 2000. This article is all approximately a shape of Intellectual Property called ‘Industrial Designs’.

The definition of industrial design in India comes under Section 2(d) of the Designs Act, 2000.

Section 2(d) defines an "industrial design" as any composition of lines or colours or any three-dimensional form, whether or not associated with lines or colours, which gives a special appearance to a product of industrial or handicraft production and can serve as a pattern for a product of industrial or handicraft production.

LOCARNO AGREEMENT

The Locarno Agreement establishes a category for industrial designs (the Locarno Classification). The capable places of work of the Contracting States ought to indicate in legitimate documents reflecting the deposit or registration of business designs the numbers of the training and sub classes of the Classification to which the products incorporating the designs belong. This must additionally be carried out in any publication the offices issue in recognize of the deposit or registration of industrial designs.

PROCEDURE FOR REGISTRATION OF INDUSTRIAL DESIGNS

Registering Industrial Design

Design increases the aesthetic value of a product. Registering a design gives the owner the copyright to use the design for the object for which it was registered. This means in effect that the owner has the exclusive right to use the design for the subject under which it was registered. Any infringement of a registered design gives the owner the right to sue the infringer for damages.

Designs are in different classes under Locarno Convention. Used to classify products for industrial design registration purposes and further aids in design research. These classes are mainly function-oriented. Therefore, registering a design is crucial to protect the appearance of your product. An important point to remember is that an item must exist independently of the design. This means that the article can still exist even if the theme is not applied to the article. Therefore, stamps, labels and the like cannot be considered objects for design registration. A list of national or regional intellectual property offices can be found at this link.

CRITERIA FOR REGISTERING DESIGN

A design must comply with the Design Act, 2000 to be registered and protected under the Act. Designers must satisfy the following requirements:

I. A design must not have been used or published before the date of application of registration

II. A design must consist of shapes, patterns, configurations, compositions, and ornaments

III. It may only be appreciated with the eyes

IV. A design should not include artistic works, trademarks, or property marks

V. Significant differences must exist between your design and other designs that have already been registered

VI. Despite slight differences, similar designs or designs with a likeness to existing designs are not considered eligible for registration.

PERSONS ENTITLED FOR REGISTRATION

Under Section 5 of the Designs Act 2000, any person (company, partnership, small corporation and legal entity) or legal representative or assignee may apply separately or jointly for registration of a design. The register is prima facie evidence of all matters registered in it. Upon request to the person responsible for the prescribed fees, any person can consult the Design Register.

APPLICATION PROCEDURE

1. The application must be duly filed on the prescribed Form to be submitted (Form – 1) with the required fees and details such as full name, address, nationality, item name, service address, class number along with 4 copies of the design rendering of an item on durable paper measuring 210mm x 296.9mm with sufficient margin. Photographs, drawings, and computer graphics must clearly demonstrate the design features of the from multiple angles.

2. The applicant or their authorized representative must sign the application. For small businesses, Form 24 and supporting evidence must be submitted with Form 1.

a. In relation to a mark, mechanical movements, letters, numerals, statement of novelty (novelty) and disclaimer (if any) are included in a representation sheet duly signed and dated must.

b. If objections or deficiencies are found during the examination of the application, these will be communicated to the applicant or his authorized representative at the notification address. These deficiencies must be remedied within a period of 6 months from the date of the request and can be extended up to 3 additional months upon request if a mandatory fee request is made.

c. If the deficiencies are not corrected as directed by the Comptroller, the applicant will be granted a hearing. Thereafter, the leader of the hearing has the right to decide whether to accept or reject the application.

d. The decision of the controller will be communicated in writing to the applicant or his representative, stating the reasons. If this is the case, the applicant will be informed with the If the Controller's decision is not satisfactory then you may appeal to the High Court and that appeal must be made within 3 months of the date of the Controller's decision. Is this is the case, if the application was neglected by the applicant and the complaint or defect elimination procedure was not completed in time, the application will be withdrawn.

e. In addition, an application will be accepted, after all defects or complaints have been rectified. Then the application will be notified in the Official Gazette of the Patent Office.

BENEFITS OF REGISTERING THE DESIGN

The design is the property of the designer and may only be sold, transferred, or licensed by the designer. If a third party violates your work, you may file a lawsuit. In an infringement case, the work may be considered probable evidence of infringement.

BENEFITS FOR CUSTOMER ON REGISTERED DESIGNS

It’s very important to register your industrial designs because they have visual appeal and may be commercially exploited and marketed to any section of society. It may be sued for infringement; in which case the design may be licensed instead of money or royalty. Industrial usage and application are more common than copyright in the design industry.

I. WHAT IT PROTECTS

Section 2(d) of the Designs Act, 2000 protects original works created entirely by the artist, beauty values associated with the form, pattern, or design itself, and the shapes, configurations, patterns, ornaments, or compositions of figures and colours in 2D or 3D format.

II. WHAT IT DOESN'T PROTECT

Section 15 of the Designs Act, 2000 specifies that any design that has been published or publicly disclosed before the filing date of the application is not protectable. Additionally, the same design may exist in different classes and offensive and obscene works, literary or artistic works, tangible or applied-to merchandise, are excluded from protection. Minor alterations to a design may also not be protectable.

PIRACY OF REGISTERED DESIGNS

As per the designs Act, 2000, Section twenty-two deals with the piracy of registered designs. consistent with this section, any obvious or dishonorable imitation of a design that's already registered while not the consent of its owner is unlawful. It conjointly prohibits the import of any material that closely resembles a registered design. business such articles or exposing terms purchasable with information of the unauthorized application of the look to them also involves piracy of the design.

This section also provides that just in case if a civil suit is brought against a piracy of a design, then the compensation shall not exceed Rs. 50,000 for the infringement of 1 registered design. The compensation is statutorily fastened therefore it is a decent ground for an interim injunction even before the trial commencement.

PENALTIES

a. Penalties for Infringement of registered design

Section 22 of the Designs Act, 2000 provides for penalties in case of infringement of registered design. If a person infringes the proprietor's rights in a registered design, it is considered a criminal offense, and the infringer is liable for punishment as follows: Imprisonment for a term which may extend up to three years and also a fine up to ten lakh rupees, but not less than fifty thousand rupees, shall be imposed.

a. Penalties for False Representation of Registered Layout Design:

Section 54 of the Designs Act, 2000 deals with false representation of a registered layout design. If a person falsely represents a layout design as registered, it is considered an offense, and the offender is liable for punishment as follows: Imprisonment for a term which may extend up to six months and also a fine up to fifty thousand rupees or both shall be imposed.

LANDMARK JUDGEMENTS

1. Crocs Inc. USA v. Bata India Ltd. and Ors.

In this case, Crocs filed a healthy in opposition to Bata for infringement of its registered sandal designs and passing off its logos withinside the form and configuration of its footwear. As the layout registration turned into a prima facie legal responsibility to be canceled primarily based totally on prior e-book and new, the Division Bench of the Delhi High Court did not intrude with the unmarried judge’s order denying the meantime injunction to Crocs. Before submitting the date of the layout application, the designs have been issued at the Crocs website.

The court held that primarily based totally at the preceding e-book the validity of layout registration turned into questionable. It similarly brought that the designs claimed turned into best adjustments of pre-present designs, the courtroom docket stated that the newness or originality of the designs turned into additionally questionable. In this case, The Delhi High Court additionally sustained the provide of legal charges to the defendants. Furthermore, the Court ordered the unmarried judge to pay attention the passing of instances together with registered layout instances as they have been primarily based totally at the equal reason of action.

2. Ritika Private limited V. Biba Apparels Private Limited

Facts:

In this case, Plaintiff is a well-known boutique clothing clothier emblem in India. The defendant is likewise a well-known clothier and producer in India.

Plaintiff has filed the fit for looking for an injunction in opposition to the defendant from reproducing, printing, publishing, promoting or offering, etc. of prints or clothes which might be a duplication of the Plaintiff’s work.

Arguments:

Defendant argued that under the Design Act, 2000 the designs of the plaintiff have now no longer been registered. Defendant in addition delivered that via way of means of an industrial process, the plaintiff’s designs were reproduced greater than fifty instances. Hence, there wouldn’t be any infringement of copyright. Therefore, Plaintiff claimed to be the primary proprietor of the designs synthetic and additionally claimed the change secrets and techniques violation via way of means of ex-employees.

According to Section 15 (2) of the Copyright Act, 1957 as there has been no registration and the layout has been reproduced greater than fifty (50) instances via way of means of a business process, the plaintiff’s designs end to exist.

The court held that there has been no copyright infringement at a part of the defendant because the designs of the plaintiff have been now no longer registered under the Design Act, 2000. Therefore, this judgment proves that registration of Designs is essential in order to defend your layout from duplication of work. Hence, the proprietor of a layout loses all of the blessings and rights regarding the designs of an article.

CONCLUSION

In India, industrial designs are protected by Design Act 2000. Designs are usually one of the marketing techniques used by successful entrepreneurs to seek recognition and for the popularity of the brand. The design of the product has a huge impact on customers which makes the people identify the brand name associated with it. Industrial design has to fulfill mainly two requisites – originality and novelty, which enables the applicant to exclusively use the registered industrial design. By protecting his/her industrial design, the creator is granted an exclusive right against the unauthorized copying or imitation of his/her designs by third parties for a period of time. There are various benefits in relation to Industrial designs hence it gives protection to small and medium scale businesses. Thus, for effective implementation and to secure the object of the act it is very important that adequate awareness should be spread to all people to register their design for enhancing their brand name and protection from piracy.