1. The Designs
Laws
Sanjeev Kumar Chaswal
IPR Attorney and advocate
LLM (IPR and ARB)
MS Cyber Law and Cyber security
Advocate & IP Attorney
High Court of Delhi

2. Article' under the Designs Act, 2000
ß Under the Designs Act, 2000 the "article" means any
article of manufacture and any substance, artificial, or
partly artificial and partly natural and includes any part
of an article capable of being made and sold
separately.
ß Set of article' under Designs Act 2000
ß If a group of articles meets the following requirements
then that group of articles may be regarded as a set of
articles under the Designs Act, 2000: Ordinarily on sale
or intended to be used together.
ß All having common design even though articles are
different (same class).
ß Same general character. Generally, an article having
the same design and sold in different sizes is not
considered as a set of articles. Practical example: "Tea
set", "Pen set", "Knife set" etc.

3. Industrial Design Rights
ß Industrial design is the use of a combination of applied
art and applied science to improve
the aesthetics, ergonomics and usability of a product,
but it may also be used to improve the product's
marketability and production. The role of an industrial
designer is to create and execute design solutions for
problems of form, usability, physical ergonomics,
marketing, brand development, and sales.
ß An industrial design consists of the creation of a shape,
configuration or composition of pattern or color, or
combination of pattern and color either can be two-
dimensional (based on pattern, colors and lines) or in
three dimensional form (as per shape and surface)
containing aesthetic value which is applied or used to
produce a product, industrial commodity or
handicrafts.

4. History of Industrial Design
Rights
ß The first use of the term "industrial design" is often
attributed to the designer Joseph Claude Sinel in
1919 (although he himself denied this in
interviews), but the discipline predates 1919 by at
least a decade. Christopher Dresser is considered
the world's first Industrial Designer.
ß Industrial design's origins lie in the industrialization
of consumer products. For instance the Deutscher
Werkbund, founded in 1907 and a precursor to
the Bauhaus, was a state-sponsored effort to
integrate traditional crafts and industrial mass-
production techniques, to put Germany on a
competitive footing with England and the United
States.

5. ß The earliest use of the term may have been in The
Art Union, A monthly Journal of the Fine Arts, 1839.
ß “Dyce’s report to the Board of Trade on foreign
schools of Design for Manufactures. Mr Dyces official
visit to France, Prussia and Bavaria for the purpose
of examining the state of schools of design in those
countries will be fresh in the recollection of our
readers. His report on this subject was ordered to be
printed some few months since, on the motion of Mr
Hume.”
ß “The school of St Peter, at Lyons was founded about
1750 for the instruction of draftsmen employed in
preparing patterns for the silk manufacture. It has
been much more successful than the Paris school and
having been disorganized by the revolution, was
restored by Napoleon and differently constituted,
being then erected into an Academy of Fine Art: to
which the study of design for silk manufacture was
merely attached as a subordinate branch.

6. ß It appears that all the students who entered the
school commence as if they were intended for
artists in the higher sense of the word and are not
expected to decide as to whether they will devote
themselves to the Fine Arts or to Industrial Design,
until they have completed their exercises in
drawing and painting of the figure from the antique
and from the living model.
ß It is for this reason, and from the fact that artists
for industrial purposes are both well paid and highly
considered (as being well instructed men) that so
many individuals in France engage themselves
in both pursuits.”
ß The practical draughtsman's book of industrial
design: was printed in 1853

7. Essential requirements under the Designs
Act, 2000
ß The design should be new or original, not previously
published or used in any country before the date of
application for registration. The novelty may reside in
the application of a known shape or pattern to new
Subject matter.
ß The design should relate to features of shape,
configuration, pattern or ornamentation applied or
applicable to an article.
ß The designs of industrial plans, layouts and
installations are not registerable under the Act.
ß The design should be applied or applicable to any
article by any industrial process. Designs of artistic
nature like painting, sculptures, which are not
produced in bulk by any industrial process are
excluded from registration under the Act.
ß

8. ß This implies that the design must appear and should
be visible on the finished article, for which it is meant;
Thus, any design in the inside arrangement of a box,
money purse or almirah may not be considered for
showing such articles in the open state, as those
articles are generally put in the market in the closed
state.
ß Any mode or principle of construction or operation or
any thing which is in substance a mere mechanical
device, would not be registerable design.
ß For instance, a key having its novelty only in the
shape of its corrugation or bend at the portion
intended to engage with levers inside the lock
associated with, cannot be registered as a design
under the Act.

9. ß The features of the design in the finished article
should, appeal to and are judged, solely by the eye.
ß However, when any design suggests any mode or:
principle of construction or mechanical or other
action of a mechanism.
ß A suitable disclaimer in respect thereof is required
to be inserted on its representation, provided there
are other registerable features in the design.
ß The design should not include any Trade Mark or
property mark or artistic works as defined under the
Copyright Act, 1957.

10. Industrial Design Rights
ß Can industrial designs be protected?
ß In most countries, an industrial design must be
registered in order to be protected under industrial
design law. As a general rule, to be registerable, the
design must be "new" or "original".
ß Different countries have varying definitions of such
terms, as well as variations in the registration process
itself. Generally, "new" means that no identical or
very similar design is known to have existed before.
ß Once a design is registered, the term of protection is
generally five years, with the possibility of further
periods of renewal up to, in most cases, 15 years.

11. ß Depending on the particular national law and the kind
of design, an industrial design may also be protected
as a work of art under copyright law.
ß In some countries, industrial design and copyright
protection can exist concurrently. In other countries,
they are mutually exclusive: once the owner chooses
one kind of protection, he can no longer invoke the
other.
ß Under certain circumstances an industrial design may
also be protectable under unfair competition law,
although the conditions of protection and the rights
and remedies ensured can be significantly different.

12. ß An industrial design right is conferred after
considering factors like, novelty, originality and
visual appeal.
ß The person who has an industrial design right has
the exclusive right to make or sell any objects in
which the design is applicable.
ß Under the Hague Agreement Concerning 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

13. What is the grace period?
ß The existence of a grace period and the corresponding
requirements can be provided by national or regional
laws applicable in some countries. If so, the law can
allow the filing of an application for registration of an
industrial design after its disclosure, within a limited
time period from the date of disclosure (generally six
months or a year).
ß During the grace period, the product which constitutes
the industrial design or in relation to which the
industrial design is used could in particular be
commercialized without destroying the novelty of the
industrial design and it could still be possible to file an
application for registration in the country concerned
before the expiry of the grace period.

14. What cannot be protected by
industrial design rights?
ß Designs that are generally barred from registration
in many territories include:
ß designs that do not meet the requirements of
novelty, originality and/or individual character;
ß designs that are considered to be dictated
exclusively by the technical function of a product;
ß such technical or functional design features may be
protected, depending on the facts of each case, by
other IP rights (e.g. patents, utility models or trade
secrets);
ß designs incorporating protected official symbols or
emblems (such as the national flag);
ß designs which are considered to be contrary to
public order or morality.

15. Rights conferred by industrial design
protection?
ß When an industrial design is registered, the holder
receives the right to prevent unauthorized copying
or imitation by third parties.
ß This includes the right to prevent all unauthorized
parties from making, selling or importing any
product in which the design is incorporated or to
which it is applied.
ß Because industrial design rights are territorial in
nature, this right is limited to the territory for which
the design is registered.

16. How to enforce your rights on
infringement
ß In case of infringement, the holder of industrial
design rights could, firstly, decide to send a “cease or
desist letter” to the alleged infringer, informing him
of a possible conflict between his industrial design
rights and the alleged infringing product and asking
him to cease said infringement.
ß If the infringement persists, the holder of the
industrial design rights could decide to take all
appropriate legal measures against the infringer, as
provided for by the applicable law and may seek
assistance from a IPR lawyer, who would provide
advice on enforcement of industrial design rights and
to settle any dispute.

17. Penalty for the piracy of a registered
Design
ß If anyone contravenes the copyright in a design for
the every contravention he/she is liable to pay a sum
not exceeding Rs. 25,000/- to the registered
proprietor subject to a maximum of Rs. 50,000/-
recoverable as contract debt in respect of any one
design.
ß The registered proprietor may bring a suit for the
recovery of the damages for any such contravention
and for injunction against repetition of the same.
ß Total sum recoverable shall not exceed Rs. 50,000/-
as contract debt as stated in Section 22(2)(a). The
suit for infringement, recovery of damage should not
be filed in any court below the court of District Judge.

18. Cancellation of Registration of a
Design
ß The registration of a design may be cancelled at any
time after the registration of the design, on a
petition for cancellation in form 8, with a fee of Rs.
1,500/- to the Controller of Designs, on the following
grounds:
ß That the design has been previously registered in
India or
ß That it has been published in India or elsewhere
prior to the date of registration or
ß The design is not new or original or
ß Design is not registrable or
ß It is not a design under Clause (d) of Section 2.

19. Designs

20. ßA Fender Stratocaster with sunburst finish,
one of the most widely recognized electric
guitars in the world.
Model 1300 Volkswagen Beetle

21. Industrial Design Rights
ß The right is conferred for a period of 5 year initially
and further 5 years on renewal.
ß The creation of a new design that can be used to
give shape to a three-dimensional mass-produced
article may possibly be registered under the Designs
Act.

22. Registration process of Design

23. DESIGN AS A TRADEMARK
ßSKB v. HLL
ßThe “S” shape
ßBoth design rights & trademark rights
were claimed on it
ßDesign registration was cancelled during
proceedings

24. THANK YOU FOR YOUR
ATTENTION !
ANY QUESTIONS?