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new act, (earlier Patent and Design Act, 1911 was repealed by this act) now defines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:
 • 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:

• 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
 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

 • 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:

• 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.