ANJAN SENANJAN SENPatent Attorney & IPR AdvocateANJAN SEN & ASSOCIATESPatent & Trade Mark Attorneys Tele: 033-2474 9871, 6529 3955,Fax: +91 – 33 – 2486 8693e-mail: anjanonline@vsnl.net info@ipindiaasa.comwebsite: www.ipindiaasa.com

LONG HISTORY OF DESIGN REGISTRATIONS IN INDIALONG HISTORY OF DESIGN REGISTRATIONS IN INDIAIT STARTED WITH THE DESIGNS ACT,1911:PRESENTLY THE DESIGNS ACT,2000 IS IN FORCE

KEY FEATURES WHICH MAKE THE PRESENT DESIGNS ACTAS PER INTERNATIONAL STANDARDS:(a) the broadened scope of “Article” which now specifically includes any part of an article capable of being made and sold separately;

(b)“Design” to include apart from shape, configuration, pattern or ornament even composition of lines or colours applied to any article;

(c) absolute (worldwide)novelty for registration of designs;

(d) introduction of the International system of Classification of goods;

(e) possible restoration of lapsed designs;

(f)possible inspection of registered designs immediately after registration;

(g) allowing broadened convention priority;

DESIGNS ACT 2000(Came In To Force On 11-05-2001)APPLIED TO

ANY ARTICLE OF MANUFACTURE IN TWO DIMENESION OR THREE DIMENSION OR IN BOTH FORM

BY ANY INDUSTRIAL PROCESS OR MEANS

IT CAN BE:MANUAL;MECHANICAL;CHEMICAL;SEPARATE OR COMBINED

DESIGN SHOULD BE APPLICABLE BY DESIGN SHOULD BE APPLICABLE BY INDUSTRIAL MEANSINDUSTRIAL MEANS

WHERE THE ESSENTIAL CONSTRUCTION OF THE DESIGN

COMPRISES OF NATURAL THINGS AS SUCH, FOR EXAMPLE,

AN ORNAMENT USING NATURAL ROCKS,

A STUFFING OF A BIRD OR ANIMAL,

AN ORNAMENT OR CONTAINER USING WOOD OR BAMBOO,

EACH INCORPORATES, FORMATIVE BEAUTY CREATED BY NATURE AS AN ESSENTIAL PORTION OF THE DESIGN.

SUCH A DESIGN CAN NOT BE PRODUCED ON A REPEATED BASIS BY INDUSTRIAL MEANS HENCE NOT A SUBJECT FIT FOR DESIGN REGSITRATION.

Classification of designs in classes :

An International classification of Industrial Designs according to the Locarno Agreement has been introduced in the Designs Rules, 2001. The classification of goods is based upon the function of the classification of goods is applied.

Classes and most of the classes are further divided into sub- classes.These classes and sub-classes are mainly function oriented.

Normally, the name of the article should be such that is common/familiar in the trade or Industries. The name of the article as mentioned in the application from should correspond with the representation of the article as filed.

CLASSIFICATION OF DESIGNS

CLASS-03= TRAVEL GOODS & PERSONAL BELONGINGS Sub Class 03-01: Trunks,Suitcases,Briefcases,

Sub Class 03-03: Sunshades ,Walking Sticks ..

Sub Class 03—04: Fans

CLASS 07 : HOUSEHOLD GOODS

Sub Class 07-01 : China ,glassware,dishes..

Sub Class 07-03 : Table Knives..

Sub Class 07-08: Fire Place Implements

CLASS 15 : MACHINES Sub Class 15-03 :AGRICULTURAL MACHINARY

-PLOUGH DESIGNS -REAPING MACHINES

WHICH APPEAL TO AND ARE JUDGED SOLEY BY THE EYE

ANY SUBSTANCE

Fertiliser Tablet

ARTICLE Flower Pot

Same Article Having Different Shape

WHAT IS A DESIGN FEATURE

SHAPES : form of the article in three dimensions

Variety of Novelty & Originality in a Design

Decorative Surface Pattern Can Add value to a Product

METHOD OF MANUFACTURE NOT PROTECTED BY DESIGN

FRUIT BASKET DESIGN

CLAIM: PATTERN OF THE BASKET CONSISTING OF THE OSIERS BEING WORKED IN SINGLY AND ALL THE BUTTENDS BEING OUTSIDE

IMPROPER CLAIM AS PER THE REPRESENTATION-DESIGN DISALLOWED

NOT NOTICEABLE BY THE EYE GRANULAR PARTICULATE SHAPE

OF SUBSTANCES EVEN IF NOVEL CANNOT BE REGISTERED

A SUGAR CUBESOF NOTICEABLE SHAPE AND CONFIGURATION

ALLOWED

WHAT IS A REGISTRABLE DESIGN

ANY DESIGN APPLED TO AN ARTICLE WHICH IS:

A) NEW OR ORIGINAL

B) HAS NOT BEEN DISCLOSED TO THE PUBLIC ANYWHEREIN ANY TANGIBLE FORM OR BY USE OR IN ANY OTHER WAY PRIOR TO THE DATE OF FILING/PRIORITY DATE;

C) IS SIGNIFICANTLY DISTINGUSIHABLE FROM KNOWN DESIGNS OR COMBINATIONS THEREOF;

D) DOESNOT CONSPRISE OR CONTAIN SCANDALOUS OR OBSCENE MATTER

REPRESENTATIONS OF DESIGN

DESIGN APPLIED TODESIGN APPLIED TOA STOOLA STOOL

WHAT IS ORIGINALITY IN DESIGNS AND HOWIT HELPS IN GENERATING NEW DESIGNS

SHAPE AND CONFIGURATION OF A CRICKET BAT AND A BALL IS WELL KNOWN

DESIGN WHICH IS NOT NEW AS SUCH BUT ORIGINAL AND NEW IN APPLICATION

ALSO REGISTRABLE

SHAPE OF CRICKET BAT & BALL WELL KNOWN

REGISTRABLE AS AN ORIGINAL DESIGN HAVING NOVEL APPLICATION

BUT AN ERASER IN THE SHAPE OF CRICKET BAT & BALL IF NOT PRIOR PUBLISHED

VARIANTS COMMONLY USED IN TRADE NOT A REGISTRABLE DESIGN

Common practice to have or not have spikes in soles Of running shoes.

You cannot claim a new design by simply adding available spikes to a known shoe which did not have spikes.

CASE STUDY: ORIGINALITY OF APPLICATION OF CASE STUDY: ORIGINALITY OF APPLICATION OF DESIGN ON ARTICLEDESIGN ON ARTICLE

Filed Design (Chocolate)

VS

Prior Design (Desktop electric calculator)

DESIGNER TOYSBASED ON CELEBRITIES

DESIGN OF SPICE GIRLS DESIGN OF

SPICE GIRLS

NOVELTY STATEMENT:

NOVELTY RESIDES IN THE SHAPE AND CONFIGURATION APPLIED TO THE ARTICLE TOYS.CONDITIONS FOR VALIDITY OF SUCH DESIGNS

IS IT MANDATORY TO MAKE THE ARTICLE BY INDUSTRIAL PROCESS OR MEANS BEFORE MAKING AN APPLICATION FOR REGSITRATION OF THE DESIGN

NOT MANDATORY TO PRODUCE THE ARTICLE WITH THE DESIGN BEFORE APPLYING FOR THE REGISTRATION

YOU CAN DESIGN THE DISPLAY PANEL

OF A DIGITAL WATCH

TO ATTRACT THE CUSTOMER

AND MAKE THE PRODUCT MORE

ATTRACTIVE TO THE CUSTOMER

Allow ability Of Computer Icons As An Industrial Design By The UK Patent Office

New Frontiers of Industrial Design

NEED FOR MARKING OF AN ARTICLE AS A REGISTERED DESIGN

PREFERABLY MARK THE ARTICLE AS:“REGD. DESIGN. NO…………”

IF NO MARKING ON THE ARTICLE THE REGD. PROPRIETOR WOULD NOT BE ENTITLED TO CLAIM DAMAGESFROM ANY INFRINGER

WHEN AND HOW YOU CAN REGISTER SET OF ARTICLES TOGETHER

A set of cuff links and a tie clipA set of cuff links and a tie clip

A set of smoking accessoriesA set of smoking accessories

A tea setA tea set

A coffee setA coffee set

A set of table knives, forks and spoonsA set of table knives, forks and spoons

A set of furniture for drawing roomA set of furniture for drawing room

A set of air conditionersA set of air conditioners

A set of golf clubsA set of golf clubs

A set of seat covers for automobileA set of seat covers for automobile

A set of audio equipmentA set of audio equipment

6 piece coaster set

HOW DESIGN LEADS TO MARKET CRAZE AND COMPETIIONFUNNY FACE BISCUIT DESIGN BY BRITTANIA INDUSTRIES

MILK BIKIS MILK CREAM OF BRITTANIAREGD. NO. 171091 OF 11-04-1996MARKETED FIRST IN OCT.,1996

FUNNY FACE ON FRONT

SUBSEQUENT FUNNY FACE BISCUIT DESIGN OF SARA LEE BAKERY

MILK WALA OF SARA LEE PARENT SARA LEE CORPORATION GLOBAL MANUFACTUREER

CAME IN INDIA IN 1997OBTAINED REGD. NO. 179167 IN 01-04-1999

FACIAL DESIGN

MILK BIKIS MILK CREAM OF BRITTANIA REGD. NO. 171091 OF 11-04-1996 MARKETED FIRST IN OCT.,1996

MILK WALA OF SARA LEE PARENT SARA LEE CORPORATION GLOBAL MANUFACTUREER CAME IN INDIA IN 1997 OBTAINED REGD. NO. 179167 IN 01-04-1999

PLAINTIFFS DEFENDANTS

DESIGN WITH PLANE /SMOOTH FINISH SAME DESIGN WITH

ROUGH FINISH

HOW OBVIOUS IMITATIONS CAN BESTOPPED BY REGISTRATION

OF INDUSTRIAL DESIGNS

FINDINGS OF THE COURT:

BROAD PATTERN OF THE TWO SOLES SIMILAR BOTH HAVE SIMILAR PATTERNS IN CUTS, RIDGES, GROOVES AND LINED PATTERNS.

BROAD FEATURES OF PATTERN, CONFIGURATION & DESIGN SIMILAR

COLOUR DIFFERNCE DEFENDANTS BLACK VIS-À- VIS BROWN OF PALINTIFFS NOT OF ANY SUBSTANCE

APPARENTLY THE DESIGN APPLIED BY THE DEFENDANT IS SIMILAR OR OBVIUOS IMITATION OF THE PLAINTIFFS DESIGN.

DEFENDANTS CANNOT BE SAID TO BE INNOCENT USER OF THE DESIGN DUE TO SUBSTANTIAL SIMILIARITY DEFENDANTS CANOT USE THE DESIGN

EVEN UNATTRACTIVE DESIGNS CAN BE PROTECTED

HOUSING FOR A LASER

YOU CAN HAVE MARKET EXCLUSIVITY

SIMILAR TO THAT OF A PATENT WITHOUT THE

NEED FOR QUALIFYING INVENTIVE STEP

BY WAY OF AN INDUSTRIAL DESIGN

APPLIED TO A PRODUCT

SHAPE AND CONFIGUARTION

OF A MOBILE PHONE BATTERY

IMPORTANT POINTS TO REMEMBERIMPORTANT POINTS TO REMEMBER

THERE IS INTELLECTUAL EFFORT IN CREATION THERE IS INTELLECTUAL EFFORT IN CREATION OF ATTRACTIVE AND MARKET ACCEPTABLE OF ATTRACTIVE AND MARKET ACCEPTABLE DESIGNSDESIGNS

PURCHASE OF PRODUCT IN MARKET IS INFLEUNCED PURCHASE OF PRODUCT IN MARKET IS INFLEUNCED NOT ONLY BY PRATICAL UTILITY AND EFFCIENCYNOT ONLY BY PRATICAL UTILITY AND EFFCIENCYBUT ALSO BY APPERANCEBUT ALSO BY APPERANCE

YOU SHOULD ENSURE THAT IN TODAYS YOU SHOULD ENSURE THAT IN TODAYS COMPETITIVE MARKET PLACE SUCH COMPETITIVE MARKET PLACE SUCH INTELLECTAUL EFFORT IS ENTITLED TO SOME INTELLECTAUL EFFORT IS ENTITLED TO SOME EXCLUSIVE PRIVILEDGES IN FAVOUR OF THE EXCLUSIVE PRIVILEDGES IN FAVOUR OF THE CREATOR /HIS ASSIGNEES CREATOR /HIS ASSIGNEES

IMPORTANT POINTS TO REMEMBERIMPORTANT POINTS TO REMEMBER

REDUCE IDEAS IN TANGIBLE FORM ON PAPERREDUCE IDEAS IN TANGIBLE FORM ON PAPER (NOT MANDATORY TO APPLY THE DESIGN IN THE (NOT MANDATORY TO APPLY THE DESIGN IN THE ARTICLE AND THEN FILE APPLICATIONARTICLE AND THEN FILE APPLICATION

GENERATE IDEAS OF NEW OR ORIGINAL ATTRACTIVE GENERATE IDEAS OF NEW OR ORIGINAL ATTRACTIVE DESIGNSDESIGNS

MAINTAIN RECORD OF AUTHORSHIP OF MAINTAIN RECORD OF AUTHORSHIP OF DESIGNS AND ITS DEVOLUTION OF RIGHTS SO DESIGNS AND ITS DEVOLUTION OF RIGHTS SO THAT IN CASE OF ANY LEGAL COMPLEXITY YOU THAT IN CASE OF ANY LEGAL COMPLEXITY YOU CAN ESTABLISH THE ORIGIN /PROOF OF RIGHT CAN ESTABLISH THE ORIGIN /PROOF OF RIGHT OF THE DESIGNOF THE DESIGN

KEEP A COPY OF THE DESIGN AS CREATED IN KEEP A COPY OF THE DESIGN AS CREATED IN YOUR FILEYOUR FILE

ENSURE YOU PAY RENEWAL FEES AS AND WHEN ENSURE YOU PAY RENEWAL FEES AS AND WHEN DUEDUE

IT IS A PROPERTY CAN BE SOLD,LICENSED AND IT IS A PROPERTY CAN BE SOLD,LICENSED AND MORTGAGED.MORTGAGED.

TAKE CARE THAT YOU RIGHTLY TAKE CARE THAT YOU RIGHTLY IDENTIFIED THE DESISN IN THE APPLICATIONIDENTIFIED THE DESISN IN THE APPLICATION

DONOT DISCLOSE OR PUBLISH THE DESIGNBEFORE YOU HAVE FILED YOUR APPLICATION FORREGISTRATION

CHECK THAT THE REGISTRATION COVERES CHECK THAT THE REGISTRATION COVERES THE NOVEL AND ORIGINAL CREATION THE NOVEL AND ORIGINAL CREATION EFFECTIVELY TO FAVOUR MAINTAINING EFFECTIVELY TO FAVOUR MAINTAINING MARKET EXCLUSIVITYMARKET EXCLUSIVITY

Thank You For Your Valuable Time & ListeningThank You For Your Valuable Time & Listening

For Any Queries Please feel free to mail :For Any Queries Please feel free to mail :ANJAN SENANJAN SEN

Patent Attorney & IPR Advocate,ANJAN SEN & ASSOCIATES Tele: 033-2474 9871, 6529 3955,Fax: +91 – 033 – 2486 8693E-mail: anjanonline@vsnl.net info@ipindiaasa.comwebsite: www.ipindiaasa.com