Do you know that the designs of the Coca-Cola bottles are protected and cannot be imitated by another rival company? Why do you ask? Because the design of the bottle has been associated with the Company. They have the designs of all their bottles, whether the glass ones or the plastic ones, the bigger bottles or the small ones, they have all of them registered under their name.
What purpose does it serve? Well, you see, like Patents and Trade Marks, Industrial Design (more or fewer Designs) is another aspect of Intellectual Property that needs to be protected as it has a commercial value and is created by someone from an idea. Businesses do it all time to protect the design of their products from being copied by other opponents in the market and gain an unfair advantage.
But if asked what a ‘Design’ actually is and why should it be protected, what would you say?
The word ‘Design’ may be defined as the “way in which something is planned and made or arranged”, but under the ambit of Intellectual Property Rights, it has a specific definition. Generally, there are some specific criteria that have to be satisfied in order for a design to be considered as a ‘Design’ under the Intellectual Property Laws. These criteria are as follows:
- It must contain features if shape, configuration, pattern, ornament, or composition of lines and colors;
- Which can be applied to any article;
- In two dimensional, or three dimensional, or in both forms;
- And have to be created by any industrial process or means whether manual or mechanical, separate or combined.
- And the finished article appeals to and are judged solely by the eye.
Having said that, a Design does not include something which is
- Any mode or principle of construction
- Anything which in substance is a mere mechanical device
- Any Trade Mark
- Any article of work as defined in Copyright Laws.
The definition under the US Code for Design is the simplest among all the laws in the world. Under the US Code Title 17, Chapter 13, Sec. 1301(a)(1), the definition states, “The designer or other owners of an original design of a useful article which makes the article attractive or distinctive to in appearance to the purchasing or using the public may secure the protection provided by this chapter upon complying with and subject to this chapter”
In today’s era where everything is appealing and involves creativity and aesthetics, the visual appeal of any products has become substantial. While making the product stand out from the crowd, the proprietor will also be able to restrain others imitating, or copying his original work on the article (his ‘Design’), and commercialize them in the market without his consent and giving consideration for the same. The protection of Industrial design also promotes creativity and the industrial and manufacturing sectors which can help in expanding commercial activities.
But a ‘Design’ is an Artistic work under Copyright also, right?
No, a mere design on a paper without being applied to an article will not be a Design but can fall under copyright laws. In India, it falls under Sec 2(d) of the Copyright Act, 1957 which defines an ‘Article’ as, “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”.
The Copyright Act in India excludes certain items from Sec 2(d) for the purpose of making it more clear on what an Article actually will be. This definition limits the meaning of ‘Article’ to anything which is not:
- Any substance or principle of construction which in substance is a merely mechanical device.
- Any Trade Mark
- Any Property
- Any Article work as defined under Sec 2(c) of the Copyright Act, 1957.
Who can file the Application?
Basically, under the Laws, a person who is the proprietor of the Design is eligible to file an application. The word Person in the Laws contains a set of legal entities recognized by the Law. These are:
- Corporate Body
- Legal Entity
Can I get a Design Registration for a Set?
The design of a ‘Set’ is registrable. In India for example, the word ‘Set’ is defined under Rule 2(e) of Design Rules 2001. It defines ‘Set’ as “a number of articles of the same general character ordinarily sold together or intended to be used together; all bearing the same design, with or without modification, not sufficient to alter the character or substantially to affect the identity thereof”. So basically, if you have to define a set, you can take a crockery set as an example.
So what cannot be protected under Industrial Design?
There are many criteria under which an article cannot be protected under the Industrial Designs, but because different countries have different criteria, there are some general ones which are listed below:
- Any design which is opposing the moral values of the public.
- Any design which describes any process of construction of an article.
- Designs of Books, Jackets, Calendars, Certificates, Forms, and Other Documents, Dress-Making Patterns, Greeting Cards, Postcards, Stamps, Medals.
- Designs including flags, emblems, or signs of any country.
- Designs of integrated circuits.
So how can I get my Design registered?
Well, there are two types of registration in all types of Intellectual Property Registration, the first one is National which means that the registration will be applicable only within the country in which the proprietor of the company wants to get the registration. The second one is the International registration, where the registration protection will be applicable to most or all parts of the world.
- National Registration – Let us take India for example. In India, the Registration for a Design can be applied for before the design Registry in New Delhi, or before any of the Patent Offices, subject to the geographical Jurisdiction. The process for registration in India is as follows:
- The application will be filed first.
- The Office concerned will determine if the Design is not eligible for registration
- If it is, the Office will issue a statement of objections (called Examination Report), and the application is obligated to respond to the report within a period of three months from the date of receipt of the report.
- If the response by the Applicant is not received within the time period specified, the application will be abandoned.
- If the response has been received, the Controller of designs determines whether an application should be refused, accepted or to be put up for a hearing based on the response of the Applicant.
- If the application is accepted by Controller of Designs, it will be then processed for registration.
- The particulars of the application, along with the article, will be published in the Official Gazette after the registration.
- In India, the registration of an Industrial Design will be applicable for a period of 10 years which can be renewed for an extent for up to 5 years.
- If you have to appeal against the decision of the Controller of Design, you will have to move to the High Court.
- International Registration – There are two different ways of getting international design protection. The first is national design application in each individual country of interest, and the second is to file an ‘international’ design application via the Hague Systems for the International Registration of Industrial Designs. The main difference between the two methods is that the Hague Systems allows you to file a single design application for design protection in any of the territories which are a party to the Hague Agreement. Otherwise, separate design applications are needed for each country for which design protection is needed. In either case, you need to file in all of your countries of interest within 6 months of first filing your design, and this can potentially be done more easily via a single ‘International’ application. Having said that, not all countries are a party to the Hague Agreement, so in some cases, you may only be able to obtain design protection via a direct national filing. The process of International registration via the Hague Systems is more or less similar to a general process of registration of the design in a country, except it covers various countries at once. For your help below is a picture of how an application is processed. In fact, I will link a WIPO presentation for you if you feel you need to have a clearer view of what’s happening around here. Good Day!