Industrial design

Compiled by A Srinivasa Rao

INDUSTRIAL DESIGN
Protected under the Designs Act, 2000
Protects
external
shape,
configuration,
surface
pattern
or
ornamentation
of
an industrially reproduced article
New and novel
Judged solely by the eye
Non functional

NEW AND NOVEL

Novel: Means that it must originate from the
creator
New: Not identical to a previous design
Pattern made up of old features but resulting
combination with strikingly different appearance
can be novel
Distinguishable from known designs or
combination of known designs
But over the years, the test has become NEW
AND NOVEL

Surface
Pattern

Shape

Clip
Design
Surface
Pattern

WHY REGISTER YOUR DESIGN?

Statutory right accrues only on registration territorial

Right to prevent others from producing, importing, selling or

distributing products having an identical appearance or a
fraudulent or obvious imitation

Monopoly Period of 10 years- extendable by 5

Gives you a Unique Selling Point (USP)

Is an asset & can be licensed

DESIGNS CAN BE 2D OR 3D OR A COMBINATION

Surface pattern
(2D pattern, composition of
lines, colours)
Cut of the garment (3D
features of shape,
configuration)

DESIGN & FUNCTIONALITY

The intent of the Designs Act is
to protect shapes & not functions
Designs with functional features
If design is solely dictated by
function, it will not be registrable

THE DEGREE OF NOVELTY REQUIRED

New or original does not simply mean
different. Infact it should be new and
original.
A trade variant of an old design does not
make it novel
Substantial novelty required

Le May v. Welch: It cannot be said that

there is a new design every time a coat or
waistcoat is made with a different slope or
different number of buttonsto hold that
would be to paralyse industry.

LIMITATIONS OF PROTECTION OFFERED

BY DESIGNS LAW
A design needs to be registered for any kind of
rights to be claimed over it it may not be feasible
to register every design that is created by
designers
A design right cannot be claimed over a design
that has been published/disclosed to the public

A design right will only be granted on the

fulfilment of various criteria like novelty, eye
appeal and non-functionality

ENFORCEMENT
Identical design or any fraudulent and
obvious imitation;
Import for sale
Publishing or exposing the article which is
known to be pirated
Injunction and damages

SECTION 15(2), COPYRIGHT ACT, 1957

Copyright does not subsist in design registered
under the Designs Act
Design capable of being registered, but which has
not been so registered enjoys copyright protection
Copyright shall cease as soon as any article to which
the design has been applied more than FIFTY
TIMES by an industrial process

THE COPYRIGHT/DESIGN OVERLAP

Fashion design lies at the cusp between creativity and
industrial manufacture
Great design has the quality of transforming wearable
apparel into wearable art
Thus, the distinction made by law between purely
artistic works and works that have been commercialised
can be problematic in many cases
There will be works that are both protectible under
copyright law as well as under designs law
Indian law has tried to resolve this by the provision of
Section 15(2), Copyright Act, 1957

Copyright & Designs Law

Designs that are not commercialised (i.e., not produced
more than 50 times), enjoy full copyright protection
even if not registered as a design
It may be argued that a design that has been
commericalised, may be capable of protection under
Copyright Act on the basis of the underlying artistic
works (i.e., the sketches, engravings, prototypes, etc.)
though Section 15 (2) remains a bar

Copyright & Designs Law

Important to maintain documentation and
records at every stage of product design and
development as this may help in claiming
protection for a design under the Copyright
Act
If you think of getting into mass production of
a unique design, file a design application as
that would provide you stronger protection &
complete monopoly

DESIGN Vs. COPYRIGHT

DESIGN

COPYRIGHT

Need to register to
claim protection

Subsists inherently

Has to be NEW

No requirement for
novelty

Maximum 15 years

Life of author + 60 years

Only in respect of
goods registered for

Is not goods specific

THE DESIGN DEVELOPMENT PROCESS

Hi-fashion furniture/metal ware:
2 D drawings
prototype

Prototype 3 D model
Final 2 D drawing

Silver

Apparels:
Sketch
Dress-making pattern
Prototype/sample garments
Finished garment

Successful copyright infringement claims

Ritu Kumars cases
Ritika

Limited
Ashwani Kumar

v.

Ritika Limited v. Nina

Talukdar

Original

Original

Copy

Copy

Ritika Limited v. Sajid

Mobin

YSL v. Ralph Lauren

YSL was awarded
damages for Ralph
Laurens infringement
of the design rights in
YSLs design of its
tuxedo dress

Example of infringement of registered

design
Birkin v. Pratt
Lace pattern was
held to have been
infringed

INDIAN LANDMARK DECISIONS

Microfibres Case [2006(32) PTC 157]
Upholstery designs
Intention
Not Artistic work
Design registration
More than 50 copies
No injunction

 Tarun Tahiliani Case [Case No. 183 of

2007]
Haute Couture;
Diffusion;
Pret-a-porter
Accessories
Not mass production
Distinguished Microfibres
Injunction granted

Wal-Mart v. Samara
Extension of Trade dress protection to the Fashion

What to do when licensing a design

A registered design can be licensed to exploit
markets or commercialise it on a scale beyond
the resources of the author
Essential to specify in the license- the term,
territory, amount of royalty & type of products
for which design can be used by licensee

Thank you