DESIGN PROTECTION IN INDIA
Following the article on US Design Patents in our October 2011 newsletter, this month we discuss the protection of industrial designs in India. Designs are protected under the Designs Act 2000, along with the associated Design Rules 2001 and (Amendment) Rules 2008. Information on filing design applications in India can be obtained from the Manual of Designs Practice and Procedure of the Patent Office.
In India, a design is defined as “the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.” A design is registered by filing one or more views of the design along with a statement of novelty claimed.
Differences with Respect to US Filing
Unlike in the United States, designs are subject to “registration” in India, i.e. a certificate of registration issued. However, apart from the difference in terminology, India, as signatory to the intellectual property treaty obligations under WIPO, has a strong legal framework for protecting industrial designs. Other differences include a 15 year term of validity (Sec 11 of the Designs Act) (10 year initial grant + 5-year renewal), while in the US system design patents are valid for 14 years. The term “copyright” is used in the Indian statute to mean the exclusive right to apply a design to any article in the class in which the design is registered.
Trends in Design Applications Filing
Trends in design application filings in India between 2004-2010 are shown in Fig. 1 and 2 based on data released in the Annual Reports of the Office of CGPDTM 2009-10.
As seen in Fig. 1, there is a general upward trend in applications filed and registered, except for a marginal decrease in 2009-10.
Fig. 2: Design filing trends by origin of filing as domestic/foreign
The number of design applications filed and registered by Indian applicants (Fig. 2) leads the foreign origin applications by 40-60%, which is contrary to the trend in utility patent applications, where over 80% of the filings in 2009-2010 (p.18) were filed by foreign nationals. These numbers show that design filings have perhaps been underutilized compared to utility patents, particularly in comparison with China where design filings exceed utility filings (WIPO, table A.4). With the growing interest in the Indian market, there is ample scope for growth of design filings in India. As of 2010 some of the leading Indian design patent assignees were Crompton Greaves Ltd, MA Design India Pvt Ltd., Junaga Jewellery Pvt. Ltd., Tata Automobiles Ltd., Philips Electronics India Ltd., Anchor Electricals Pvt. Ltd., Tata Motors Ltd., Bajaj Auto Ltd., Eicher Goodearth Pvt. Ltd., Godrej & Boyce Mfg.Co. Ltd., Gold Medal Electricals Pvt. Ltd., Larsen & Toubro Ltd.
LITIGATION INVOLVING DESIGNS
In India, design litigation decisions are available through the official Govt. of India Website as well as through http://indiankanoon.org/. A compilation of Controller’s and court decisions is also given in Appendix 1 of the Manual of Designs Practice and Procedure. The current position in interpreting design claims is based on the decision in GlaxoSmithkline Consumer Healthcare GmbH v Anchor Health & Beau.... Here, the Delhi High Court applied the “ordinary observer test” although the language used was slightly different. It was held that novelty should be capable of making a design different and distinctive “at first sight of the consumer”.
Other interesting cases include Reckitt Benckiser (India) Ltd (Plaintiff) v. Wyeth Ltd (Defendant). Reckitt appealed the dismissal of its petition for an injunction against Wyeth to a Division Bench of the Delhi High Court. The question on appeal was whether prior registration in foreign jurisdictions could be used as “prior disclosure” under Section 4(b) of the Designs Act, 2000 to cancel a design registration and thus be used as a defence in an infringement lawsuit. The Division Bench (DB) reversed the holding in favor of the appellants Reckitt, upholding the validity of their design registration. The DB ruled that a design remains new or original even if it is published in India or abroad within the six month period following the filing of an application for registration of such design in the specified country so long as an application for registration of the design is filed in India within this six-month period.
REQUIREMENTS FOR DESIGN REGISTRATION
Design registrations must fulfill the following conditions:
The novelty of the design should reside in the article taken as a whole instead of highlighting or pin-pointing any portion of the representation as novel. In addition to a statement of novelty, the Indian Patent Office requires disclaimers regarding the words, letters, numbers or trademarks present on the representation sheet(s), and with respect to any mechanical features, principle of action or operation of the article should be endorsed in all the representation sheets.
Applications should be duly filed using the prescribed form (Form-1) along with the prescribed fees, stating name in full, address, nationality, name of the article, class number, and address for service in India. The application shall also be signed either by the applicant or by his authorized agent.
Power of authority in Form 21 must accompany the application, if filed through an agent. Priority documents shall be filed along with the application in case of conventional application claimed under Section 44 of the Designs Act 2000. Currently the filing fee is Rs.1000 (about $20) per application.
An application for registration of a design under Section 5(2), 3(3), or 3(4) shall be addressed to the Controller of Designs, The Patent Office, CP-2, Sector-V, Salt Lake, Kolkata- 700091. (E-mail:controllerdesign.ipo (at) nic.in). Alternatively, the application can be filed with any of the other three Patent Offices at Delhi, Mumbai or Chennai. However, the examination and office actions are handled by the Kolkata office.
Design Classification System
India has adopted a new classification that conforms to the Locarno Classification of industrial designs.
Types of Design Applications
Two types of design applications are filed, a) ordinary applications that do not claim priority under section 5 or 44, and b) reciprocity applications. A reciprocity application claims priority to an application filed previously in a convention country. Such an application shall be filed in India within six months from the date of filing in a convention country, which is not extensible.
The flow chart in Fig. 3 explains the following steps involved in design registration:
Fig. 3: Design registration process in India
Fig. 4: A typical notification of design registration in the Patent Office Journal
Effect of Indian Design Registration