Industrial Design Protection and Enforcement Services.
Like patent and trademark, industrial design is a form of intellectual property. Due to the design feature(s) the article or product looks distinct, attractive and appealing. In the current era, it is very significant to protect the design in order to stop the competitor from copying the design and illegally reproducing the same or similar design feature in their article thereby to compete with proprietor’s product and stand out from the generic products. Industrial design registration encourages more creativity which helps the business to expand further.
Particular traits of our team give us more expertise in the field of Industrial Designs. We help our clients in all procedures that involve design searches, filing of design application in India and other countries, design prosecution, and maintenance of the design application after acceptance, enforcement and licensing of the granted designs. We have executed various projects to support our client to file for right protection, avoiding of third party right’s infringement, and commercialization and enforcement his rights.
What exactly is Industrial Design Protection and how is it Granted?
The Design protection is provided for the color, configuration, shape, surface pattern, or line, or a combination which provides aesthetic value to an article when it is applied onto the article by means of manual process, or by industrial process or combined both. The design must be appeal to and solely judged by eye. It means that design is an overall visual appearance of an article/ product, which is unique to the article. Hence, the design registration provides protection to the aesthetic look/ design, but it does not provide protection to any functionality or technical feature. The Design can be over a two dimensional or three dimensional article. Design registration gives the design owner an exclusive right to make, sell, and use articles that embody the protected design. The protection rights are provided for a period of 10 years, which can then be renewed once for an additional period of 5 years. The expiration period varies from country to country.
It should be noted that industrial design does not include any artistic work and trademark. The design must be applied to the articles. Design registration gives protection to the specific design applied on to the articles but not the articles itself.
Similar to Patents or Trademarks, the Design protections are also geographical rights, which means that to obtain the protection in India then the application for design registration has to be filed in India.
Important criteria to qualify for design registration:
- Design should not be linked with technical feature or functional aspect of the article.
- Design protection is for the color, configuration, surface pattern or line or a combination.
- The design, as mentioned above, should be original or new or can be distinguished from the existing design and not published previously or used anywhere before the date of application for registration.
- The design must be applied to the article by manual process, mechanical process, chemical process or industrial process or a combination thereof.
A professional design search is advisable in order to understand whether a design will be accepted or not. The professional team at Singhwal has rich experience in design search. Before registering the design, our team ensures that the proposed design is new/ unique and similar design has not been already registered. Our experts have handsome experience in the domain such as medical device, general utility products, ornamental products, electronics, construction etc.
Singhwal’s design expert team helps the client in novelty/ originality search, freedom to operate search, infringement analysis, design landscape and design invalidation process. Our search starts with identification of design which is based on Locarno Classification for Industrial Designs which was developed by Paris Convention member countries and administered by IB of WIPO. Further, our search strategy includes citation search to find out the similar/ relevant design. Search using applicant/ proprietor name is also has to be carried out to retrieve all the relevant designs. It should be noted that the non- patent literatures and manuals/ guides of a product also be considered. Our expert team also strategically search by segmenting the design into various key parts/ elements and conduct separate search for those key parts in addition to search the design as a whole.
Design expert team at Singhwal has been using paid and non-paid databases for design search. As mentioned above, we also conduct search of the competitor’s product manual, websites and product brochure.
How to obtain Industrial Design Protection in India?
Design applications can be filed through e-filing or paper filing mechanisms. There are several formal requirements which need to be fulfilled when applying for an Industrial Design. There is a specific type of classification called as the Locarno Classification for Industrial Designs according to which the designs are categorized and the filing is also done according to the class which the particular design belongs to.
As per Indian patent office statement, 90% of the design applications are objected on formality issue. A very few number of applications are objected on substantive issues which includes novelty/ originality. Hence, it is highly recommended to approach professionals, like Singhwal team, for preparation of design application in order to comply with all formality issues and substantive issues.
The registration application must contain the following information such as name of the applicant, their legal status if the applicant is a natural person, small entity other, than small entity or start-up in order to decide the fee structure. The start-up applicant must enclose the certificate to claim their status. Drawings or images of the articles have to be filed along with the application. In design application image is an important one. In order to avoid any objections with respect to image the following points need to be considered. Image/ drawing should be clear. In case of image, it has to be taken on contrasting background in order to be clear. All angles of the image should be produced; like front, top, rear, bottom, perspective view, sides etc. It should be noted that all parts of the articles should be there in the image and entire article must be visible. The cross sectional view of the article is not allowed. Also, any discontinuous lines such as dotted line and shading lines should be avoided. All the representations has to be made in A4 size and must not exceed this size.
Design registration is unique compared to patent and trademark. A specific design can be registered under multiple classifications. In case of design of watch cum torch, the application can be filed under the classification of watch, torch or watch-torch. Otherwise multiple applications can be filed for the design under different classifications. However, separate applications have to be made and reference to be made stating that the design is previously applied for registration under different class. Here in the design registration process, the applicant has to mention that the classification of the design in the application (Form 1) whereas in the patent filing process, the patent office assign the patent classification of the invention.
Using our expertise we guide you in identifying appropriate classification under which your application may be filed. Foreign applicants who wish to file a design application in India can file their application within six months from the provisional application date under Paris convention procedure. After filing the application, next step is for examination of the application. In Industrial Design, the examination is generally formal in nature, with small substances involved in identifying new aspects with respect to available prior arts. Further, on receiving the examination report, we apprise you with the objection report along with our analysis and further directions. And, based on your approval, we further help you to overcome the objections by drafting a strong response and further support you in getting the design granted. Once the application is granted, we further support in completing other formalities and also assist them in maintenance procedures of the application.
The registered design can be opposed by third parties. It should be noted that only the person interested can apply for cancellation. The person interested means that a person who is engaging the activity related to the registered design. The person interested has to be file Form 8 along with the statement and evidence stating that the fact considered for cancelling the registered design. On receipt the petition, the controller sends the notice to the design proprietor who may reply to the statement and evidence. Upon completion of evidence stage the controller call the parties for hearing and render the decision, either to cancel or dismiss the cancelation application. It should be noted that the controller’s decision is appealable in the high court of the respective jurisdiction. Our expert helps the clients to prepare the statement and evidence and assist the client throughout the cancellation process.
We also assist clients from India who wish to file registration application in any foreign countries through our counter parts in the respective countries. Since India is a member of Paris convention, the design registration application can be filed in the member countries within six months from the priority application.
An infringement suit can be filed by the applicant in view of the registered design. The applicant may have injunction against the infringer. Besides injunction, damages (monetary compensation) also can be recovered from the infringer. Under the design act, there is a remedy available whenever the infringement lawsuit is initiated. On counterclaim, the defendant can argue that the design is not novel/ original and hence the design is not eligible to be registered. The infringer can make a defence that the design under consideration is already registered in India and/ or the design has been published in any other country or in India before the date of registration for application. In addition to the above defences, the infringer may avail other grounds which are necessary for registering a design.
Why should one look into filing for Industrial Design?
Industrial design provides exclusivity to the owner of the design, and further enables the owner of Industrial design to stop illegitimate products from destroying the brands reputation. In many cases the design itself starts identifying a brand and customer purchase the product due to a specific design of the product Hence, a design feature forms a basis in decision making of customer in the market. Some very good examples which are subject of protection under Design Law are the contour bottle of Coca Cola, the shape of the Volkswagon Beetle and the shape of the Mini Cooper, the contour of the iPhone/iPod/iPad, etc. Our expertise has benefited several clients in different stages of Industrial Design protection.
As mentioned above, design provides appealing and distinct effects to the article/ product and hence stand-out from the related products in the market thereby to provide competitive edge over the rival products. Design registration encourages creativity and helps to improve and expand the business operation in view of exclusive rights.
Industrial Design experts at Singhwal help our clients from filing design application to till registration. Our expert team conduct pre-filing search to strategically advice our clients in order to register the design successfully. Our experts take due care in the preparation of design application in order to avoid any potential formality objection and substantive objection by the examiner. Our experts are having rich experience in responding to the objections raised by the examiner during the examination phase. In addition, we are also well experienced in the preparation of freedom to operate opinion, design landscape, design invalidation/ cancellation, infringement analysis and design enforcement strategies.