Industrial design is the process of conceiving, creating and developing concepts that optimize the appearance of products such as to add value. Industrial Design Protection is more specifically based on the outer appearance or the aesthetic look of a specific article. A good example of industrial is the aesthetic appearance of certain automobiles and consumer electronic goods such as mobile phones or portable computers which make the goods more desirable and appealing to the consumers. Industrial design also serves as a tool to differentiate your product from the host of competing products in the market by giving them a distinct look which is associated with value and a premium feel. The industrial design also conveys to the consumer the design language of a certain manufacturer with which they may associate and form a brand following around that aspect of the product.
Industrial Design and IPR
Industrial design as it is understood under the Indian law, therefore is the aesthetical aspect of the product which has an intrinsic economical value attached to it. There is also an association which the consumer form with that industrial design which further strengths the case for its economic significance. Therefore the protection of the industrial design as an asset is essential to ensure that the companies who developed the industrial design benefit from their work.
Increasingly, given the raising level of IPR awareness both in Indian and globally, more and more creators have recognised IPR as a potent legal tool to ensure that their credit due to them is realised. Industrial design system provides for a mechanism whereby any creator of a design can register the design and have a monopoly over the commercial exploitation of the product for a period of 10 years extendable for another 5 years. This government backed monopoly allows the creator to benefit from his work and also to raise sufficient capital to be able to reinvest in his creative endeavours. This allows him more ability to be able to come up with more useful and aesthetically pleasing products which benefit the society at a large.
The key component of the Industrial Design right registration is that the industrial design should be a non-functional aesthetic feature of the product, should be unique and novel (never created and used before) and should be capable of being employed in relation to an article of manufacture.
To be able to secure a registration for your Design, we must first ascertain that the design is indeed novel and has not been deployed or used in any manner under any of the applicable classes under which registration is sought to be granted. Failing this condition, the Design registration application is liable to be rejected by the Government. Therefore before proceeding with the Industrial Design registration process it is advisable to perform an Industrial Design Search to find out if the design is eligible for protection under the Design Law in India.
We at Singhwal provide legal opinion based on the Industrial Design Search report to help our clients assess their consequences for going forward with an Industrial Design application so as to avoid the possibility of a rejection of the Industrial Design Application.
Industrial Design searches are performed based on a clear understanding of the product which incorporates the industrial design and the class under which it falls as per the law laid down. Subject to both those factors, the Industrial design is reduced to its pictorial representation and care is taken to ensure that the design is captured from all possible all angles so as to be thorough in the search.
Industrial Design searches are performed in specialised database, often paid databases, which host all Industrial Design registration applications made before the government. Industrial Design searches are not as straight forward as Patent searches, as the number of fields that can be used for searching is substantially lower. Most industrial design applications are image based and upon having narrowed the pool of documents, our searchers painstakingly review each and every document which could be relevant to the search at hand and eliminate all those which are found to be irrelevant upon taking a deeper look.
This process is related until such time as the pool of documents is exhausted. In this exercise, we may either find a relevant document or may not find anything at all.
If no document could be unearthed, it means the Industrial Design is novel and if there are any documents which are found to be relevant, those documents are further studied in detail to ascertain if they pose any challenge to the registration of the design at hand. Our attorneys having several years of experience in the field of Industrial Design protection form Singhwal’s design team have formulated a standardized strategy which is used to provide Industrial Design Search reports to our clients.
We are well versed with several subject domains, and our searches are also customized based on the requirements of the client. The main fields that can be used to search for design applications includes title, a classification, jurisdiction and a brief description of the diagram. All design applications are classified under the Locarno Classification System established by the Locarno Agreement (1968), is an international classification used for the purposes of the registration of industrial designs. The Locarno Agreement (1968) was incorporated by India and as a matter of standard practice, the same is used to classify Industrial Designs under the Indian law. This forms one of the main strategy for Industrial Design search is based on classifications. We at Singhwal employ the eleventh edition of the Classification which entered into force on January 1, 2017.
Databases form the most crucial aspect of a search in addition to the search strategy. At Singhwal we use both paid and unpaid databases to conduct our searches, as paid databases provide more thorough information including the figures and drawings of the Designs.
Design protection is granted by various governments based on their local laws and design applications made in another country are also a hindrance to a fresh design registration application to be made in India. Therefore to ensure that the high standard of novelty is satisfied before actual registration, we also perform jurisdiction specific searches whilst incorporating all of the aforementioned strategies and processes is yet another key strategy that helps us to give reliable, thorough and consolidated search report to our clients. Our legal opinion is based on this data and has consistently proven to be a great value addition to our clients across industry domains.
An overview of the Industrial Design searching process as follows
Once the title, classification and jurisdiction is used for narrowing down the relevant results, we at Singhwal use several analysis strategies to assess the diagrams and figures provided for the design and compare it to the design provided by the client. Using this analysis a search report is generated and provided to the client. Through the report we give a general overview of the search that has been conducted, and we also inform the client regarding any relevant design application which should be considered before filing. We may also advice the client on any changes that may increase the consequences of obtaining Industrial Design protection.
Types of Searches Offered:
Industrial Design Searches can be categorised under the following headings based on the type of actionable intelligence sought to be extracted from it.
Freedom to Operate Search
A Freedom to operate search, also known as Clearance search is a search performed with the objective of knowing if any newly developed product or a product proposed to be developed can be commercially launched in the market. Questions such as whether there could be any legal issues involved with the commercial launch of the product because of Industrial Design registered in the name of any competitor can easily and finally answered by this type of a search. A Freedom to Operate search is jurisdiction specific as it concerns itself only with Industrial Designs which are currently protected and active in the territory of a country, e.g. India. All other documents are rejected in this search and a very specific approach is taken present the best possible legal opinion to the client before millions are spent on manufacturing and supply chain only to find that they did not have the legal authority to produce that product.
An invalidity search is performed when the client’s objective form the search is to target and challenge the legal validity of any registered design (usually that held by a competitor) on the basis that the registration in that Industrial Design ought not to have been granted since the design is not novel and there exist other designs which are essentially similar to the wrongfully granted design. This could be done for a variety of reasons including as a defence against an Industrial Design infringement action initiated against you or merely to enable your own product to be launched in the market without the possibility of adverse action of infringement.
The Indian law mandates that any new Industrial Design application must be in respect of an Industrial Design which is novel and not published in Indian before the date of making the registration application. A novelty search is a search performed to determine if a new Industrial Design registration application may be made in light of the various publications of the designs which are same or essentially similar to the subject matter of registration. Novelty search is typically not jurisdiction specific in nature and encompasses all published data which can be accessed in India as the law mandates that all designs published in India prior to the date of the application being made will act as prior art for the fresh applications. .
Design Landscape Search.
A Design Landscape search is the broadest of the Industrial Design Searches. The objective of this search is to identify all the design registrations which are active and enforceable in a given class for a given product type. Another objective can be to identify and analyse all published Industrial Design applications regardless of their current legal status and enforceability. This search provides insights to the creators in finding areas where no significant activity has taken place in the past and could be a possible area to explore and come up with Industrial Designs to better serve the domains which have been neglected.
Competitor intelligence can also be amassed by this type of search whereby Industrial Design Applications filed by a certain specific competitor are identified isolated and studied to extract trends and or capabilities and predict future product development lines and design languages.
Our team for Industrial Design searching is very well versed with the legal requirements and has proven expertise in a number of technology domains. Our clients have been successful in taking the right decisions based on our search reports and legal opinion. They have been able to set their products apart from the crowded spaced in which they compete for consumers attention. We have continued to add value to our clients businesses given how aesthetics of any product has gained prominence among the minds of the consumers in this day and age.
So if you have a design in mind which you wish to protect, then be rest assured that you are in good hands if Singhwal handles your Industrial Design Protection procedures.