What is a Design Patent

Introduction

A design patent is a form of legal protection given to the ornamental design of a functional item. Design patents safeguard only the physical appearance of an article and not its utilitarian features. Design patents are important in industries where aesthetic appeal or design novelty plays a significant role, such as consumer electronics, fashion, furniture, and automotive design. They provide a means for designers and companies to protect their unique visual creations from being copied or imitated by others. Unlike international jurisdictions like the U.S., India, does not govern the design patents under the ambit of the Patents Act, 1970 but design patents are covered under a separate legislation.

Design Patent in India

In India, a design patent is referred to as a ‘design registration’ and is governed by the Designs Act, 2000 (hereinafter ‘The Act’) and the Designs Rules, 2001. Following are the key aspects of design registration in India:

1. Requirements: To qualify for design registration in India, the design must be:
   • New and original.
   • It should not have been disclosed to the public in any form anywhere in the world before the filing date of the application.
   • The design should be significantly distinguishable from known designs or a combination of known designs.
   • The design should not be a mere mechanical contrivance.
   • The design should not comprise or contain scandalous or obscene matter and should not be contrary to public order or morality.
   • The design should not be prejudicial to the security of India.
2. Duration: A design registration in India is initially granted for 10 years from the date of registration. This term can be extended for another 5 years by applying for renewal and paying the requisite fees [Section 11(1) of the Act].
3. Application Process: The process of obtaining a design registration in India involves the following steps:
   • Filing an application with the Indian Patent Office by filing the Form 1 mentioning details of the Applicant and paying a fee of INR 1000 (for natural person), INR 2000 (for small entity) or INR 4000 (for applicants other than small entity).
   • For registration, goods are classified into 32 classes and the application can be made in any of the classes, under which the design falls.
   • Filing of representations (drawings, photographs, or samples) of the design, description of the design explaining its features.
   • Priority documents (if any), in case of Convention application claimed.
4. Examination and Publication: Indian Patent Office conducts substantive examination of design applications to assess novelty and originality.
   • Objection: Defects or objections in the application, if any, noticed during examination by the examiner are communicated to the applicant. The period for removal of objection, after the examination report, is 6 months from the date of application which may be extended up to a further three months on a request made with the prescribed fee before the expiry of the stipulated period of six months.
5. Opposition: After publication, there is a 3 month period during which any person may file an opposition against the registration of the design, citing substantial reasons for the opposition (Rule 40 of Design Rules).
   If the application meets all criteria, the design is registered, and a registration certificate is issued.
6. Registration:
   • If no opposition is filed or if opposition proceedings are decided in favour of the applicant, the design will be registered.
   • A registration certificate will be issued to the applicant upon registration.
7. Enforcement: Once registered, the owner of the design has the exclusive right to use it and to prevent others from manufacturing, selling, or importing products incorporating the registered design without permission. Enforcement typically involves legal action against infringers.
8. Effect of Registration of Design: The registration of a design confers upon the registered proprietor a ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the product belonging to the class in which it is registered.

Grounds of Cancellation of Designs

Any interested person can file a petition to the Controller seeking the cancellation of a registered design at any time after the registration of the design on the following grounds:

• that the design has been previously registered in India; or
• that it has been published in India or in any other country prior to the date of
• registration; or
• that the design is not a new or original design; or
• that the design is not registrable under this Act; or
• It is not a design as defined as per the requirements of the Act.

Defences for Infringement of Designs

When accused of design infringement, several defences can be raised to defend against the allegations. Here are the common defences available:

1. Denying the infringement.
2. Invalidity of registration.
3. Showing that the plaintiff is not entitled to the design

Remedies in case of infringement of registered design

1. Injunction: A legal ruling to stop an entity from performing the action.
2. Damages and compensation.
3. Delivery of infringing articles

Designs vs. Copyrights

In India, designs and copyrights are two distinct forms of intellectual property protection, each with its own scope, requirements, and duration. Following a comparison between designs and copyright in the context of Indian law:

• Designs protect the visual appearance of articles, while copyright protects a broader range of creative works
• Design registration confers exclusive rights for large-scale production whereas copyright protects only against copying.
• Design registration requires originality and novelty whereas copyright protection requires only originality.
• Registered designs are initially protected for 10 years from the date of registration, extendable by another 5 years whereas Copyright protection generally lasts for the lifetime of the author plus 60 years after the author's death.

Popular Examples of Design Patents

Following are some examples of products that have been granted design patents across the world:

• Coca-Cola Bottle: The iconic contour shape of the Coca-Cola bottle is protected by design patents, highlighting its unique visual identity.
• Louis Vuitton Handbags: Various designs of Louis Vuitton handbags, featuring their patterns, shapes, and ornamentation, have been patented to protect against counterfeiting.
• Furniture Designs: Designs of chairs, tables, and other furniture pieces by companies like Herman Miller, Knoll, and IKEA have been granted design patents to protect their unique appearances.
• Consumer Electronics: The designs of TVs, laptops, and other consumer electronics from companies like Samsung, Sony, and Dell are often protected by design patents, covering aspects such as bezel shapes, hinge mechanisms, and overall aesthetics.

Benefits of Design Patents

Design registration offers several key benefits to inventors, designers, and companies seeking to protect their creative efforts and investments in product aesthetics.

Here are the main benefits of obtaining a design patent:

• Exclusive Rights: Design patent grants the owner exclusive rights to the ornamental design of a functional item. It provides legal grounds to prevent competitors from copying or imitating the unique visual appearance of a product.
• Market Differentiation: In industries where aesthetic appeal and design are critical factors influencing consumer purchasing decisions (such as fashion, consumer electronics, and home furnishings), a design patent can help create a distinctive brand identity and differentiate products from competitors.
• Enhanced Value and Branding: A registered design can enhance the overall value of a product or brand by adding a layer of intellectual property protection. It signals to consumers that the design is original and legally protected, which can increase perceived value and marketability.
• Deterrent to Infringement: The existence of a design patent acts as a deterrent to potential infringers who may hesitate to copy or imitate the design due to the risk of legal consequences. This can help safeguard market share and maintain competitive advantage.
• Monetary Benefits: Design patents can also generate revenue through licensing agreements or partnerships with other businesses interested in using the protected design. Licensing allows the design owner to earn royalties while retaining ownership of the design.

Conclusion

Thus, design patents play a significant role in protecting innovation and creativity in industries where aesthetic appeal is paramount. Understanding the key aspects of design registration, enforcement and benefits will help the innovators distinguish their products in the marketplace, and contribute to healthy competition and consumer choice.

References

1. The Designs Act, 2000.
2. The Design Rules, 2001.
3. Will Kenton, Design Patent: Definition, How It Works, Examples, https://www.investopedia.com/terms/d/design-patent.asp#:~:text=Some%20examples%20of%20design%20patents,Statue%20of%20Liberty%20(1879).
4. Frequently Asked Questions, https://www.ipindia.gov.in/faq-designs.htm.
   General Information Regarding Registration of Industrial Designs, The Patent Office (Design Wing), https://www.ipindia.gov.in/writereaddata/Portal/Images/pdf/General-Info-Reg-of-Industrial-Designs.pdf