DESIGN PROTECTION IN INDIA

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.

DEFINITION

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.

Fig. 1: Yearwise trend of design applications filed in India over the past few years

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 & Beauty care Private Limited, PTC 2004 (29) 72. 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 design must be new or original – and should not have been disclosed to the public anywhere in any form before the filing date
• Must be distinguishable from known designs
• Must be applicable on an article such as paper and appeal to the eye
• Shall contain no scandalous or obscene matter
• Is not merely a mechanical contrivance
• Shall not be contrary to public order or morality

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.

APPLICATION PROCEDURE

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.

DESIGN PROSECUTION

The flow chart in Fig. 3 explains the following steps involved in design registration:

1. The application for registration of design is filed complying with the requirements stated earlier
2. The filed application is examined by the Examiner of Designs to check whether the applicationand all the documents satisfy the formal requirements and whether such design as applied toan article is registrable as per section 5(1) and under the provisions of the Designs Act 2000and Design (Amendment) Rules 2008. After thorough formality check if the application is  deficient in any aspect, the Examiner reports the deficiency to the Controller, who communicates  the statement of objections to the applicant
3. The applicant should comply with rectification of the deficiencies within three months from thedate of communication of the objections failing which the application shall be treated aswithdrawn. The application will be taken up for substantive examination only after compliance ofthe objections to judge whether the design under consideration is a “design” under the Act;new or original; prejudicial to public order or morality and prejudicial to the security of India
4. After substantive examination a statement of objections (if any) is sent to the applicant. If theapplicant wishes to contest the objection(s) issued by the examiner, he may respond to theobjections clearly stating the reasons. Then the Controller shall give a hearing to decide thecase. In case of any decision adverse to the applicant, the Controller shall issue a speakingorder
5. Once the application is accepted after addressing the objections or after hearing the notice ofappeal from the court the controller issues notification in the Patent Office Journal as shown in  Fig. 4, after which the certificate of registration is issued

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

1. When a design is registered, the proprietor of the registered design has copyright in the design for a period of ten years from the date of registration. It can be extended for another five years from the expiration of the original period of ten years by applying in the prescribed manner, i.e. by filing a renewal of registration in Form 3
2. Use of registered design except through license or written consent of the registered proprietor is illegal by any person during the validity of registration
3. A registered proprietor can sue for recovery of damages for any contravention of the design rights through copying of the registered design
4. A registered proprietor can effect assignments and transmissions of the registered design and the details of the same should be entered in the Register of Designs at the Patent Office, Kolkata
5. The person entitled by assignment, transmission or other operation of law to copyright in the registered design can register his title by filing an application in the prescribed form with the Controller of Designs
6. The exhibition of a design, or of any article to which a design is applied, will not prevent the design from being registered or invalidate the registration, provided the exhibitor gives prior notice to the Controller of Designs in the prescribed manner. Such application for registration is to be made within six months from the date of first exhibiting the design or article or publishing a description of the design
7. The provisions of the Patents Act 1970 with regard to certificates of validity of a patent and to the remedial action in case of groundless threats of action against infringement apply in the same manner in case of registered designs as in the case of patents

CONCLUSION

In India, design registrations are easier to obtain than utility patents. Average prosecution time is less than a year, compared to 5-7 years for a utility patent. Design registrations provide rights that can be enforced through the Indian legal system. There is therefore ample opportunity for businesses to protect their interests through design registrations at the Indian Patent Office. Maxval is well positioned to assist clients with preparing the required design illustrations, as well as in filing and prosecuting design applications in India, through our offices located at Coimbatore and Chennai.

Design for the Win: Design Patent as a powerful Weapon in Intellectual Property Enforcement

To many intellectual property practitioners and inventors, the design patent is the often forgotten sibling of the more glamorous utility patent.  Sometimes, companies overlook design patents as a viable intellectual property right protection for their products and technology.

In fact, some of the most iconic products are/were protected by design patents.  For example, the Coca-Cola bottle (U.S. Pat. No. D48,160, titled “Bottle or Similar Article”, issued Nov. 16, 1915), the Google homepage (U.S. Pat. No. D599,372, titled “Graphical User Interface for Display of a Communication Terminal”, issued Sept. 1, 2009).

Figure 1: Selected Figures from Design Patent D48,160 and Design Patent D599,372.

Given the late Steve Jobs’ passion for design it is also no surprise that many of Apple’s most famous products are subject to design patents.  For example, the iPod (U.S. Pat No. D469,109, titled “Media Player”, issued on Jan. 21, 2003; the iPhone, (U.S. Pat. No. D580,387 titled “Electronic device”, issued Nov. 11, 2008), the iPad, (U.S. Pat. No. D504,889, titled “Electronic Device” issued Mar. 10, 2005), the Apple power adapter (U.S. Pat. No. D478,310 titled “Power Adapter”, issued Aug. 12, 2003).

Figure 2: A Medley of Figures From Apple’s Design Patents. 

Perhaps because of Apple’s robust design patent portfolio and the resolve to protect its intellectual property rights, Apple has been able to effectively use its design rights to achieve a series of court victories over its rivals.

In fact, Apple’s victories demonstrate that when used effectively, design patents can be a powerful arsenal in a company’s IP portfolio, especially considering the relatively low cost and effort to procure them.

Design Patent 101

In the United States, the overall aesthetic appearances of objects may be protected through the patent system.  35 U.S.C. §171 articulates that “whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”ⁱ

As a part of the patent legal scheme, a design patent is subject to comparable requirements as utility patent such as novelty and non-obviousness although all with a design patent twist.  Additionally, design patent is subject to it is own unique requirements such as ornamentality. Overall, an applicant must meet five main requirements to obtain a design patent: the subject matter must be an article of manufacture, original, novel, non-obvious, and ornamental. It is also important to note that unlike a utility patent, a design patent application is not published until issuance and that a design patent term is 14 yearsⁱⁱ from the issuance of the patent, instead of 20 years from the priority date for a utility patent.

In general terms, a patentable design should be embodied into, or applied to, a man-made tangible object.  In contrast, a purely abstract design or drawing is not patentable.  Using Google’s user-interface design as an example, the user-interface itself may not be patentable, but the user-interface claimed as a graphical user interface for or embodied on a computer display is a patentable design.  Accordingly, Google’s design patent, U.S. Pat. No. D599,372’s claim recites “the ornamental design for a graphical user interface for a display screen of a communications terminal, as shown and described”, thus tying the abstract design (the graphical user interface) to a tangible object (the display screen).

The originality bar requires that a design to be patentable must be derived from the individuals named as inventors. For example, a design which simulates a well known, or naturally occurring object or person is not original as required by the statute.ⁱⁱⁱ

To be patentable, a design patent must also meet the novelty^iv and non-obviousness^v requirements similar to a utility patent. Specifically, the novelty of a design is determined by the “average observer test”, where a patentable design must be different from the appearance of any single prior design.  Similarly, the non-obviousness of a design is determined whether a designer of ordinary skill of the articles involved would have found the design obvious at the time the design was invented.

A patentable design must be ornamental, where the design must have an overall distinct appearance that is not dictated by the function of the article of manufacture.  The ornamental requirement of a design patent separates utility and design in that  a utility patent protects the way an article is used and works (35 U.S.C. §101), while a design patent protects the way an article looks (35 U.S.C. §171).  However, both design and utility patents may be obtained on an article if the invention resides both in its utility and ornamental appearance.  Indeed, while the legal protections offered by design patents and utility patents are different, in practice, the functionality and ornamentality of an article are not always easily separable and an article of manufacture may possess both patentable functional and ornamental characteristics.
Many foreign jurisdictions have comparable design protection schemes as the U.S. design patent system. For example, the European Community protects similar subject matter under the Community design system^vi, which unlike a European patent application, is a unitary right that has equal effect across the community countries.  Specifically, the community design may be protected if they are novel that is if no identical design has been made available to the public; they have individual character that is the “informed user” would find it different from other designs which are available to the public.

Unlike the U.S. design patent system, the European Community design is unexamined; applicants only pay an official fee and meet other formal requirements for registration.  The difference seems to suggest that it is more difficult to obtain a U.S. design patent, however, an examination of the file histories of design patents issued in 2009^vii suggest that vast majority of design patents (81.6%) were allowed without ever receiving a rejection during prosecution, while only 1.2% received a prior art rejection.  Thus, for practical purposes, the U.S. design patent system may be viewed as more of a registration system similar to the European Community design registration, than an examination system.

Design Patent Filing Trends

U.S. design patent filing rates have been increasing throughout the years.  As seen in Fig 3^viii, the number of design applications filed per year has increased from 17,413 applications filed in 2000, to 29,059 applications filed in 2010, which is an increase of over 50%.  Similarly, the number of design patents granted per year has also increased from 17,413 granted in 2000, to 22,799 granted in 2010, which is an increase of over 30% in the same period.

Figure 3: Design Patent Grant and Filing Trend from 2000 to 2010.

Due to the nature of the design patent, its applicability varies significantly across various technology sectors.  Table 1 lists the top 30 design patent assignees in 2010, and Figure 4 shows the industry breakdown of the top 30 design patent holders.

Table 1: Top 30 Design Patent Assignee as of 2010

Design Patent Assignee	Number of Design Patents
Sony	2957
Samsung	2681
Nike	2317
Goodyear	1780
Matsushita	1749
Procter and Gamble	1641
Motorola	1500
Microsoft Corp.	1453
Hon Hai (Foxconn)	1444
Black & Decker	1387
Canon	1385
Honda	1358
Sharp	1299
Toshiba	1158
Kohler	1131
LG	1097
Dart Industries Inc.	1041
Wolverine World Wide Inc.	953
Nokia	926
Toyota	839
Colgate-Palmolive	772
IBM	767
Masco Corp.	765
Casio Computer Co.	716
Interlego A.G.	666
Apple	661
Bayerische Motoren Werke AG. (BMW)	654
U.S. Philips Corp.	615
Minka Lighting, Inc.	602
Rubbermaid Inc.	598

Figure 4: Industry Breakdown of the Top-30 Design Patent Assignees.

The industry sector that is the most active user of the design patent system is the consumer electronics sector, which accounts for 14 of the top-30 design patent assignees.  The top design patent assignees of the consumer electronics sector includes many of the major players in the field including Sony (the number one design patent holder), Samsung, Matsushita (Panasonic), Motorola, Toshiba, LG, Nokia, Hon Hai (Foxconn), Apple, and Microsoft (although Microsoft is not a consumer electronic company in the classic sense, it does hold design patents related to tablet designs, the Xbox home console designs, among others).

The second most active sector is the consumer goods sector, which for the purpose of this analysis is broadly defined to include kitchen wares, lighting, containers, tools, etc.  The other major industry sectors that actively seek design patents include the automobile industry (Toyota, Honda, and BMW) and the apparel industry (Nike and Wolverine).

Design patent activity may be associated with a new product release. For example, Apple’s design patent filing trend from1990 to 2010 is illustrated in Figure 5.  During this period, Apple released many products that now define the company including the iPod in 2001, the iPhone in 2007, and the iPad in 2010.  As seen in Figure 5, Apple has increased its design patent filing activity significantly over time, and likewise has been receiving an increased number of design patent grants.  Furthermore, it is observable that prior to or contemporaneous with a new Apple product release, there is an increase in design patent activity.  In fact, U.S. D469,109, which covers the design of the original iPod was filed on 10/22/2001, one day before the  first iPod was released.

Figure 5: Apples Design Patent Filing Trend from 1990 to 2010.

Litigation Trends

Overall, the number of design patent cases filed at in the district courts has increased significantly.  Figure 6 shows the numbers of court cases where at least one design patent either alone, or in conjunction with one or more utility patent were enforced in the United States.

Figure 6: Design Patent Litigation Trend Measured by Number of U.S. District Court Cases Filed.

Using the top-30 design patent assignees as a sample size, both litigation activities in the district courts and the International Trade Commission (ITC) are presented in Table 2, furthermore, Figure 6 shows all the assignees who is a plaintiff in at least one district court actions.  As seen in Table 2 and Figure 6, Apple is the most litigious among the top-30 design patent assignees.  Apple is the plaintiff of 7 design patent related district court cases and 1 ITC proceedings; it is also the defendant in 2 cases.  Some of the top design patent assignees such as Samsung which has a much bigger design patent portfolio than Apple (Samsung has 2,681 design patents while Apple has 661 design patents), have not enforce its design patent in a U.S. court or through the ITC.  In Samsung’s case, it is actually the defendant in 3 court cases and 1 ITC case, some of which are initiated by Apple.

Table 2: Top-30 Design Patent Assignees’ Litigation Record

Design Patent Assignee	Plaintiff – District Court	Defendant – District Court	Plaintiff – ITC	Defendant – ITC
Sony	0	0	0	0
Samsung	0	3	0	1
Nike	1	2	0	0
Goodyear	1	0	0	0
Matsushita	0	1	0	0
Procter and Gamble	1	4	0	0
Motorola	1	0	0	0
Microsoft Corp.	1	0	2	0
Hon Hai (Foxconn)	0	0	0	0
Black & Decker	2	2	0	0
Canon	0	0	0	0
Honda	0	0	0	0
Sharp	0	1	0	0
Toshiba	0	0	0	0
Kohler	1	0	0	0
LG	0	0	0	0
Dart Industries Inc.	0	0	0	0
Wolverine World Wide Inc.	0	0	0	0
Nokia	0	2	0	0
Toyota	0	0	0	0
Colgate-Palmolive	0	0	0	0
IBM	0	0	0	0
Masco Corp.	0	0	0	0
Casio Computer Co.	0	0	0	0
Interlego A.G.	0	0	0	0
Apple	7	2	1	0
Bayerische Motoren Werke AG.	1	0	0	0
U.S. Philips Corp.	0	0	0	0
Minka Lighting, Inc.	6	0	0	0
Rubbermaid Inc.	4	0	0	0

 

Figure 6: Top Plaintiffs of Design Patent Related District Court Action by A Top-30 Design Patent Assignee.

Apple vs. Samsung: design patent in the spotlight
Apple has been engaged in an international patent warfare against many of its rivals in the smart phone and tablet industry. Samsung, the recently crowned number one smart phone maker has taken the brunt of Apple’s wrath.

Currently there are at least 20 ongoing patent litigations between Apple and Samsung in a variety of jurisdictions.  Perhaps some of the most interesting skirmishes between Apple and Samsung are centered on design rights.  Although the controversy regarding design rights has recently reached the United States, they have been largely fought in Europe.

Apple achieved early victory in August 9^th 2011 against Samsung when it was granted a preliminary injunction against Samsung’s Galaxy Tab tablet, barring with immediate effect all distribution of the product in the entire European Union except for the Netherlands on the grounds of an alleged infringement of Apple’s iPad-related Community Design Patent No. 000181607-000,  the European counterpart of U.S. Pat. No. D504,889.

Figure 7: Selected Figures of Community Design No. 000181607-0001.

Samsung was able to mitigate the blow when Düsseldorf district court (the Landgericht)  suspended the enforcement of the preliminary injunction on August 25^th in all EU countries except in Germany, where the injunction is still in effect.  The preliminary injection was further affirmed on September 9th by the Düsseldorf Regional Court.

The swiftness of the injunction decision and creative defense arguments raised by Samsung that would make any cinephile proud including the “Space Odyssey” defense (citing unsuccessfully, Stanley Kubrick’s 2001Space Odyssey as prior art) and “Tomorrow People” defense (citing, the 70’s era British Sci-Fi series The Tomorrow People also unsuccessfully as prior art) has enshrined this case in the hall of fame of IP litigation.

The German injunction along with court victories in other jurisdictions by Apple is leading up to the battle in the United States both before the ITC and the Northern District Court of California, where Apple is currently seeking preliminary injunction against Samsung targeting the Galaxy S 4G phone and Galaxy Tab 10.1 tablet as well as other Android-based devices. Specifically, Apple asserts the following four intellectual property rights in the Northern District of California – three design patents and one utility patent:

•  U.S. Design Patent No. D618,677 on an “electronic device” (iPhone-like design)
• U.S. Design Patent No. D593,087 on an “electronic device” (iPhone-like design)
• U.S.Design Patent No. D504,889 on an “electronic device” (iPad-like design, the European counterpart                                              was used to enjoin Samsung in Germany)
• U.S. Patent No. 7,469,381 on (“list scrolling and document translation, scaling, and rotation on a touch-screen display”)

Conclusion

The preliminary injunction and the ITC decisions in the United States are still forthcoming, but regardless of the outcomes, Apple’s ability to achieve significant legal victory in Europe demonstrates that design IP rights can be a potent tool in a company’s IP portfolio.  Considering that design rights are inexpensive and comparatively easy to obtain, they can be powerful, capable of being enforced rapidly, and thus deserves the attention of IP practitioners.

-By Steven Gong