Industrial Designs

UNIT 7 INDUSTRIAL DESIGNS

Structure
7.1 Introduction
Objectives
7.2 What are Industrial Designs?
Evolution of Design Protection
Legal Protection of Industrial Designs
7.3 Subject Matter of Protection
Design as concept or Idea
Application to or Embodiment of the Design in an Article
Exclusion of Designs Dictated by Function
Novelty or Originality
7.4 Rights in Industrial Designs
Entitlement to Rights
Acquisition of Rights
Nature of Rights
Duration of Rights
7.5 Relation to Copyright
7.6 Requirements under TRIPS
7.7 The Hague Agreement
The Principle of International Deposit
Main Provisions of the Hague Agreement
Benefits of Accession to the Hague Agreement
The Geneva Act of the Hague Agreement
7.8 Classification of Designs
Locarno Agreement
The Classification Scheme
7.9 Summary
7.10 Terminal Questions
7.11 Answers and Hints

7.1 INTRODUCTION

An industrial design is the ornamental or aesthetic aspect of an article. The design

may consist of three-dimensional features, such as the shape or surface of an article,
or of two-dimensional features, such as patterns, lines or colour.

Industrial designs are applied to a wide variety of products of industry and handicraft:
from technical and medical instruments to watches, jewellery, and other luxury items;
from house wares and electrical appliances to vehicles and architectural structures;
from textile designs to leisure goods such as toys and pet accessories.

To be protected under most national laws, an industrial design must appeal to the
eye. This means that an industrial design is primarily of an aesthetic nature, and does
not protect any technical features of the article to which it is applied.

Industrial designs are what make an article attractive and appealing; hence, they add
to the commercial value of a product and increase its marketability.

When an industrial design is protected, the owner - the person or entity that has
registered the design is assured an exclusive right against unauthorized copying or
imitation of the design by third parties. This helps to ensure a fair return on
investment. An effective system of protection also benefits consumers and the public
at large, by promoting fair competition and honest trade practices, encouraging
creativity, and promoting more aesthetically attractive products.

47
TRIPS, Designs Protecting industrial designs helps economic development, by encouraging creativity
in the industrial and manufacturing sectors, as well as in traditional arts and crafts.
They contribute to the expansion of commercial activities and the export of national
products.

Industrial designs can be relatively simple and inexpensive to develop and protect.
They are reasonably accessible to small and medium-sized enterprises as well as to
individual artists and craftsmen, in both industrialized and developing countries.

In most countries, an industrial design must be registered in order to be protected

under industrial design law. As a general rule, to be registrable, the design must be
new or original. Different countries have varying definitions of such terms, as well as
variations in the registration process itself. Generally, new means that no identical or
very similar design is known to have existed before. Once a design is registered, a
registration certificate is issued. Following that, the term of protection is generally 5 to
10 years, with the possibility of further periods of renewal up to, in most cases, 15
years. In India the minimum term of protection is 10 years.

Depending on the particular national law and the kind of design, an industrial design
may also be protected as a work of art under copyright law. In some countries,
industrial design and copyright protection can exist concurrently. In other countries,
they are mutually exclusive: once the owner chooses one kind of protection, he can no
longer invoke the other.

Presently, in India, the Designs Act 2000 is prevailing. It has been enacted on May 25,
2000. It has repealed the earlier Designs Act 1911.

Generally, industrial design protection is limited to the country in which protection is

granted. Under the Hague Agreement Concerning the International Deposit of
Industrial Designs, a procedure for an international registration is offered. An
applicant can file a single international deposit either with WIPO or the national office
of a country which is party to the treaty. The design will then be protected in as many
member countries of the treaty as the applicant wishes.

Objectives

After studying this unit, you should be able to:

explain, what is an industrial design;

explain the differences between industrial design protection and trade mark and
patent protection;
list the benefits of industrial design protection for the owner of the protection, the
consumer of the product, and the economy;
describe the way in which an industrial design can be protected;
compare the protections under Design registration and copyright;
explain the role of the Hague Agreement for industrial designs; and
describe the features of proposed Geneva Act of the Hague Agreement.

7.2 WHAT ARE INDUSTRIAL DESIGNS?

Industrial design, in a general sense, refers to the creative activity of achieving a

formal or ornamental appearance for mass-produced items that, within the available
cost constraints, satisfies both the need for the item to appeal visually to potential
consumers, and the need for the item to perform its intended function efficiently. In a
legal sense, industrial design refers to the right granted in many countries, pursuant to
a registration system, to protect the original ornamental and non-functional features of
an industrial article or product that result from design activity.
48
 Industrial Designs
Visual appeal is one of the considerations that influence the decision of consumers to
prefer one product over another, particularly in areas where a range of products
performing the same function is available in the market. In these latter situations, if
the technical performance of the various products offered by different manufacturers
is relatively equal, aesthetic appeal, along with, of course, cost, will determine the
consumers choice. The legal protection of industrial designs thus serves the important
function of protecting one of the distinctive elements by which manufacturers achieve
market success. In so doing, by rewarding the creator for the effort which has
produced the industrial design, legal protection serves as an incentive to the
investment of resources in fostering the design element of production.

7.2.1 Evolution of Design Protection

Historically, the emergence of protection for industrial designs is intimately connected

with the growth of industrialization and methods of mass production. In the United
Kingdom, the first law giving protection to industrial designs was the Designing and
Printing of Linens, Cotton, Calicoes and Muslins Act of 1787, which gave protection
for a period of two months to every person who shall invent, design and print, or
cause to be invented, designed and printed, and become the Proprietor of any new
and original pattern or patterns for printing Linens, Cottons, Calicoes or Muslins.
The contribution and importance of design in the growing textile industries was
thereby recognized.

Growing recognition of the expansion of industrialization and of the possible

application of methods of mass production to most areas of manufacture lead to the
gradual extension of design protection to other fields of endeavor (notably sculpted
figures used in the pottery and porcelain industries) up until the consolidation
achieved in the Designs Act of 1842, which extended protection to any new and
original design whether such design be applicable to the ornamenting of any article of
manufacture, or of any substance, artificial or natural, or partly artificial and partly
natural, and that whether such design be so applicable for the pattern, or for the
shape or configuration, or for the ornament thereof, or for any two or more of such
purposes and by whatever means such design may be so applicable, whether by
printing, or by painting, or by embroidery, or by weaving, or by sewing, or by
modeling, or by casting, or by embossing, or by engraving, or by staining, or by any
other means whatsoever, manual, mechanical, or chemical, separate or combined.
Design was thereby recognized as a fundamental element of all production and
manufacture.

A somewhat similar evolution of design protection took place in France. The Law on
Literary and Artistic Property of 1793 was applied in certain cases to the protection of
designs. The growth of the textile industries, in particular, soon led to the enactment in
1806 of a special law dealing with industrial designs. The Law of March 18, 1806,
established a special council (Conciliation Board or Conseil de Prudhommes) in
Lyon responsible for receiving deposits of designs and for regulating disputes between
manufacturers concerning designs. While initially destined for industries in Lyon,
particularly those manufacturing silk, the system of deposit and regulation by special
council was extended to other cities and, through judicial interpretation, to two- and
three-dimensional designs in all areas of industrial activity.

7.2.2 Legal Protection of Industrial Designs

The formulation of a legal system for the protection of industrial designs, like the
provision of legal protection for all forms of intellectual property, requires the
establishment of a balance of interests. On the one hand, there is the need to provide
efficient and effective protection, in order that the law may fulfill its function of
promoting the design element in production. On the other hand, there is the need to
49
TRIPS, Designs ensure that the law does not unnecessarily extend protection beyond what is necessary
to create the required incentive for design activity, so that the least number of
impediments are introduced to the free use of available designs. The establishment of
this balance requires careful consideration of a number of matters, of which the most
important are:

the definition of the subject matter of protection;

the rights which apply to the proprietor of the subject matter;
the duration of such rights;
the entitlement to such rights; and
the method of acquisition of such rights.

7.3 SUBJECT MATTER OF PROTECTION

7.3.1 Design as Conception or Idea

The subject matter of the legal protection of industrial designs is not articles or
products, but rather the design which is applied to or embodied in such articles or
products.

The emphasis is on an abstract conception or idea as the subject matter of design

protection. Design protection does not apply to articles or products in such a way as to
grant the proprietor of the design exclusive rights over the commercial exploitation of
those articles or products. Rather, design protection only applies to such articles or
products as embody or reproduce the protected design. Protection does not, therefore,
prevent other manufacturers from producing or dealing in similar articles fulfilling the
same utilitarian function, provided that such substitute articles do not embody or
reproduce the protected design.

The conception or idea that constitutes the design may be something which can be
expressed either two-dimensionally or three-dimensionally. The definition of design
which is used in the Registered Designs Act 1949 of the United Kingdom, for
instance, refers to features of shape, configuration, pattern or ornament. It has been
generally considered that, in this definition, the words shape and configuration are
synonymous, and that both signify the form in which an article is made or, in other
words, something three-dimensional. Likewise, it has also been considered that the
words pattern and ornament are synonymous, and that both refer to something
embossed, engraved or placed upon an article for the purpose of its decoration or, in
other words, to something essentially two-dimensional.

The Copyright, Designs and Patents Act 1988, of the United Kingdom, also provides
for a design right. Design is defined as referring to any aspect of the shape or
configuration (whether internal or external) of the whole or part of an article.

A similar approach, emphasizing the inclusion of both two-dimensional and three-

dimensional designs, is to be found in the laws of other countries. Thus, the Design
Law of Japan (Law No. 125 of April 13, l959, as amended) refers to design as
meaning the shape, pattern or color or a combination of these in an article, and laws
of France and Italy refer to both drawings or sketches (dessinstwo-dimensional) and
models (modlesthree-dimensional).

7.3.2 Application to or Embodiment of the Design in an Article

While the subject matter of design protection is an essentially abstract conception, one
of the basic purposes of industrial design protection is the stimulation of the design
element of production. It is, accordingly, a usual feature of industrial design laws that
50
a design can be protected only if the design is capable of being used in industry, or in Industrial Designs
respect of articles produced on a large scale.

The requirement that a design must be applied to utilitarian articles in order to be

protected is one of the principal matters which distinguishes the objectives of
industrial design protection from copyright protection, since the latter is purely
concerned with aesthetic creations. The requirement is variously expressed in different
laws. For example, the Design Law of Japan similarly extends protection to designs
capable of being used in industrial manufacture.

7.3.3 Exclusion of Designs Dictated by Function

The concern of industrial design protection with appearance only is also apparent
from the requirement, commonly found in industrial design laws, that designs which
are dictated solely by the function which the article is to perform shall be
excluded from protection. In this respect, Article 25.1 of the TRIPS Agreement
provides, for example, that Members of the WTO may incorporate the provision that
the industrial design protection shall not extend to designs dictated essentially by
technical or functional considerations.

A fundamental purpose is served by the exclusion from protection of designs dictated

solely by the function which the article is to perform. Many articles to which designs
are applied are not themselves novel, and are produced by a large number of different
manufacturers. Belts, shoes, screws and piston rings, for example, may be produced
by hundreds of different manufacturers, and all articles within each class are intended
to perform the same function. If a design for one such article, for example, screws, is
dictated purely by the function which the screw is intended to perform, protection for
that design would have the effect of excluding all other manufacturers from producing
items intended to perform the same function. Such an exclusion is not warranted,
unless the design is sufficiently novel and inventive to qualify under the rigorous
standards for patent protection.

Since, under certain theories of design, form should follow function, it is often said
that the exclusion from protection of designs which are dictated purely by function
may have the effect of excluding too broad a range of designs from protection. Such a
fear is in practice, however, unwarranted, since the exclusion relates only to those
designs which are indispensable for achieving the desired function. In reality, many
ways of achieving a given function will be possible. Thus, only if the given function
could not be achieved after a design is altered would the design be excluded from
protection. The question is thus whether the design for which protection is sought
constitutes the sole solution for an intended function.

7.3.4 Novelty or Originality

It is a requirement of all industrial design laws that protection through registration

shall be granted only to designs which are novel or, as it is sometimes expressed,
original. The novelty of the design constitutes the fundamental reason for the grant of
a reward to the originator through protection by registration of the industrial design.

While the requirement of novelty is to be found in all laws, the nature of the novelty
that is required as a condition of protection differs amongst the laws of various
countries. The novelty required is sometimes absolute or universal, meaning that the
design for which registration is sought must be new as against all other designs
produced in all other parts of the world at any previous time and disclosed by any
tangible or oral means. On the other hand, a qualified standard of novelty is
sometimes required. In this latter situation, the qualification may relate to:

51
TRIPS, Designs time, meaning that novelty is judged by reference to designs published within a
limited preceding period of time; or
to territory, meaning that novelty is judged by reference to all designs published
within the relevant jurisdiction, as opposed to anywhere in the world; or
means of expression, meaning that novelty is assessed by reference to written or
tangible disclosures anywhere in the world and to oral disclosures only within the
relevant jurisdiction.

The broad policy argument in favor of a standard of unqualified universal novelty is

that exclusive rights by registration should be granted only where the originator of the
design has produced something which is truly novel, and which therefore justifies the
reward of exclusive rights. The broad policy argument in favor of a qualified standard
of novelty is that, one purpose of design registration is to encourage new design
within the relevant jurisdiction. So that a novel design registered within that
jurisdiction should not be deprived of a protection by the publication elsewhere of that
design, which its originator did not introduce into the jurisdiction. It should be noted,
however, that it would not necessarily follow from a qualified standard of novelty that
a person could obtain valid rights within the jurisdiction simply by registering a
design which he had seen overseas and copied, since it is often also a requirement of
design law that the applicant should be the author of the design.

" Spend
3 min.
SAQ 1

In the following cases, will the claim of design protection hold? If not, state the reason
thereof:

i) A ball point pen manufacturer shapes the front portion of the pen in such a way
that it helps to improve the grip of the fingers on pen.
ii) A motorcycle is imported in the country. Using it for few days on road, the owner
copies its shape and files an application for registering this design.
iii) A tea manufacturer designs a novel 3-D logo on the packaging of the tea carton.

7.4 RIGHTS IN INDUSTRIAL DESIGNS

The rights which are accorded to the proprietor of a validly registered industrial
design again emphasize the essential purpose of design law in promoting and
protecting the design element of industrial production. Thus, whereas copyright
accords to an author the right to prevent the copying of a work, industrial design law
accords to the proprietor the exclusive right to prevent the unauthorized exploitation
of the design in industrial articles.

7.4.1 Entitlement to Rights

The right to legal protection in respect of an industrial design belongs to the creator
(or author or originator) of the industrial design. Two questions concerning the
operation of this principle arise and are often the subject of particular legislative
provisions.

First, there is the question of the entitlement to legal protection in respect of an

industrial design that has been created by an employee, or by a contractor pursuant to
a commission. In these situations, the law usually provides that the entitlement to legal
protection of the design shall belong to the employer, or to the person who has
commissioned the design. The basis for this rule is that the creation of the design falls
within the duties, which the employee is paid to perform, so that the employee should
seek the reward for his creative activity in an appropriate level of remuneration,
52
responsibility and other conditions of employment. Likewise, in the case of the Industrial Designs
contractor, the thing for which the contractor is being paid is the production of the
design for the use of the person commissioning the design.

Much contemporary design is produced with the assistance of computers. The

question arises whether it can be said that there is an author or creator who is entitled
to legal protection in respect of designs generated with the assistance of a computer.
One approach to this question is to treat the computer like any other tool which may
be used by a designer to assist in the process of generating a design. On this basis, the
person who is responsible for manipulating the computers capacity to produce a
design would be considered to be the author of the design. A provision to this effect is
to be found in Section 214(2) of the Copyright, Designs and Patents Act 1988, of the
United Kingdom which provides: In the case of a computer-generated design the
person by whom the arrangements necessary for the creation of the design are
undertaken shall be taken to be the designer.

7.4.2 Acquisition of Rights

Registration

Industrial design protection is usually granted pursuant to a procedure for the

registration of such designs. The most commonly adopted examination system
provides for a formal examination only of an application for a registered design.
According to this system, an application is examined to ensure that it meets with each
of the formal requirements for an application which are imposed by the relevant law
(for example, whether the requisite number of representations or specimens of the
design are filed with the application), but no search is made of the prior art to
determine whether the substantive criterion of novelty or originality is satisfied by the
design for which registration is sought.

A system requiring only formal examination has the effect of shifting the burden of
assessing novelty to those interested persons in the market who may wish to use, or
who may have used, the design or a substantially similar design. Any person
interested in using such a design will have the opportunity either to oppose the
registration of the design for which application has been made, if the relevant law
provides for an opposition procedure, or of bringing proceedings for the cancellation
of a registration which it is alleged is invalid. The system thus offers a means of
reducing the administrative burden of the maintenance of a system of registration of
industrial designs. It also offers a solution to the problem of maintaining an adequate
search file to undertake a substantive examination of the novelty of designs. Such a
search file can very often be almost impossible to maintain, since, on the basis of a
condition of unqualified universal novelty, it would need to include all designs made
at any time in any part of the world since the commencement of recorded history.

The alternative system of examination provides for a search of past designs and an
examination of the design for which registration is sought to ascertain whether it
satisfies the required condition of novelty. It necessitates the maintenance of a search
file and sufficient skilled manpower to undertake the substantive examination.

Creation and Fixation

Rights in designs may, under certain laws, also be acquired by the act of creation and
fixation of the design, in a document or by embodying the design in an article. These
systems do not require any formal registration procedure for the acquisition of
exclusive rights in the design. Examples of this system are provided by the Law of
France, and the design law under the Copyright, Designs and Patents Act 1988, of
the United Kingdom.

53
TRIPS, Designs 7.4.3 Nature of Rights

The right to prevent others from exploiting an industrial design usually encompasses
the exclusive right to do any of the following things for industrial or commercial
purposes:

make articles to which the design is applied or in which the design is embodied;
import articles to which the design is applied or in which it is embodied;
sell, hire or offer for sale any such articles.

In some laws, the exclusive rights of the proprietor also extend to preventing another
from stocking any articles to which the design has been applied or in which it is
embodied. While this right is sometimes considered as excessive in that it deals only
with preparatory acts, it is on the other hand often included in order to facilitate the
enforcement of a proprietors rights, since it may often be easier to locate a stock of
infringing articles than to apprehend a person in the act of selling or offering for sale
such articles.

As opposed to copyright, where the subject matter of the right is the work which is
created by the author and which is thus defined by the author, the subject matter of the
rights of the proprietor of an industrial design are defined by the design which has
been registered. However, it is usual to provide that the proprietors rights extend not
only to the unauthorized exploitation of the exact design which has been registered,
but also to the unauthorized exploitation of any imitations of such a design which
differ from the registered design only in immaterial respects.

7.4.4 Duration of Rights

The term for an industrial design right varies from country to country. The usual
maximum term goes from 10 to 25 years, often divided into terms requiring the
proprietor to renew the registration in order to obtain an extension of the term. The
relatively short period of protection may be related to the association of designs with
more general styles of fashions, which tend to enjoy somewhat transient acceptance or
success, particularly in highly fashion-conscious areas, such as clothing or footwear.

7.5 RELATION TO COPYRIGHT

Objects qualifying for protection under the law of industrial designs might equally
well receive protection from the law of copyright. Thus, industrial designs law has
relations both with copyright law and with industrial property law. Supposing a
particular design embodies elements or features which are protected both by the
copyright law and the industrial design law, may a creator of an industrial design
claim cumulatively or simultaneously the protection of both laws? If this question is
answered affirmatively, protection is cumulative. Cumulation of protection means that
the design is protected simultaneously and concurrently by both laws in the sense that
the creator can invoke the protection of either or both, the copyright law or the
industrial design law, as she chooses. It also means that if she has failed to obtain the
protection of the industrial design law by failing to register the design, she can claim
the protection of copyright law, which is available without compliance with any
formality. Finally, it means that after the term of protection of the registered design
expires, the creator may still have the protection of the copyright law.

It is to be noted here that cumulation must be distinguished from co-existence. Co-

existence of protection means that the creator may choose to be protected either by the
industrial design law or by the copyright law. If she has chosen the one, she can no
longer invoke the other. If she has registered the industrial design, at the expiration of
54
such registration she can no longer claim protection under the copyright law, at least Industrial Designs
for the particular application of the industrial design.

The system of cumulation of protection by the industrial design law and the copyright
law exists in France and in Germany. And the system of co-existence of protection by
both laws prevails in most other countries.

In Indian Design Act 2000, when a design is registered the proprietor has copyright in
the Design during ten years from the date of registration. This period is extendable by
another five years by filing an application for renewal.

The difference between protection by the copyright law and protection by the
industrial design law is as follows. Under the industrial design law, protection is lost
unless the industrial design is registered by the applicant before publication or public
use anywhere, or at least in the country where protection is claimed. Copyright in
most countries subsists without formalities. Registration is not necessary. Industrial
design protection endures generally for a short period of three, five, ten or fifteen
years. Copyright endures in most countries for the life of the author and fifty to sixty
years after her death.

The right conferred by registration of an industrial design is an absolute right in the

sense that there is infringement whether or not there has been deliberate copying.
There is infringement even though the infringer acted independently and without
knowledge of the registered design. Under copyright law, there is infringement only in
the reproduction of the work in which copyright subsists.

7.6 REQUIREMENTS UNDER TRIPS

The following provisions are made in the TRIPS agreement regarding the standards
concerning availability, scope and use of IPR in reference to the Industrial Designs.

Article 25
Requirements for Protection

1. Members shall provide for the protection of independently created industrial

designs that are new or original. Members may provide that designs are not new
or original if they do not significantly differ from known designs or combinations
of known design features. Members may provide that such protection shall not
extend to designs dictated essentially by technical or functional considerations.

2. Each Member shall ensure that requirements for securing protection for textile
designs, in particular in regard to any cost, examination or publication, do not
unreasonably impair the opportunity to seek and obtain such protection. Members
shall be free to meet this obligation through industrial design law or through
copyright law.

Article 26
Protection

1. The owner of a protected industrial design shall have the right to prevent third
parties not having the owners consent from making, selling or importing articles
bearing or embodying a design which is a copy, or substantially a copy, of the
protected design, when such acts are undertaken for commercial purposes.

2. Members may provide limited exceptions to the protection of industrial designs,

provided that such exceptions do not unreasonably conflict with the normal
exploitation of protected industrial designs and do not unreasonably prejudice the
55
TRIPS, Designs legitimate interests of the owner of the protected design, taking account of the
legitimate interests of third parties.

3. The duration of protection available shall amount to at least 10 years.

7.7 THE HAGUE AGREEMENT

On November 6, 1925, the Hague Agreement Concerning the International Deposit of

Industrial Designs (hereinafter referred to as the Hague Agreement) was adopted
within the framework of the Paris Convention. The Agreement entered into force on
June 1, 1928, and has been revised and supplemented several times. Two Acts of the
Hague Agreement are currently in force: the London Act of 1934 and the Hague Act
of 1960 (referred to respectively as the 1934 Act and the 1960 Act). These two
Acts are autonomous and totally independent from each other. Each of them, in other
words, in itself consists of a fully-fledged international treaty. However, since around
95% of international deposits are effected under the 1960 Act, we discuss that Act
now. We also take brief account of a further Act, the Geneva Act of 1999, which is
not yet in force.

7.7.1 The Principle of International Deposit

The main aim of the international deposit of industrial designs is to enable protection
to be obtained for one or more industrial designs in a number of States through a
single deposit filed with the International Bureau of WIPO. Under the Hague
Agreement, any person entitled to effect an international deposit has the possibility of
obtaining, by means of a single deposit made with the International Bureau of WIPO,
protection for an industrial design in Contracting States of the Agreement with a
minimum of formalities and of expense.

The applicant is thus relieved of the need to make a separate national deposit in each
of the States in which is requested, the protection, thus avoiding the inherent
complication of procedures that vary from one State to another.

7.7.2 Main Provisions of the Hague Agreement

An international deposit may be made by any natural or legal person who is a national
of one of the Contracting States or has his domicile or a real and effective industrial or
commercial establishment in one of those States.

An international deposit does not require any prior national deposit. It is made directly
with the International Bureau of WIPO by the depositor or his representative on a
form provided free of charge by the International Bureau. It may, however, be made
through the national Office of a Contracting State if the law of such State so permits.
The law of a Contracting State may also require, in cases where that State is the State
of origin, that the international deposit be made through the national Office of that
State. Non-compliance with this requirement does not prejudice the effects of the
international deposit in the other Contracting States.

The owner of an international deposit enjoys the priority right afforded under Article 4
of the Paris Convention for the Protection of Industrial Property if he claims this right
and if the international deposit is made within six months of the first national, regional
or international deposit made in, or having effect in, a State party to the Paris
Convention or a Member of the World Trade Organization.

A single international deposit may comprise several designs, up to a maximum of 100.

All the designs in a single deposit must however be in, or be intended for

56
incorporation in articles listed in, the same class of the International Classification Industrial Designs
(Locarno Classification).

International deposit is subject to the payment of fees, in Swiss francs, the amounts of
which are decided by the Assembly of the Hague Union.

The working languages for the implementation of the 1960 Act of the Hague
Agreement are English and French. An international application may be filed in either
of these languages, at the choice of the applicant. International deposits and any
amendment affecting them are entered in the international register and published in
both English and French. Any correspondence between the International Bureau and
the depositor is in the language in which the international application was filed.

The international deposit has the same effect in each of the States designated by the
applicant as if the designs included in the deposit had been directly deposited in that
State, on the date of the international deposit, and as if all formalities required by
domestic law had been complied with, and all administrative acts required for a grant
of protection had been accomplished, subject to the right to refuse protection on
substantive grounds.

An international deposit shall, however, have no effect in the State of origin if the
laws of that State so provide.

International deposits are published by the International Bureau in a monthly

periodical with the title International Designs Bulletin. Publication comprises, in
particular, a reproduction of the article or articles in which the deposited designs are to
be incorporated. The national Office of each Contracting State is entitled to receive
free of charge from the International Bureau a certain number of copies of the
Bulletin.

The depositor may ask for publication to be deferred for a period of his choice, which
may not, however, exceed 12 months as from the date of the international deposit or,
where appropriate, from the date of priority claimed.

Any Contracting State whose domestic legislation offers the possibility of refusing
protection, as the result of an administrative ex officio examination or of opposition
by a third party, may refuse protection for any industrial design not meeting the
requirements of its domestic law. Refusal of protection may not, however, extend to
the formalities and other administrative acts that must be considered by each
Contracting State as having been accomplished as of the time the international deposit
is recorded at the International Bureau. No Contracting State may require, in
particular, publication of the international deposits other than that made by the
International Bureau.

Refusal of protection must be notified to the International Bureau within six months of
the date on which the national Office received the issue of the Bulletin in which the
international deposit concerned was published. The International Bureau transmits a
copy of the refusal to the depositor, who has the same remedies against the decision to
refuse as he would have had if he had deposited the design or designs concerned with
the Office that has taken the decision to refuse. Where no refusal is notified within the
period of time referred to above, the protection of the designs included in the
international deposit is the same as if the deposit had been entered in the national
register of the State concerned.

An international deposit is made for an initial term of five years. It can be renewed at
least once, for an additional period of five years, for all or part of the designs included
in the deposit, or for all or some only of the States in which it has effect. For those
Contracting States whose domestic legislation allows a term of protection of more
57
TRIPS, Designs than 10 years for national deposits, an international deposit may be renewed more
than once, in each case for an additional period of five years, with effect in each such
State up to expiry of the total allowed term of protection for national deposits under
that States domestic legislation.

7.7.3 Benefits of Accession to the Hague Agreement

Nationals of a member State of the Hague Union are able to obtain protection for their
designs in a number of States with a minimum of formalities and expense. In
particular, they are relieved of the need to make a separate national deposit in each of
the States in which they require protection, thus avoiding the complications arising
from procedures which differ from State to State. They do not have to submit the
required documents in various languages nor keep a watch on the deadlines for
renewal of a whole series of national deposits, varying from one State to the other.
They also avoid the need to pay a series of national fees and agents fees in various
currencies. Under the Hague Agreement, the same results can be obtained by means of
a single international deposit, made in one language, on payment of a single set of
fees, in one currency and with one Office (i.e. the International Bureau).

The simplification of the formalities and the reduction of the cost of obtaining
protection abroad favourably influence the development of foreign trade. Domestic
manufacturers and traders are encouraged to apply for protection of their designs in
the States party to the Hague Agreement and to export their products to those States.
International deposits therefore assist domestic manufacturers and traders who are
export-oriented.

The manufacturers and traders in other States party to the Hague Agreement are, in
turn, able to protect their designs more easily in a State which has acceded to the
Agreement and thus have more incentive to export their products to that State. The
result is a growth in trade and an increased likelihood of new industrial and
commercial activities being set up on the territory of the new member State, thus
promoting its economic development.

A part of the fees paid by depositors is distributed each year, by the International
Bureau, to the competent authorities of the States party to the Hague Agreement.

The Offices of the Contracting States have no specific tasks in the implementation of
the Hague Agreement, except in those cases where the domestic or regional legislation
of the State permits or requires the international deposit to be effected through them or
lays down a novelty examination for deposited designs.

Further information concerning the system of international deposit of industrial

designs, including the updated list of Contracting States and the fees, the latest annual
statistics and the full texts of the Agreement, of the Regulations and of the
Administrative Instructions, is available on WIPOs website (www.wipo.int) under
the heading Hague system.

7.7.4 The Geneva Act of the Hague Agreement

By 1990, only 29 countries were party to the Hague Agreement. Absent from it were
several countries active in the field of industrial designs, such as Japan, the United
Kingdom, the United States of America and the Scandinavian countries. Moreover,
only around 4,000 international deposits were filed each year. For these reasons, a
Diplomatic Conference was held in June/July 1999 in order to conclude a new Act of
the Hague Agreement, aimed at making the system more responsive to the needs of
users and facilitating adherence by countries whose industrial designs systems do not
permit them to accede to the 1960 Act. This latest Act, known as the Geneva Act, will
introduce into the Hague system a number of new features, including:
58
 the possibility for a Contracting Party to declare that the standard time limit of six Industrial Designs
months allowed for it to refuse protection shall be replaced by 12 months;

the possibility for an applicant to request deferment of publication of his designs

for up to 30 months; however, a Contracting Party may declare that, where it is
designated, the period of deferment will be of a lesser duration (specified in the
declaration), or to declare that, where it is designated, the request for deferment
shall be disregarded; in the latter case, the design will be published six months
after the date of the international registration unless the application requests
immediate publication;

the possibility, where the design is two-dimensional and deferment of publication

is requested, to file specimens of the design instead of reproductions;

the possibility for a Contracting Party to opt to receive, instead of a standard

designation fee fixed in the schedule of fees, an individual fee whose amount is
fixed by that Contracting Party but may not be higher than the amount it would
receive in respect of a grant of protection at the national level; where, in the
national system, there are separate fees for application and grant, the individual
fee may similarly be payable in two parts;

while normally it is possible to designate the applicants own country, a

Contracting Party may close this option, thereby avoiding the risk that it is
overwhelmed by applications from its own nationals coming via the international
route in English or French; and

in addition, provision is made for a Contracting Party to notify a number of

special requirements concerning such matters as the mandatory contents of the
application, the required number of reproductions of the design, unity of design or
the entitlement of an applicant to file the application.

Furthermore, the Geneva Act provides for accession not only by States but also by any
intergovernmental organization which maintains an Office in which protection of
industrial designs may be obtained with effect in its territory.

SAQ 2 Spend "

3 min.
Is it possible to obtain a world wide Design registration?

7.8 CLASSIFICATION OF DESIGNS

The Design to be registered has to be classified according to an international scheme

of classification in order to bring in homogeneity in the design registration across the
countries with this intention, a single international classification scheme is proposed
by the Locarno Agreement.

7.8.1 Locarno Agreement

The Locarno Agreement establishing an international classification for Industrial

Designs was signed at Locarno on October 8, 1968 and was amended on September
28, 1979.

According to this Agreement:

The international classification shall be solely of an administrative character.

Nevertheless, each country may attribute to it the legal scope which it considers
appropriate. In particular, the international classification shall not bind the

59
TRIPS, Designs countries of the Special Union as regards the nature and scope of the protection
afforded to the design in those countries;

Each country of the Special Union reserves the right to use the international
classification as a principal or as a subsidiary system;

The Offices of the countries of the Special Union shall include in the official
documents for the deposit or registration of designs, and, if they are officially
published, in the publications in question, the numbers of the classes and
subclasses of the international classification into which the goods incorporating
the designs belong.

7.8.2 The Classification Scheme

The classification scheme comprising of classes and subclasses identified by their

numbers. Each class may consist of many subclasses.

The list of 32 internationally accepted classes of Industrial Designs is given below:

List of Classes of the International Classification Seventh Edition

(as in force from January 1, 1999)

Class 01 Foodstuffs
Class 02 Articles of clothing and haberdashery
Class 03 Travel goods, cases, parasols and personal belongings, not elsewhere
specified
Class 04 Brushware
Class 05 Textile piece goods, artificial and natural sheet material
Class 06 Furnishing
Class 07 Household goods, not elsewhere specified
Class 08 Tools and hardware
Class 09 Packages and containers for the transport or handling of goods
Class 10 Clocks and watches and other measuring instruments, checking and
signalling instruments
Class 11 Articles of adornment
Class 12 Means of transport or hoisting
Class 13 Equipment for production, distribution or transformation of electricity
Class 14 Recording, communication or information retrieval equipment
Class 15 Machines, not elsewhere specified
Class 16 Photographic, cinematographic and optical apparatus
Class 17 Musical instruments
Class 18 Printing and office machinery
Class 19 Stationery and office equipment, artists' and teaching materials
Class 20 Sales and advertising equipment, signs
Class 21 Games, toys, tents and sports goods
Class 22 Arms, pyrotechnic articles, articles for hunting, fishing and pest
killing
Class 23 Fluid distribution equipment, sanitary, heating, ventilation and air-
conditioning equipment, solid fuel
Class 24 Medical and laboratory equipment
Class 25 Building units and construction elements
Class 26 Lighting apparatus
Class 27 Tobacco and smokers' supplies
Class 28 Pharmaceutical and cosmetic products, toilet articles and apparatus
Class 29 Devices and equipment against fire hazards, for accident prevention
and for rescue
60
Class 30 Articles for the care and handling of animals Industrial Designs
Class 31 Machines and appliances for preparing food or drink, not elsewhere
specified
Class 99 Miscellaneous

Let us now summarise the points covered in this Unit.

7.9 SUMMARY

An industrial design is that aspect of a useful article, which is ornamental or

aesthetic. It may consist of three-dimensional features such as the shape or surface
of the article, or two-dimensional features such as patterns, lines or color. As with
other forms of intellectual property it may be protected.

By protecting an industrial design, the owner is ensured an exclusive right against

its unauthorized copying or imitation by third parties for a period of time which is
typically up to a maximum of 15-25 years depending on the particular national
law.

In most countries an industrial design must be registered in order to be protected

under industrial design law. As a general rule, in order to be registered, the design
must be new or original. What constitutes its novelty or originality may differ
from country to country and the registration process itself varies from country to
country. In particular, this may involve or not an examination of the application
for the registration of the design, especially to determine novelty or originality.

An industrial design must be reproducible by industrial means.

The Hague Agreement, which is administered by WIPO, allows nationals and

residents of, or companies established in, a State party to the Agreement, to obtain
industrial design protection in a number of countries also party to the Agreement
through a simple procedure. A single international deposit in one language
(English or French), involving a single payment and filed with one office, is
sufficient. The office can be the International Bureau of WIPO or the national
office of the contracting state.

According to Locarno Agreement, the designs are to be classified in any one of

the specified 32 classes.

7.10 TERMINAL QUESTIONS Spend 10 min.

1. What is difference between an industrial design and a trade mark or Patent?

2. What are the benefits of protecting an industrial design?

7.11 ANSWERS AND SOLUTIONS

Self Assessment Questions

1. i) The new shape of the pen is improving its utility (functionality) by allowing
better grip. This will be excluded due to functionality. However, it could be
possible to file a patent of this modification.

ii) Though the design of the motorcycle is not already registered in the country,
since it is used in public in the country, the novelty of the design is lost.
61
TRIPS, Designs iii) The industrial design should be a shape or form of the good utilitarian to be
marketed. A logo on the packet is not a design. It could be registered as a
trade mark.

2. No. the Hague agreement allows the protection only in the countries signatories to
the Agreement.

Terminal Questions

1. An industrial design is distinguished from a trademark primarily because it is

constituted by the appearance of a product, which must not necessarily be
distinctive (a prime requirement for a trademark). A trademark, although it may
consist of all kinds of visible signs, which may or may not be ornamental, must
always be distinctive, since a trademark must always be capable of distinguishing
the goods and services of one enterprise from another.

The object of protection of an industrial design is different from that of a patent,

primarily because an industrial design must relate to the appearance of the object
and which is not determined by technical or functional necessity. The object of
patent protection, in contrast, is determined by the functionality of an object or
process since it must be an invention.

2. The owner of an industrial design benefits through the industrial development of

his/her products and the protection helps to ensure a fair return on investment.
However, the consumer and the public at large benefit as well, as industrial design
protection is conducive to fair competition and honest trade practices, encourages
creativity and thus leads to more aesthetically attractive and diversified products.

Also industrial design protection injects creativity into the industrial and
manufacturing sector, contributes to the expansion of commercial activities, and
enhances the export potential of national products.

62