Category Archives: Design

Importance Of India As A Target Country For Design Registration

India has witnessed a long journey since 2000, when its GDP at 46,214.68 crores INR started to rise phenomenally to almost five times, to around 2.26 Lakh Crore INR in 2016 [1]. Since contribution towards it can be traced back to three major sectors of economy, mainly, agrarian, manufacturing and service sector, it is reasonable to observe that growth must also have been observed in these individual sectors as well. Although it is true, but not all sectors displayed equal proportions of growth. Service sector paced forward, while manufacturing and agrarian sectors lagged behind. Since there is a little scope to add value in the agriculture sector, the onus of boosting the economy further falls upon the manufacturing sector.

With this concept in mind, under the banner of “MAKE IN INDIA” initiative [2], it was envisaged by the present Government to bring an increase in the share of manufacturing in the country’s Gross Domestic Product from 16% to 25% by 2022 by making sure that the sector ensures and endures a growth rate of 12-14% per annum over the medium term [3]. In order to support this vision, funds were mustered from every source possible and it is evident from the fact that cumulative Foreign Direct Investment (FDI) in India’s manufacturing sector reached US$ 73.70 billion during April 2017-December 2017 [4]. In wake of such heavy investments made, it is obvious to assume that the sector will observe some turbulence on the positive side.

Further, a lot of policy related measures have been taken in this regard, including improvisation   of   Intellectual   Property   (IP)   protection   measures   and   their   effective administration, including computerized work flow along with digital manuals that were made available to the applicants have streamlined the process. However, it can be observed that executive focus is highly customised with regard to different kinds of intellectual property rights. This opens up scope to find out the potential among those regarded as the underdogs.

Moving ahead, from a recent report from World Economic Forum on “Global Competitive Index – 2018” [5], India was placed at 40th position while Switzerland was placed at the top. On a comparative analysis, the score for Basic requirements section which comprises of Institutions, of which Intellectual Property protection is a part, India scores 4.4 points at 52nd position, while Switzerland is on the top with 6.6 points. The margin in both rankings as well as points is quite high, and steps taken to develop this domain can help to bring early signs of positive change.

                              

The domain of Intellectual Property is reasonably wide and is divided into two parts: copyright and industrial property. Copyrights generally do not require registration which makes it difficult to track and monitor. According to Article 1(2) of Paris Convention for Protection of Intellectual Property which reads as “The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition” [6]. Industrial property refers to assets created primarily for the advancement of technology, industry and trade such as patents (inventions), industrial designs, trademarks, service marks, trade secrets and geographic indications of origin [7].

Industrial design (also interchangeably referred to as “Design” or “Design Patent”) recognizes creation new and original features of new shape, configuration, surface pattern, ornamentations and composition of lines or colours applied to articles which in the finished state appeal to and is judged solely by the eye [8].

A Design, under Section 2(d) of The Designs Act, 2000 [9] refers to the features of shape, configuration, pattern, ornamentation or composition of lines or colours applied to any article, whether in two or three dimensional (or both) forms. This may be applied by any industrial process or means (manual, mechanical or chemical) separately or by a combined process, which in the finished article appeals to and judged solely by the eye.

Design does not include any mode or principle of construction or anything which is a mere mechanical device. It also does not include any trade mark as defined under Section 2(l) of The Trade Marks Act, 1999 [10] or any artistic work described under Section 2(c) of The Copyright Act, 1957 [11]. Also, property marks as defined under Section 479 of Indian Penal Code, 1860 [12] will be excluded from the scope of design.

If the design is not new or original, or cannot be distinguished from the existing design or combination of such designs or contains scandalous or obscene matter, the such design shall not be registered. Further, a design is barred from registration if it has been disclosed to public prior to the filing date.

The registration of a design, under Section 11(a) confers upon the registered proprietor the exclusive right to apply a design to the article in the class in which the design has been registered. This implies conversely that no right exists of any proprietor of a design that has not been registered, and hence cannot be enforced in the Court of Law against any such infringer. A registered proprietor of the design is entitled for protection of his intellectual property. He can take step against infringement, if his right recognised by law is infringed by any person. He can license or sell his registered design as legal property for a consideration or royalty. Registration initially confers this right for ten years from the date of registration, with a further extension of five years. The right expires if extension for registration is not applied for within stipulated time.

Hence, non – registration possesses a potential loss of any enforceable right against the infringer, as a risk management tool. Moreover, the fee charged for registration seems to be reasonable keeping in view the rights protected by it for a period of about fifteen years. For instance, it takes around INR 1000 for registration of a design [13]. And if a design is meant for industrial production, it must provide returns greater than the registration fee, which is again quite possible.

However, in the absence of any registration for a given design, the design is vulnerable to piracy and proprietor stands to lose market as well as profit share at his/her own expense. An estimate of losses can be observed by drawing inference from the fact the total international trade in counterfeit and pirated goods is estimated to value around half trillion USD [14] with around half of it effecting the industries that could have been protected under designs act. The business of piracy and counterfeit goods also result in employment losses of 2.5 million, with a total global economic and social cost, when estimated liberally seem to touch around a trillion USD. Also, it is assumed for UK market that it may lead to displacement of more than half of the market share of genuine products. In India, it is responsible for eating away a market share of 30% with estimated losses of 9000 crores INR to Auto components market alone with total loss accruing among seven prominent sectors was estimated to be around 73000 crores INR [15].

It is worth mentioning that out of 24898 applications filed, design registrations at about 2935 account for only one – eighth of the total share in comparison with 9584 patents granted in the year 2016 – 2017 [16]. This itself talks about the scope in increase of design registration as it is completely product based, and product are re – modified and re – designed in order to maintain their demand in the market.

                   

For the purpose of registration of a design, the procedure is carried out in accordance with Rule 10 of The Design Rules, 2001 which deals with the classification of goods with respect to which registration of design has to take place. There are 31 different classes with Class 99 which is a miscellaneous class and includes all products not included in previous classes.

Any contravention of The Designs Act, 2000 by the infringer will impose a liability to pay to a registered proprietor a sum of up to twenty – five thousand rupees under contract debt. Further, if a suit is brought, damages valuing up to fifty – thousand rupees along with injunction can be prayed.

India, on the other hand is a huge promising market, being placed at number 3 due to its sheer size, and hence can act as an attractive site for design registration. When collaborated with the vision of transforming the nation into a highly industrialised manufacturing hub. This is further consolidated by when it is observed that top corporate applications are lined up for the purposes of registration. Also, the design registration is available to foreign players who wish to enter and exploit the open Indian market. Further, Indian manufacturers must also make sure that their designs are not only protected by The Designs Act, 1999, but also by the design law of those economies where they wish to sell their product. The registration under The Designs Act is an effective and cost – friendly risk management tool for both domestic as well as foreign players and hence should not be avoided at any cost.

Author:  – Madhur Tulsiani, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at paras@khuranaandkhurana.com.

References:

[1] https://data.worldbank.org/indicator/NY.GDP.MKTP.CD

[2] http://www.makeinindia.com/policies

[3] http://www.makeinindia.com/policy/national-manufacturing

[4] https://www.ibef.org/industry/manufacturing-sector-india.aspx

[5]http://www3.weforum.org/docs/GCR2017_2018/05FullReport/TheGlobalCompetitiveness

Report2017%E2%80%932018.pdf

[6] http://www.wipo.int/edocs/lexdocs/treaties/en/paris/trt_paris_001en.pdf

[7] http://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_867.pdf

[8] http://www.ipindia.nic.in/designs.htm

[9] http://www.ipindia.nic.in/writereaddata/images/pdf/act-of-2000.pdf

[10] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf

[11] http://www.copyright.gov.in/Documents/Copyrightrules1957.pdf

[12] http://ncw.nic.in/acts/THEINDIANPENALCODE1860.pdf

[13] http://www.ipindia.nic.in/writereaddata/images/pdf/rules-2001.pdf

[14] https://cdn.iccwbo.org/content/uploads/sites/3/2017/02/ICC-BASCAP-Frontier-report-2016.pdf

[15]https://cdn.iccwbo.org/content/uploads/sites/3/2016/11/Counterfeiting-piracy-and-smuggling-in-India-Value-of-IP-in-india.pdf

[16] https://patseer.com/2017/06/india-filing-trends-2016-2017/

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Copyright Protection to Architectural Works

Issue of infringement of architectural works requires understanding of protection of works when they are reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner.

For example: if an architect uses a part of the architectural design of another architect in order to build his own building, without the prior permission of the architect who owns the copyright from which the other architect derives his work, it would amount to infringement. This permission may be obtained through an assignment or a license for the use of the same. However, not all inspiration amounts to infringement of copyright. Copyright law allows portions of a copyrighted work to be used without the author’s permission for specific purposes such as criticism, comment, news reporting, research, teaching etc. under the doctrine of fair use which is often used as a defense.

The protection of architectural works through Copyright against infringement and imitation is provided in the copyright act 1957. Therefore answer to the question of whether architects could protect their “Architectural works” from infringement? Is yes. Discussion on what is protected as part of Copyright of a building, needs clear understanding of what is a copyright, what is an architectural work, and is it an work of art or not?

Architectural works were not afforded legal protection or any form of copyright protection till the “Berne Convention” of 1908 was revised, after which it was included in the ambit of “literary and artistic” works protected at international level.

Despite architectural works being considered artistic works, some structures have been kept outside the scope of copyright protection, like bridges, dams, tents, boats are not considered “buildings”.

 Freedom of Panorama

“Freedom of Panorama” is an exception to the other provisions of the Copyright Act, 1957. The term has not been explicitly incorporated in the Act but Section 52 of the Copyright Act interprets similar meaning to the terminology and lays down certain acts which do not lead to copyright infringement. The section is explained by the following points:-

  • Any painting, engraving, drawing or the display of a work of architecture, photograph of a work of architecture can be made or published and has been incorporated under section 52 (1)(s).
  • The making and publishing of a drawing, painting, photograph of a sculpture, or other artistic work, engraving or any other work of artistic craftsmanship, if such work is situated in a public place permanently or any premises where the public has an access.
  • Any artistic work which is permanently situated in a public place or where the public has an access is included in a cinematograph film.
  • It is in this regard that the Indian Copyright Law can be appreciated, as against European and American copyright law which allows this freedom only if the copyrighted work is used for non-commercial or educational purposes, the Indian law is not subject to such demarcations.

Protection under the ambit of Copyright Act

“In general, any original work made by a person is eligible for copyright protection. Originality refers to the fact that an author must have created the work through the application of the author’s own creativity and labour. In addition, such work must have been reduced to a material form. Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright, although it is advised that the author/owner of the copyright gets their work registered to make sure they can enforce the rights conferred by the Copyright Law, should their copyright be infringed. Different countries have different laws pertaining to copyright of artistic works.

Indian law provides protection to the architectural works under the uniform copyright law. Section 13 of the Indian Copyright Act, 1957 numerates the types of artistic works that are eligible for copyright protection.

According to Copyright act 1957-

Section 2(b) “work of architecture” means any building or structure having an artistic character or design, or any model for such building or structure;

Section 2(c) “artistic work” means—

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an
engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) a work of architecture; and

(iii) any other work of artistic craftsmanship.

In India architects can register their original works under the Copyright registration system. Also, being a signatory to Berne Convention as well as Universal Copyright Convention, works protected in other Berne signatory countries will automatically be protected in India without the need for registration. Architecture may be defined as the “art of designing and constructing buildings”, and therefore has both functional as well as artistic attributes. Section 57 of the Indian Copyright Act also takes into consideration the moral rights of the creator of the artistic work as well as the rights of integrity and attribution of the author. The Indian copyright law has also widened its scope to allow protection to the architectural design of commercial buildings. We, at Khurana & Khuranahadthe opportunity to register the copyright for architectural design of a commercial building for our client Riis Retail, a company based out of Denmark, vide diary no. 12158/2010/CO/Aon 10thof November, 2010!

 Protection under the ambit of Design Act

Section 2(d) of the Design Act, 2000 has defined the term design as “ the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in 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.

The Design Act, 2000 provides for registration of Architectural works under Class 25-03 and 25-99. Due to multiple provisions conferring protection to architectural works, a conflict mayarise, whether Architectural works should be protected under the Copyright Act, 1957 or under the Design Act, 2000 or whether Section 15(2) of the Copyright Act, 1957 would come in play for determination of what works would be protected through Designs vs Copyrights.

Application of Mischief rule by the courts

Mischief rule pertains to the interpretation of the statutes and is applied by the Courts when there is a conflict between two laws or provisions of law on interpreting it by the words as stated in the particular law or is interpreted by the courts to resolve the confusion in its application. In the case of Microfibers Inc. vsGirdhar& Co. &Anr.,[1]the question was whether the design of an “artistic work” in fabrics should be protected under the Copyright Act or the Design Act. The court by applying the mischief rule stated that the “the mischief sought to be prevented is not the mischief of copying but of the larger monopoly claimed by the design proponent inspite of commercial production.[2] The court had held that if the design is registered under the designs act, the design would lose its copyright protection, and if the design has not been registered it would still continue to enjoy copyright protection as long as the threshold limit of its application through an industrial process does not go beyond 50 times, after which it shall lose its copyright protection. Delhi High Court by giving a reference to the particular case in Holland L.P. &Anr. vs A.D. Electro Stell Co. Pvt. Ltd[3]., where it was argued by the plaintiff that under section 2(c) read with section 13 of the Copyright Act he had the “right to convert a two dimensional artistic work into a three dimensional constructions”[4]and that the “drawings” are capable  of being copyrighted under Section 15(2) of the Copyright Act. Thus by the virtue of the two statements the copyright should stay with him. The court rejected the plaintiff’s contention and stated that the drawing was capable of being registered under the Design Act and it would lose its copyright if it is reproduced by the industrial process more than 50 times and would also fall under the public domain.

International Conventions protecting the architectural structures 

 Article 2(1) of the Berne Convention requires member countries to extend copyright protection to, among other things, “works of . . . architecture . . . and three-dimensional works relative to . . . architecture.”[5]However, the Berne Convention does not explicitly define what works constitute a “work of architecture” entitled to protection, except that such works may be “incorporated in a building or other structure.” The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) explicitly incorporates the Berne Convention’s mandate for architectural copyright protection without further defining what constitutes a work of architecture. Architectural works were not included in the Convention of 1886, except for the Article 4 which states “plans, sketches and artistic works relating to architecture were specified.

Thus, the protection of architectural works is an issue that has not been understood and discussed enough. A large number of architects or designers lack the knowledge to protect and enforce the IP rights in their building designs. Most of the countries have now modified their laws to meet the requirements of the Berne Convention with regard to the copyright protection for architectural works. Further, the basic use of spaces such as windows and doors, which are elementary to any building’s structure, are not themselves protected by copyright law. In such a scenario the Delhi High Court’s judgment and the harmonious construction of the Copyright Act and the Design Act has acted as a balancing beam to tackle the issue.

.

About the Author: Trishala Sanyal, AKK New Law Academy and Aditya Sehgal, Symbiosis Law School Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at  info@khuranaandkhurana.com

[1] RFA (OS) NO.25/2006

[2] https://indiankanoon.org/doc/112937069/

[3] CS(COMM) 83/2017

[4] https://indiankanoon.org/doc/151057483/

[5] https://www.law.cornell.edu/treaties/berne/2.html

Intellectual Property, Singapore: Registered Designs legislative amendments enters into force

Intellectual Property of Singapore (IPOS) in its constant endeavor to grow the IP regime and provide an effective legal framework to the local design industries of Singapore has taken a significant step forward as the Registered Designs (Amendment) Act 2017 (“Act”) and its corresponding subsidiary legislation amendments comes into force from October 30, 2017 [1] [2]. Key features of the amendment are as follows:

 Expanding the scope of Registered Design:

This amendment allows the broadening of scope of the designs that can be registered. In simpler words, an applicant can protect more types of features for their designs. This includes the design features related to a non-physical product and also includes the feature of colors and handicrafts.  A new category which has been introduced into the ‘Registered Designs Act’ is a Non-Physical product which can be a virtual of projected design. A “non-physical product” is anything which

  • doesn’t have a physical shape or feel;
  • is a projection of a design on a surface or into a medium (including air); and
  • has an intrinsic utility.

A virtual keyboard can be an example of a non-physical product which does not have a physical shape/form and is projected by light onto a surface, and which has an intrinsic utility function to type characters in the same way as a physical computer.

Changing the default ownership position of  commissioned designs:

Prior to the amendment, when the designers were commissioned to create a design, the commissioning party was considered to be the owner of the rights in the design, not the creator/ designer. According to the amendment, Section 4 of the Registered Designs Act gives the ownership rights to the designer/ creator by default unless the parties have contracted otherwise.

Extension of Grace Period:

Inclusion of a new section 8A in the Act allows to broaden the circumstances where the designs are disclosed by the designers and to lengthen the grace period for designers to get their designs registered in cases where the designs were disclosed to the public prior to date of filing the registration application. The grace period has been extended from 6 months to 12 months. In other words, the designer can still file a design application for his/her design within 12 months of any disclosure made by him/her for the same design. This new Section 8A shall apply in cases where the disclosure was made on or after the date of commencement of the legislative changes (i.e. 30 October 2017).

Allowing multiple designs to be filed in a single application:

The amendment allows the applicants to file a single application for multiple designs. This must be done at the time of filing the application for registration of their designs on ‘Form D3’. A maximum of 50 designs can be filed within a single application.

Further for providing convenience in filing applications, the amendment includes a new Section 16 A which states that for correcting any non-compliance or to comply with either or both of the formal requirements of Section 11 (2) (c) and 11 (4) (a), subject to the permission of the Registrar, a new application can be filed by the applicant for registration of the design. An additional benefit is granted to the applicant i.e. the new application filed by the applicant shall be treated as filed on the date of filing of the previous application for registration of design.

A per the released Circular No. 6/2017 [2], the corresponding subsidiary legislation amendments to the Registered Designs (Amendment) Act 2017 can be found in the Registered Designs (Amendment No. 2) Rules 2017, the Registered Designs (International Registration) (Amendment) Rules 2017 and the Copyright (Amendment) Regulations 2017.

The above amendments as already mentioned allows greater ownership rights for the local designers and to get protection for more type of features for their designs.

The updated legislative amendments in relation to the changes above will be made available on the IPOS website (https://www.ipos.gov.sg/resources/ip-legislation) [4] after it is published in the Government Gazette.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References:

[1]https://www.ipos.gov.sg/docs/default-source/resources-library/design/Guidelines-and-Useful-Information/registered-designs-infographic-legislative-amendments.pdf

[2]https://www.ipos.gov.sg/docs/default-source/resources-library/design/circulars/2017/(2017)-circular-no-6—designs-related-legislative-amendments-to-enter-into-force-on-30-october-2017.pdf

[3]https://www.ipos.gov.sg/

[4]https://www.ipos.gov.sg/resources/ip-legislation

Revised Guidelines for Examination of Computer-related Inventions (CRIs)

On 30th June 2017, the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) published Revised Guidelines for Examination of Computer-related Inventions (CRIs) that are applicable with immediate effect. The revised guidelines have replaced the Guidelines for Examination of CRIs, published on 19th February, 2016. The revised guidelines are short and precise as compared with the previous versions and have relaxed the criteria for patentability of the CRIs.

The heart of the 2016 guidelines was a three stage test to examine a CRI application, according to which the Examiners may:

  • Properly construe the claim and identify the actual contribution
  • If the contribution lies only in mathematical method, business method or algorithm, deny the claim
  • If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

Therefore, the requirement of a novel hardware was apparent under the three step test laid in 2016 guideline. The revised guidelines have however done away with this test. The revised guidelines focus on substance over form and states:

If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable. Even when the issue is related to hardware/software relation, the expression of the functionality as a method is to be judged on its substance. It is well-established that, in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed. The Patents Act clearly excludes computer programmes per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording.

The revised guidelines further discuss determination of excluded subject matter relating to CRIs. According to the revised guidelines, it is important to ascertain from the nature of the claimed CRI whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance or both, and is not subject to exclusion under Section 3 of the Patents Act.

Further, the sub-section 3(k) excludes mathematical methods or business methods or computer programme per se or algorithms from patentability. Computer programmes are often claimed in the form of algorithms as method claims or system claims with some means indicating the functions of flow charts or process steps. It is well-established that, while establishing patentability, the focus should be on the underlying substance of the invention and not on the particular form in which it is claimed.

What is important is to judge the substance of claims taking whole of the claim together. If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under the said excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.           

Hence, along with determining the merit of invention as envisaged under Sections 2(1) (j), (ja) and (ac), the examiner should also determine whether or not they are patentable inventions under Section 3 of the Act.

Thus, it can be inferred that the revised guidelines focus on substance over form instead of novel hardware requirement. That is, while examining an application its substance is considered and a claim is taken as whole, if it does not fall in any of the excluded categories, the Examiner can proceed with other steps to determine patentability with respect to the invention.

Various stake holders associated with the software industry and Associated Chambers of Commerce & Industry of India (ASSOCHAM) have been lobbying for such a change. ASSOCHAM trough a communication to the Prime Minister’s Office, urged the Prime Minister to bring out appropriate amendments to the 2016 guidelines and simplify the criteria in pursuance of becoming a leading global player in areas of research and development (R&D) and software products.

In the view of the foregoing, it can be concluded that as the CGPDTM has done away with the requirement of novel hardware, the patentability criteria is eased out. This not only facilitates the patentability of CRIs but also attracts big software MNCs and startups to invest in the area of development of software technologies.

About the Author: Ms. Prigya Arora, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at prigya@iiprd.com

Design Registration in Vietnam

TYPES OF DESIGNS:

  • Industrial Design: An industrial design means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements.
  • Layout-Design: A layout-design of semiconductor integrated circuit (hereinafter referred to as layout-design) means a three-dimensional disposition of circuit elements and their interconnections in a Semi-conductor integrated circuit.

PROCEDURE FOR DESIGN REGISTRATION:

Step 1: Filing:

  • Who may apply: Article 86 and 89:
  • Authors who have created inventions with their own efforts and expenses
  • Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring unless otherwise agreed by the involved parties.
  • Foreign nationals residing permanently
  • Foreign organizations having a production or trading establishment
  • Non-resident foreign nationals or organizations not having a production or trading establishment shall apply through a lawful representative.
  • Documents required: Section 100
  • Declaration for registration in the prescribed form
  • Documents, samples and information identifying the invention
  • Power of attorney (if applied through representative)
  • Documents evidencing the registration right if such right is acquired by another person
  • Documents evidencing the priority right, if it is claimed
  • Vouchers of payment of fees and charges
  • A copy of the first application certified by the registration office
  • Requirements of application:
  • Documents identifying an industrial design registered for protection
  • Description and a set of photos or drawings of such industrial design.
  • The description must consist of a section of description and a scope of protection of such industrial design.
  • The section of description of an industrial design must satisfy the following conditions:
  • Fully disclosing all features expressing the nature of the industrial design and clearly identifying features which are new, different from the least different known industrial design, and consistent with the set of photos or drawings.
  • Where the industrial design registration application consists of variants, the section of description must fully show these variants and clearly identify distinctions between the principal variant and other variants.
  • Where the industrial design stated in the registration application is that of a set of products, the section of description must fully show features of each product of the set.
  • The scope of protection must clearly define features which need to be protected, including features which are new and different from similar known industrial designs.
  • The set of photos and drawings must fully define features of the industrial design.
  • Filing Date: Article 108:
  • All applications shall be received by the State administrative authority.
  • The filing date shall be the one on which the application is received by the state administrative authority.
  • First to file: Article 90:
  • Where two or more applications are filed by several people to register industrial designs identical with or insignificantly different from each other, protection may only be granted to the valid application with the earliest date of priority or filing date among the applications that satisfy all the requirements.
  • Filing fees:
  • Filed in paper form without digital database of the whole content of the application: 180 thousand VND.
  • Filed in paper form with digital database of the whole content of the application: 150 thousand VND.
  • Filed online: 100 thousand VND.

Step 2: Examination:

  • The application shall be examined within 1 month from the filing date (Article 119).
  • Formal Examination: Article 109:
  • To verify the formal validity of the application, an examination process shall be conducted.
  • Substantive Examination: Article 119:
  • 6 months from the date of publication of the application. If a request for substantive examination is filed before the date of application publication, or from the date of receipt of a request for substantive examination if such request is filed after the date of application publication
  • Invalidity in the following circumstances:
  • The applicant does not fulfil the requirements of formality;
  • The subject matter of the application is not eligible for protection;
  • The applicant does not have the right to registration;
  • The application was filed in contrary to the mode of filing;
  • The applicant fails to pay the fees and charges.

Step 3: Acceptance/ Refusal:

  • The application for registration may be accepted with or without amendments.
  • Until the notice of refusal by the State administrative authority, the applicant shall have the following rights:
  • To make amendment or supplement to the application;
  • To divide the application;
  • To request for recording changes in name or address of the applicant;
  • To request for recording changes in the applicant as a result of assignment under the contract, as a result of inheritance, bequest, or under a decision of an authority;
  • Any amendment or supplement to an industrial property registration application must not expand the scope of the subject matter disclosed or specified in the application and must not change the substance of the subject matter claimed for registration in the application and shall ensure the unity of the application.
  • Fee for amending applications, including for request of supplement, separation, assignment, change (per each amendment/ application): 120 thousand VND.
  • Refusal: Article 117:

Refusal to register an application may be on the following grounds:

  • The subject matter claimed in the application does not fulfil the protection requirements;
  • The application satisfies all the conditions for the issue of a protection title but is not the application with the earliest filing date or priority date as in the case referred to in Article 90.1 of this Law.
  • The application falls within the cases referred to in Article 90.1 of this Law but a consensus of all the applicants is not reached.
  • The State administrative authority shall serve a notice of an intended refusal to grant a Protection Title, in which the reasons are clearly stated with a set time limit for the applicant to oppose to such intended refusal.
  • The State administrative authority shall serve a notice of the refusal to grant a Protection Title if the applicant has no objection or has unjustifiable objection to such intended refusal.

Step 4: Publication:

  • Article 110: An industrial property registration application which has been accepted as being valid by the State administrative authority shall be published in the Industrial Property Official Gazette.
  • An industrial design registration application shall be published within 2 months as from the filing date or the priority date, as applicable, or at an earlier time at the request of the applicant.
  • Principal information on a layout-design registration application and the protection title for a layout design shall be published within 2 months as from the grant date of such protection title.
  • Fee for publication of application, including application for amendment, supplement, separation, assignment (each application): 120 thousand VND.
  • The application for registration shall be examined as to its substance within 6 months from the date of its publication.
  • Charge for substantive examination of application (for each alternative) – without information searching charge: 300 thousand VND.
  • Additional charge for internationally classifying of industrial design (each class: 100 thousand VND.

Step 5: Protection Title:

  • Article 93 stipulates the validity of the protection titles:
  • It is valid throughout the territory of Vietnam.
  • The registration of Designs shall be valid up to 5 years from the date of filing. Their validity commences on the date of grant of protection. It may be renewed for two consecutive terms of 5 years each.
  • Certificates of registered semiconductor integrated circuit layout-designs shall each have a validity starting from the grant date and expiring at the earliest date among the following:
  • The end of 10 years after the filing date.
  • The end of 10 years after the date the layout-designs were first commercially exploited anywhere in the world by persons having the registration right or their licensees.
  • The end of 15 years after the date of creation of the layout-designs.
  • Rights accruing after registration: Article 122 and 123:
  • Moral Rights:
  • To be named as authors in industrial designs or layout designs.
  • To be acknowledged as authors in documents in which industrial designs or layout designs are published or introduced.
  • Economic rights:
  • Owners of industrial designs or layout designs are obliged to pay remuneration to their authors, unless otherwise agreed by the parties.
  • Minimum level of remuneration:
  • 10% of the profit amount gained from the use of industrial designs or layout designs.
  • 15% of the total amount received by the owner in each payment for licensing of an industrial design or layout design.
  • To use or permit others to use the industrial property object in accordance with Article 124 and Chapter X of the law (Transfer of rights: Assignment and Licensing):
  • Use of an industrial design means the performance of the following acts:
  • Manufacturing products with appearance embodying the protected industrial design.
  • Circulating, advertising, offering and stocking for circulation products mentioned
  • Importing products mentioned a
  • Use of a layout-design means the performance of the following acts:
  • Reproducing the layout-design; manufacturing semi-conductor integrated circuits under the protected layout-design.
  • Selling, leasing, advertising, offering or stocking copies of the protected layout-design, semiconductor integrated circuits manufactured under the protected layout-design or articles containing such semi-conductor integrated
  • Importing copies of the protected layout-design, semi-conductor integrated circuits manufactured under the protected layout-design or articles containing such semi-conductor integrated circuits.
  • To prohibit others from using the industrial property object in accordance with Article 125 (Right to prohibit others from using industrial property objects).
  • To dispose of the industrial property object in accordance with Chapter X of this Law (Transfer of rights: Assignment and Licensing).

Khurana & Khurana expands footprint in South East Asia

With business models over the world turning more idea-driven, Intellectual Property Rights (IPRs) are now one of the most valuable assets for any economy. With a significant increase in IPR related activities, South East Asia is developing as a key market for IP Protection and initiating Enforcement actions. Khurana & Khurana, Advocates and IP Attorneys (K&K) one of the leading IP and Commercial law firms in India is committed to provide high quality consistent End-to-End Legal Services in IP and Corporate Legal Matters, and with a belief that success comes only when one has a long-term perspective and high level of client orientation, we are expanding our footprints in South Asian countries (Bangladesh, Vietnam, Myanmar, Nepal) with our strong associations with an objective of being a single-point of contact for IP Prosecution Matters in South-East Asia.

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About K&K

Khurana & Khurana, Advocates and IP Attorneys (K&K) is more than a full-service Intellectual Property and Commercial Law firm.  K&K was formed with a very firm focus on providing end-to-end IP Prosecution/ Litigation and Commercial Law services in a manner that is Corporate Centric and follows stringent delivery practices that are consistent and are above-defined quality standards. K&K works closely with its sister concern IIPRD, both of which supplement each other in order to provide end-to-end IP Legal, Offshored IP Support, and Commercialization/Licensing services to over 3000 Corporates.

Our team of over 95 professionals spread across 6 Offices in India having high level of technical and legal competence, gives us the right competitive edge and positioning, as a law firm focused on creating immense IP value for our clients. K&K, through its experienced and qualified team of Attorneys/Practitioners, across Technology and Legal Domains, gives a rare synergy of legal opinion, out-of-box thinking for the protection of ideas/IP’s and entrepreneurial spirits to its client base. K&K is strongly ranked and recommended by Chambers and Partners, IAM, MIP, Legal 500, Asia IP, among other like agencies, and is an active member of INTA, APAA, AIPLA, LES, and AIPPI.

NEPAL’S IP LAW: AN ENCAPSULATION

Intellectual property law in Nepal is comparatively new and it enjoys the extension provided for under the TRIPS agreement to the least developed country. The Patents, Designs and Trademarks are protected under one head, and the governing act/ legislation is known as “The Patent, Design and Trade Mark Act, 2022 (1965)” (hereinafter referred to as “Act”).

Trademarks

Section 2: Definitions: Unless the subject or the context otherwise requires in this Act:

“Trade-mark” means word, symbol, or picture or a combination thereof to be used by any firm, company or individual in its products or services to distinguish them with the product or services of others.

FILING PROCEDURE:

Step 1: Filing

  • Who may apply: Section 17:
  • Any person desirous to register the trademark of his business shall submit an application to the Department in the format specified in Schedule 1(C).
  • Document: Four specimens of the Trade Mark sought to be registered.
  • Fees: NPR 2000.

Trademark Application in Nepal can be filed in a single class only. Mutli-class Application cannot be filed.

Step 2: Investigation:

  • Section 18: When an application is received by the department, it conducts necessary investigation/examination and provides an opportunity of being heard to the applicant in case of any concerns/objections.
  • Examination is done with regard to distinctiveness, possibility of distinctiveness and conflicting trademarks.

Step 3: Grant/ Refusal:

  • If the department is satisfied with the application for registration, it shall register the trademark in the name of the applicant and grant him a certificate. Registration fees: NPR 5000.
  • It may conduct further inquiry/ investigation.
  • The mark shall not be registered/ registration is liable to be cancelled when the subject mark:
  • Hurt the prestige of individual/ institution
  • Adversely affect public conduct or morality
  • Undermine the national interest
  • Undermine the reputation of another’s trademark
  • Found to have already been registered in the name of another person.
  • If the registered trademark is not used within 1 year from the date of registration, the department may cancel the registration after conducting necessary inquiries.
  • The term of the registered trademark shall be 7 years from the date of registration.

Step 4: Publication:

  • Section 21A: The department shall publish the trademarks registered under section 18. Such publication is made in the Trademark Journal.
  • Anyone who has any objection to the same shall file a complaint to the department within 3 months from the date of such publication in Trademark Journal.
  • Necessary actions shall be taken by the department after conducting inquiries.

Step 5: Renewal and Cancellation

  • Renewal: Section 23B:
  • A trademark holder needs to renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(F) and the fee is NPR 500 each time.
  • When the time limit of renewal expires, renewal may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A trademark can be renewed indefinitely for a period of 7 years each time after a payment of renewal fee.

 

Patents

Section 2: “Patent” means any useful invention relating to a new method of process or manufacture, operation or transmission of any material or a combination of materials, or that made on the basis of a new theory or formula.

FILING PROCEDURE:

Step 1: Filing:

  • Who may apply: Section 3 and 4:
  • Any person desirous of having any patent registered in his name shall submit an application to the Department in the format prescribed in Schedule 1(A) containing the following particulars, along with all evidences related to the same in his possession:
  • Name, address and occupation of the inventor (person inventing the patentable subject matter)
  • If the applicant is not the inventor, then information as to how and in what manner has he acquired title thereto from the inventor
  • Process of manufacturing, operating or using the patent
  • If the patent is based on any theory or formula, then the same needs to be mentioned.
  • Maps or drawings, if any.
  • Application fees: NPR 2000

Step 2: Investigation:

  • Section 5: On receipt of an application for registration, the Department shall conduct all investigation or study to ascertain two things:

(a)  Whether the patent claimed in the application is a new invention or not

(b)  Whether it is useful to the general public or not.

 

  • Section 6: The Department shall not register any patent under this Act in the following circumstances:

(a) In case the patent is already registered in the name of any other person, or

(b) In case the applicant him/herself is not the inventor of the patent sought to be so registered nor has acquired rights over it from the original inventor, or

(c) In case the patent sought to be registered is likely to adversely effect the public health, conduct or morality or the national interest, or

(d) In case it is contradictory to the prevailing laws (the registration of the patent) will constitute a contravention of existing Nepal law.

The Examination/Investigation is of two kinds namely;

  1. Formality Examination- It is done to determine whether the application for patent fulfills the requirements of the same.
  2. Substantive Examination- It is done to determine the patentability of the invention, whether;

–  The claimed product/process is patentable or not.

–  The claimed invention is new i.e passes the test of Novelty.

–  The claimed invention is capable of Industrial Application.

– The invention involves a ‘innovative step’

Step 3: Grant/ Refusal:

  • If the Department is satisfied with the findings under Section 5, it shall register the patent in the name of the applicant.
  • In case, the Application does not fulfill the statutory requirements, a notice to the applicant is sent regarding the Rejection of Application.
  • Section 7: Issue of registration certificate:
  • When the registration of the patent is granted, the Department shall issue a certificate of registration in the name of the applicant in the format prescribed in Schedule 2(A).
  • The fee for the same is NPR 10,000.
  • Section 8: The term of the patent granted shall be 7 years from the date of registration.

Grounds of refusal/ cancellation of registration: Section 6:

  • The patent is already registered in the name of other person
  • The applicant is not the inventor of the subject matter of the patent and has not acquired rights over it from the original inventor
  • The patent sought adversely affects public health, conduct or morality, or national interest
  • The patent sought is contradictory to existing Nepalese laws.
  • The applicant will be provided a reasonable opportunity of being heard before the department cancels the registration of the patent.

Step 4: Publication:

  • Section 7A: All patents registered under the Act, except those that are kept secret in the national interest, shall be published in the Nepalese Gazette by the department.
  • In case of objections, the complaint may be filed within 35 days from the date of seeing or copying the Patent, and thereafter, the Department shall conduct necessary inquiries and take further action. The fee for complaints and objections is NPR 1000.
  • In case anyone wants to see or copy the particulars, maps or drawings of a patent, he can do so by paying the prescribed fee of NPR 750.

Step 5: Renewal

  • Section 23B: Renewal:
  • A patent holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(D) and the fee for
  1. First time: NPR 5000
  2. Second time: NPR 7500.
  • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A patent can only be renewed twice for a period of 7 years at a time.

 

FILING CONVENTION PATENT APPLICATIONS IN NEPAL:

Nepal being party to Paris Convention since June 2001, an applicant desirous of filing patent application in Nepal claiming priority from one or more convention countries based on same invention may file such application within 12 months from the date of earliest priority. Pertinently, Nepal is not a member of PCT (Patent Cooperation Treaty).

 

Designs

Section 2:

“Design” means the form or shape of any material manufactured in any manner.

FILING PROCEDURE:

Step 1: Filing:

  • Who may apply: Section 12 and 13:
  • A person desirous to register the design of any article manufactured or caused to be manufactured, shall submit an application in the format specified in Schedule 1 (B) to the Department.
  • The applicant shall also furnish four copies of such design and maps, and drawings and particulars thereof.
  • Fees: NPR 1000.

Step 2: Examination

This involves “Formality check” and “Substanstive check” –

  1. Formality Check- An application is submitted to check if the statutory formalities and procedural requirements are fulfilled.
  2. Substantive Check- After the formality check, a substantive examination is carried out, weather ;

–  There is existence of a prior application or registration of the same.

–  Such design will hurt the prestige or interest of an individual or institution or conduct of public or morality of undermines national interest.

If either of the above mentioned points are

Step 3: Grant/ Refusal:

  • Section 14: On receipt of the application filed by any person under Section 13, the Department shall register the design in the applicant’s name and issue a certificate of registration in the format specified in Schedule 2(A). i.e If it has passed the stage of Examination.
  • In case, the Application is rejected, a Notice of Rejection is sent to the Applicant.
  • Registration fees: NPR 7000.
  • The term of a registered design is five years from the date of registration.
  • Renewal: Section 23B:
  • A design holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(E) and the fee for
  1. First time: NPR 1000
  2. Second time: NPR 2000.
  • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A design can only be renewed twice for a period of 5 years at a time.

Step 4: Publication:

  • Section 21A: The department shall publish the designs registered under section 14, along with their particulars of renewal or cancellation.
  • Anyone who has any objection to the same need to file a complaint to the department within 35 days from the date of such publication.
  • Post receiving the complaint, Department takes necessary actions after conducting inquiries.

Step 5: Renewal/ Cancellation

Grounds of refusal/ cancellation: Design is liable to be refused or cancelled, if the design or design registration, as the case may be:

  • Hurt the prestige of individual/ institution
  • Adversely affect public conduct or morality
  • Undermine the national interest
  • Found to have already been registered in the name of another person.
  • The design holder will also get an opportunity to show cause as to why his registration must not be cancelled.

Simplified account of Design Registration in India

This article is intended with covering the basic FAQs about Design registration in India. For the sake of better focusing, format of questions and answers has been adopted.

Industrial Designs are protected by different laws in different countries, i.e. some countries choose to go for Patent Registration and some go for specialized systems. Unlike USA which has chosen to protect the designs through Patents, India has chosen a sui generis system. In India, Design registration is covered under The Designs Act, 2000.

In India, functionality is protected under Patents and not Industrial Designs which are meant to protect external ornamental or aesthetic appearance such as patterns, colour, lines, shape or surface of the article.

  1. What is Design under the Design Act, 2000?

Section 2 (d) deals with this.

Design means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof 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 or construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.

  1. What is Article under Design Act, 2000?

Section 2 (a) deals with this.

Article means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately”

  1. What are the benefits of Design Registration?

Registered Proprietor has the exclusive right to apply a registered design to the article in the class in which Design is registered. Rights obtained by Design Registration can be licensed and/or assigned. In case of infringement, damages can be claimed by the registered Proprietor.

  1. Who may apply for Design Registration?

Any person claiming to be the proprietor of any new or original design may apply for registration. A proprietor may be from India or from a Convention Country.

A proprietor may be:

  1. an author of design,
  2. a person who has acquired the design,
  3. a person for whom the design has been developed by the author, or
  4. a person on whom the design has devolved.

The application for registration of design can be filed by the applicant himself or through a professional person (i.e. patent agent, legal practitioner). However, for the applicants not residing in India, address of an agent residing in India can be used as address for service.

  1. Where to apply for Design Registration?

Applications can be filed in either the Design Office in Kolkata or the branch offices of the Patent office in Delhi, Mumbai or Chennai. For e-filing, FAQs available at https://ipindiaonline.gov.in/eDesign1/faqs/index.html can be referred.

  1. Is it necessary to have prototype article before applying for Design Registration?

No, it’s not mandatory to have prototype. However, Design must be capable of being applied to article by an Industrial Process.

  1. What is the correct time to apply for Design Registration?

Application for Design Registration must be filed before making the design available to the Public as not novel Design cannot be given registration. It is also to be noted that Design Registration is granted to whoever files the application first.

 

  1. What are the types of Applications?
  2. Ordinary application: An ordinary application does not claim priority.
  3. Reciprocity application: In case priority of foreign application is to be claimed, it has to be done within six months of filing foreign application. Such applications being filed in India are termed as reciprocal applications. This period of six months is not extendable.
  4. What is considered to be Date of Registration in Designs?

In case of ordinary applications, the date of making the application for registration is the date of registration of the Design.

In case of reciprocal applications, the date of filing the application in the convention country is the date of registration of the Design.

  1. Is there any period of pre-grant opposition for Design registration in India?

No

  1. What is time allowed for putting application in condition of grant?

In a Substantive examination, objections may be raised based on whether criteria of something being called as design as set out by definition is met or not, is Design new/original or not, is Design prejudicial to public order or morality, and is Design prejudicial to the security of India. The period allowed for removal of objections can not exceed six months from the date of filing of the application. However,   said   period   of   six   months   can   be extended  for  a  further  period  not  exceeding  three months  provided  a  request  in  Form-18  is  filed  before the expiry of initial six months. On consideration  of  response  of  the  applicant, if  the Controller  is of  opinion  that  the requirements  of Act and Rules have   not   been   met, the   fact is communicated to the applicant clearly mentioning that the application is liable to be refused for reasons to be detailed and fixing a date for hearing. If the applicant fails to appear for the hearing without any request for adjournment, the application is refused. If written submissions are filed, while the opportunity to  be  heard  is  not  availed  by  the  applicant,  no  further opportunity  to be  heard is  provided  and  the matter   is   decided   based on   the  written submissions. If the applicant complies with all the requirements laid down  under  the  Act  and  Rules,  communicated  in  the form  of  statement  of  objections,  the  application  shall be registered forthwith.

  1. How to know whether any registration already exists?

Two different forms have to be used in two different situations.

When the registration number is known:

Request can be made by any person in form 6 along with the fees and mentioning registration number of the design for which information is required.

When the registration number is not known:

Request can be made by any person in form 7 along with information in his possession. Based on such information, controller causes search to be made in class indicated therein as much as possible. Where Form 7 is accompanied by a representation or specimen of the design, such representation or specimen is to be furnished in duplicate.

  1. What are the criteria for Design Registration?

A design should:

Be new or original registration

Not been disclosed to the public anywhere by publication in tangible from or by use or in any other way prior to the filling date, or where applicable, the priority date of the application for registration.

Be significantly distinguishable from known designs or combination of known designs.

Not comprise or contain scandalous or obscene matter.

Not be a mere mechanical contrivance.

Be applied to an article and should appeal to the eye.

Not be contrary to public order or morality.

Not be prejudicial to the security of India

  1. What is the term of Protection if Design is registered?

The copyright in a registered design may be extended by a period of five years, from the  expiration  of original period of ten years. An  application  for  extension  of  copyright  shall  be filed before  the  expiry  of  the  original  period  of  ten years. A registration of design ceases to be effective on non-payment of extension fee. However, lapsed designs may be restored provided application for restoration in Form-4 with prescribed fees is filed within one year from the date of lapse stating the ground for such non-payment of extension fee with sufficient reasons. If the application for restoration is allowed the proprietor is required to pay the prescribed extension fee and requisite additional fee and finally the lapsed registration is restored.

  1. Is it possible to renew the term of the Design Registration?

No, there is no provision for renewing the term of the Design registration once a period of 15 years is over.

  1. Is Cancellation of registered Design Possible?

The registration of a design may be cancelled at any time after the registration of design.

Petition for cancellation has to be made in form 8

Following grounds can be used for the same:

    That the design has been previously registered in India or

    That it has been published in India or elsewhere prior to date of registration or

    The design is not new or original or

    Design is not registrable or

    It is not a design under Clause (d) of Section 2.

  1. Can the Refusal of Design Registration be appealed?

Yes, the jurisdiction lies with High Court.

  1. Are the abandoned applications published? Can same applicant apply for registration of same Design again?

Abandoned applications are not published by the Design Office. Another application can be made for the same design if Applicant has himself not made the Design available to the public.

  1. What are the remedies available in case of piracy of Registered Design?

In case of piracy of registered Design, a suit for injunction and/or recovery of damages may be instituted against the accused in any court not below the court of District Judge.

Section 22 of the Design Act 2000 provides the legal proceedings to be followed in case of Piracy of Registered Design.

One of the below remedies can be sought against the accused:

  • Paying to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt provided that the total sum recoverable  in  respect  of  any one design shall not exceed fifty thousand rupees; and
  • Recovery of damages for any such contravention, and an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly

References:

http://www.ipindia.nic.in/faq-designs.htm

http://www.ipindia.nic.in/writereaddata/images/pdf/ten-steps-to-design-application.pdf

http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_30_1_manual-designs-practice-and-procedure.pdf

Era of Start-Ups in India-ease in Intellectual Property Registration to be Decisive Factor

There have been many developments recently that have streamlined the process of registration of Intellectual Properties (IPs) of Start-Ups. This article discusses the chronological events and the latest position on the IP registration of Start-Ups. Under the ambitious plan, ‘StartUp India, StandUp India’, Government of India launched Scheme for Facilitating Start-Ups Intellectual Property Protection (SIPP). This move was taken primarily to facilitate registration of Patents, Designs and Trademarks for Start-Ups. This scheme attracted attention of most of the Start-Ups as scheme requires them to borne only statutory/ official fees for registration of IPs and registration of their IPs is to be handled by government appointed facilitators. Professional fees payable to facilitators is to be paid by Government and not by Start-Ups.

On March 03, 2016, IPO released forms for appointment of facilitators for patents and trademarks.

On April 22, 2016, IPO notified the scheme, application information, patent facilitators, and trademark facilitators. And on May 16, 2016, IPO notified about Patent (Amendment) rules coming into effect from May 16, 2016.

One can refer to Department of Industrial Policy and Promotion’s (DIPP) Frequently Asked Questions (FAQ’s) to understand how Start-Ups can avail the benefits of the schemes of Government of India. These frequently asked questions are related to Start-Ups, Incubators providing Recommendation/ Support/ Endorsement Letter to Start-Ups, and funding Bodies providing Recommendation/ Support/ Endorsement Letter to Start-Ups. Qualification to be defined as Start-Up, how to get benefits of various government schemes, timelines, procedure, documentation required for registration as Start-Up, who can be incubator, how to issue recommendation/ support/ endorsement letter, liabilities of incubator, what are funding bodies, liabilities of funding bodies are some of the example of questions dealt in the list of FAQs. Reader of this article is encouraged to go through the entire list of FAQs to understand the nitty-gritty regarding of the registration of entity as Start-Up.

Amended patent rules give definition of Start-Ups and amazingly apply same fees to Start-Ups as applicable to natural persons. Another big advantage given to Start-Ups is that they are eligible to apply for expedited examination as against normal examination of patent applications.

Definition of startups is given as below:

Startup‖ means an entity, where-

(i) more than five years have not lapsed from the date of its incorporation or registration;

(ii) the turnover for any of the financial years, out of the aforementioned five years, did not exceed

rupees twenty-five crores; and

(iii) it is working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property:…

  1. Fees applicable to Start-Ups:

It is important to note that if an applicant is start-Up at the time of filing of patent application but ceases to be so afterwards, it will not have to pay the additional fees to patent office. However, in case of transfer of patent application to other than natural person, the person to whom application is being transferred has to pay the difference in fees applicable to Start-Ups and to itself.

  • Patents:

The below table gives overview of important statutory fees that have be paid till the grant of patent.

  • Trademarks:

Till trademark registration, the statutory fees have to be paid only at the time of filing of trademark application. Fees payable at the time of filing of trademark application is INR 4,000.

  • Designs:

There has been no change in fees applicable to design registration so statutory fees have to borne by entity as per the current schedule.  Statutory fee for conducting a standard search for establishing registrability of Design is INR 2,000 for small entity, INR 4,000 for large entity and for design application preparation and filing is INR 2,000 for small entity, INR 4,000 for large entity.

The below table gives the professional fees payable (in INR) to facilitators by Government:

In case of withdrawal or abandonment of application before disposal, facilitator shall be entitled only for filing of application and not for disposal of application.

  1. Eligibility to apply for expedited examination:

Start-Up applicant may request for expedited examination of patent application in form 18A with fees as mentioned in the table. It is important to note that form 18A can only be filed through electronic mode and not physical mode. After filing request for expedited examination, there is  obligation on the controller to dispose off the patent application within three months from the earlier of two dates, first of them being the date of receipt of the last reply to the first statement of objections, and second date being the last date to put application in condition for grant under section 21. This time limit is not applicable in case of pre-grant opposition. The patent office deserves the right to limit the number of requests to be received for expedited examination during the year. It is beyond doubt that because of the difference in the scale of fees applicable to Start-Ups and small entities/ larges entities, advantages of expedited examination over non-expedited examination of patent applications, and appointment of facilitators, Start-Ups are feeling motivated to get their IPs registered.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

 

Deciphering the Intricacies Related to Protection of Graphical User Interface in India

Mahima Sharma, an intern at Khurana & Khurana looks into the intricacies involved in the process of protection of Graphical User Interface in India which seems to be in limelight wherein there exists some uncertainty over the same.

GUI Protection under Designs Act, 2000:

In India, a Design registration can be obtained for new or original features of shape, configuration pattern, ornamentation or composition of lines or colors as applied to an article, whether in 2 or 3 dimensions or both.

India enacted the New Design Act, 2000 to protect the rights and designs of creators and innovators in compliance with TRIPS. The new Design Act which replaced the preceding Design Act, 1911 has widened the scope of classification system as an earlier act was based on the material categorization of the article whereas the new act provided an elaborate classification adopted in 2008 based on Locarno Classification System which deals with the subject matter for particular design to be registered according to the respective classes, for instance: Class 2 deals with article of Clothing, Class 14 deals with Recording, Communication or Information Retrieval Equipments. While India not being signatory to Locarno Agreement, its new design classification system is a prototype of the Locarno classification system includes Class 14-04 titled “Screen Displays and Icons”. This new classification acknowledges visual images, graphical user interfaces or Icons shown on an image display of a portable electronic device which includes tablet computers and Smartphone and all other electronic gadgets which have an image display to be registrable under Design Law. Through the records as maintained and reflected on the IPO website for Design Registration, it has been observed that icons as such have usually been registered under Class 14-99, titled “Miscellaneous” and not in class 14-04 while none of GUI is registered under class 14-04.

A Questionnaire dealing with the Design Registration in India titled “SPECIAL TOPICS for Design Committee of APAA 2013” deals with certain aspects related to GUI Protection in India under Designs Act, 2000. In the same article it was explicitly mentioned at Question 3-2:

What matters should an applicant/attorney be aware of when preparing or drafting an application request and drawings of a design for a visual image, graphical user interface (GUI) or icon shown on an image display of a tablet computer and a smartphone to be submitted at your national Office under your Design Law?

“Under Section 6 of the Act, a design may be registered in respect of any or all the articles comprised in a prescribed class of article. Under Section 2(a) “article” means any article of manufacture or any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.

In the circumstances, the Applicant/Attorney must ascertain that visual image, GUI or icon shown on an image display of a tablet computer or smartphone must be an article capable of being made and sold separately. Alternatively, an application for registration of a design can be made in respect of a tablet computer or a smartphone bearing the visual image GUI or Icon shown on an image display thereof. In such a case the application and each of the representation should be endorsed with a brief statement that novelty resides in the visual image, GUI or icon shown on an image display of a tablet computer or a smartphone as the case may be (Rule 12).”[1]

Instances of Attempt to protect GUI under Designs Act, 2000[2]:

There are certain incidents where certain designs and icons have been registered under Design Act, 2000 vide application no. 205350 under class 14-99. However, regarding GUI there was one incident known from the past wherein Amazon filed for Design Registration for GUI in India, but the same was refused by the Patent Office on the ground that impugned design does not fall within the purview of definition as provided under section 2(a) and 2(d) of the Design Act, 2000.[3] After the verdict of Amazon’s case, the Patent office has started considering stringent interpretation of the definition of the word “article‟ in the Act and it can be concluded that no screen display could be registered.

GUI as a subject matter under Copyright Act, 1957..?

Artistic work, literary, dramatic, musical or sound recording, source code for software among others are subject matter of Copyright. GUI as a subject matter also seems to be governed and protected under Indian Copyright Act, 1957 to some extent.[4]  As such there are no specific guidelines as to armor GUI in India. This led to an anomalous situation particularly in view of section 15 of the Copyright Act which specifically states that “Copyright in any design, which is capable of being registered under the Designs Act, 2000, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his license, by any other person.” So if at all GUI is a subject matter under Designs Act as prima facie it seems from the newly adopted classification based on Locarno Classification, the Copyright in the same will cease immediately after application of the same more than 50 times to any article.

It is clear from above that there are a few occurrences, where certain icons have been registered under Design Act, 2000 under class 14-99 while GUI is considered as subject matter under Copyright. Thus fundamentally, there is an earnest call to amend our current Design law to an extent which shall make GUI as a subject matter of Designs Act, 2000, also to bring uniformity in protection of Intellectual Property at International level. It is pertinent to note that Design Act, 2000 provides for any applicant, who has applied for protection of the design in convention countries or countries which are members of inter-governmental organizations, can claim registration of the design citing a priority date in India. This is the date of filing of the application in any of such countries provided the application is made in India within six months. Thus accordingly the fate of any application from Convention country filed in India for GUI protection is at stake which is not desirable particularly in the era of commercialization and globalization and ‘Make in India’ regime. This in fact may discourage the growth of software/GUI domain in India which is not desirable.

To cut a long story short, it is high time that legislature step in and revise the definitions of article and design in the Act to make way for the new age communication devices and their embedded applications-design eligible, the status of protection of GUI under Designs Act seems ambiguous. It is indeed need of the hour that our laws need to be timely updated and such amendments shall also be in total consonance with the complete law in that regards, especially law related to the Intellectual Property Rights.

About the Author: Mahima Sharma, Intern, Khurana & Khurana, Advocates and IP Attorneys and Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys who can be reached at Abhijeet@khuranaandkhurana.com

[1] http://www.apaaonline.org/pdf/APAA_62nd_council_meeting/DesignsCommitteeReports2013/India-Questionnaire-2013.pdf accessed on 16-May-2016

[2]   http://www.lexology.com/library/detail.aspx?g=1af5cff8-3f1a-42ac-81f1-269a4c949d07 accessed on 16-May-2016

[3] An article published by Ranjan Narula & Sandeep Agarwal of RNA,IP Attorneys –     http://www.lexology.com/library/detail.aspx?g=1af5cff8-3f1a-42ac-81f1-269a4c949d07 accessed on 16-May-2016

[4] http://deity.gov.in/content/copyright-0 as accessed on 16-May-2016