Industrial Designs and Trademarks Presentation

IPR

1. Emerging TRENDS IN
DESIGN AND TRADEMARKS
Presented By:
Jaya Bhatnagar
Founder and Chairperson
©Copyright SiebenIP. All rights reserved .

2. Contents
IPR –In brief
Patents
Designs- Scope ,Protection and Enforcement
Overlaps- Designs vs. Copyright
Trademark- Scope ,Protection and Enforcement
ENFORCEMENT- CONCERNS AND CASE LAWS

3. IPR PROTECTIONSIPR PROTECTIONS
Functional /
utilitarian
Patents
Act, 1970
Purely
artistic works
Copyright
Act, 1957
Designs with
eye-appeal & capable of
Industrial application
Designs
Act, 2000
BRAND NAME
Trademark
Act, 1999

4. Multiple IP Rights

5. Intellectual Property prior to TRIPS
Agreement

6. Intellectual Property post TRIPS

7. PATENTS

8. Criteria for Patentability

9. Definition of “New Invention”
Section 2(l) “New invention” means any invention or technology
which has not been anticipated by publication in any document or
used in the country or elsewhere in the world before the date of
filing of patent application with complete specification, i.e., the
subject matter has not fallen in public domain or that it does not
form part of the state of the art. (Absolute novelty)
Absolute novelty
Not used anywhere
Not published anywhere

10. Term of the Patent
The term of every patent granted after the commencement of the
Act will be 20 years from the date of filing.
In case of International applications, the filing date is considered to
the international filing date accorded by the Patent Cooperation
Treaty.
The term of patents which are in force on 20th May 2003 will
automatically be extended up to 20 years provided the renewal fees
are paid on due dates.

11. EYE-APPEALING DESIGNS
AND SAFEGUARD YOUR ASSET

12. JEWELLERY DESIGNS

13. Decorative Surface Pattern Can
Add value to a Product

14. Surface Pattern (2D)
Shape of the garment (3D)
Surface pattern
on a Saree
Surface pattern on
a Saree
TEXTILE FABRIC & GARMENT

15. Criteria for Registration
New,
Original,
Not known in India and anywhere in
the world prior to the date of filing,
Not published in tangible form,
Disclosure- not amounting to
publication:
a. Disclosure by proprietor in good faith
b. Six months grace period from display
in an exhibition.

16. Section 2(d)
Design relates to-
Features of shape, configuration, pattern,
ornament or compositions of lines or colors
applied to any article,
2-dimension or 3-dimension,or in both forms
by any Industrial process or means, whether
manual, mechanical or chemical, separate or
combined.
Does not include any trademark

17. Why Register Your Design
•Statutory Right- accrues only on registration–
territorial
•Monopoly Period for 10 years –extendable by 5
•Right to prevent others from, producing ,importing
selling products having an identical appearance.
•An asset to commercialize through licensing,
assignments or any other made operational by law.

18. ENFORCEMENT
•Identical Design or any fraudulent and obvious
imitation
•Import for Sale
•Publishing or exposing the article which is
know to be pirated
•Injunction and Damages

19. Infringement occurs when there is a likelihood of confusion
with regard to similar shape, configuration and surface
pattern or appearance of any articles having similar nature
and purpose.
Infringement of designs

20. What to do when licensing a design
-A registered design can be licensed to exploit
markets or commercialize.
-Determine IP value of your registered Design
-Draw up License Agreement considering
term
territory
amount of royalty and
type of products

21. „
Copyright/ Design OVERLAP
A very thin line to differentiate Design and
Copyright.
Design protects the novel features those
are applied to an article and is visible to the
naked eye.
Copyright protects literary , artistic
dramatic and musical works.

22. •Copyright does not subsist in design
registered under the Designs Act.
•Design capable of being registered under
Design Act, and has not been so registered -
copyright shall cease as soon as any article to
which the design has been applied is
produced more than FIFTY TIMES by an
industrial process
Section 15(2)

23. DESIGN
Complete monopoly
Registration to claim
protection
Novelty and originality
15 years
Only in respect of
articles manufactured
by an Industrial
process
COPYRIGHT
Only protects against
copying
Automatic protection
No novelty
requirement
Life of author + 60
years
Is not goods specific

24. TRADEMARK

25. What is a TradeMark?
A trademark is denoted by a word,
phrase, symbol, or design, or a
combination of these that identifies
and distinguishes the source of
goods of one party from those of
others.

26. TRADEMARKS
Indicate a connection
between the goods /
services and some
person having the right
as proprietor to use
the mark.
Can be graphically
depicted and signify
the origin of goods.

27. Major Jewelry Brands
TanishQ
Most popular jewellery brands in India.
Nakshatra
Nakshatra symbolizes and reflects the constellation.
nirvana
One of the best fashion jewellery brands in India
De Beers
One of the finest diamond rings
 

28. differentiate products and services from its
competitors by creating a bond with its customers.

It aims to take a position in the marketplace and
create customer loyalty.
It is the way by which companies launch and sell
goods & services, communicating the essence of
new products and lines, highlighting why it is great
and better than all competing products
WHY BRANDS?

29. OVERVIEW OF Registration
Application may be filed based on use or Intention to use
Retrospective from date of application
Registration date = Application date
Validity 10 years
63 months of non use leads to CANCELLATION

30. Contd..
Classes 1 to 34 – goods
Classes 35 to 42 - services
Trademark Offices – Delhi, Mumbai, Chennai,
Kolkata, Ahmedabad
Jurisdiction: Place of business of applicant
For all times same jurisdiction even if counsel
changed
Opposition would be prosecuted at the same
jurisdiction
Grants and renewals at the same jurisdiction
Rectification at the same jurisdiction

31. Trademark Infringement
Trademark infringement mostly occurs when a person uses a
trademark which may be either a symbol or a design, with
resembles to the products owned by the other party.
Offences shall be punishable with imprisonment for a term of
minimum of six months but which may extend to three years
and with a minimum fine of fifty thousand rupees but which
may extend to two lakh rupees or more.
For adequate and special reasons mentioned in the
judgement, the court may impose a sentence of
imprisonment for a term of less than six months or a fine of
less than fifty thousand rupees

32. DESIGN CASE LAWS

33. Conclusion

34. Troikaa Pharmaceuticals
vs.
Pro Laboratories
Plaintiff was manufacturing ‘D’ shaped tablet and
had the design registered, and sued defendants for
the infringement of design of tablets.
Defendant filed the cancellation of design on the
ground of lack in novelty as the alphabet ‘D’ was in
common use in English language.
Gujarat High Court decided the case in the favour of
plaintiffs as the application of alphabet ‘D’ was
novel, and so the court granted an interlocutory
injunction in favor of plaintiffs.

35. TRADEMARK CASE
LAWS

36. Case example
Cosmos Jewelry, Ltd. v. Po Sun Hon Co. (July 2008):
Makers of the federally registered Tropical Memories
Plumeria flower jewelry, inspired by Hawaii's plumeria
flower blossoms sued D for trade dress infringement
for selling similar jewelry designs
Outcome: P was awarded $2.3 million in damages,
attorney's fees and a permanent injunction.
Rationale: The D was aware of the strength of P's
trade dress and designed and marketed his plumeria
jewelry to capitalize on this strength in a high-demand
market.
However, P could not be afforded copyright protection
for its representation of the plumeria flowers because
all of the features of the flowers such as their five
slightly overlapping petals occur frequently in natural
plumeria flowers.

37. APPEAL DISMISSED
US Supreme Court on 29
th
 
November, 2010
dismissed the appeal of Tiffany & Co. in a dispute
over eBay’s liability for trademark infringement
 
Tiffany instituted a suit against eBay in 2004 before
the U.S. District Court .
Appeal rejected

38. What you can do ?
Develop an IPR strategy
IP rights are territorial. You need to register your
innovation/creativity in every market where you do or may
do business.
Be proactive
Think of where you want to be five or ten years down the road,
and take steps to protect potential markets as well as
current markets.

39. What we can do?

Use licensing agreements
and make sure you register these with the appropriate
IPR authorities as required under Indian law.
-Most importantly, get sound legal advice in time
and get it early on. Intellectual property law is a
complicated area, and every country system is unique.

40. Any Questions?
[email protected]
[phone]