2.3.14.

Famous Case Law:

Coca-Cola Company vs. Bisleri International Pvt. Ltd.
‗MAAZA‘, a popular mango fruit drink in India, is a registered
Trademark of an Indian company, Bisleri International Pvt. Ltd.
The company transferred the rights (formulation, IPR and goodwill,
etc.) to a beverage company, Coca-Cola, for the Indian Territory.
However, in 2008, the Bisleri Company applied for registration of
Trademark ‗Maaza‘ in Turkey and started exporting the product
with the mark ‗MAAZA‘. This was unacceptable to the Coca-Cola
Company and thus filed a petition for permanent injunction and
damages for passing-off and infringement of the Trademark.
It was argued on behalf of Plaintiff (Coca-Cola Company) that
as the mark ‗Maaza‘ concerning the Indian market was assigned to
Coca-Cola, and manufacture of the product with such mark, whether
for sale in India or for export, would be considered as an
infringement. After hearing both the parties, the court finally
granted an interim injunction against the defendant (Bisleri) from
using the Trademark MAAZA in India as well as for the export
market, which was held to be an infringement of Trademark.
2.4. Industrial Designs
The word ‗Design‘ is defined as the features of shape,
configuration, pattern, ornament or composition of lines or colours
applied to any article. The Design may be of any dimension i.e. one
or two or three dimensional or a combination of these. In addition, it
may be created by any industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the finished
article appeal to and is judged solely by the eye. But the word
‗Design‘ does not include any mode or principle of construction or
anything which is in substance a merely mechanical device.
The main object of registration of industrial Designs is to
protect and incentivize the original creativity of the originator and
encourage others to work towards the art of creativity.
2.4.1. Eligibility Criteria
The Design for which the protection is being sought must be
novel or original i.e., should not be disclosed to the public by prior

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publication or by prior use or in any other way. The Design should
be significantly distinguishable from the already registered
Designs existing in the public domain.
2.4.2. Acts and Laws to Govern Industrial Designs
In India, Industrial Designs are governed under ‗The Designs
Act‘, 2000 (http://www.ipindia.nic.in/acts-designs.htm) and ‗Design
Rules‘, 2001 (http://www.ipindia.nic.in/rules-designs.htm), which
have been amended from time to time in 2008, 2013, 2014 and
2019. The Design should include the following characteristics:
 It should be novel and original.
 It should be applicable to a functional article.
 It should be visible on a finished article.
 There should be no prior publication or disclosure of the
Design.
A list of Industrial Designs can be accessed from
https://www.creativebloq.com/product-design/examples-industrial-
design-12121488. Some of the famous Industrial Designs are
mentioned below:
Coca-Cola Bottle - The contoured-shaped glass bottle of the Coca-
Cola Company is marvelled as a master showpiece in the field of
industrial design. It was designed in 1915 and is still a cynosure for
all eyes.
Piaggio Vespa - Piaggio is an Italian company famous for
manufacturing Vespa scooters. These scooters are sold worldwide
since 1940s. The structural design of the scooter is pleasing to the
eyes. This two-wheeler has a painted steel body concealing the
engine, driver‘s feet rest comfortably on a flat floorboard, the front
vertical portion comprising of a handle, breaks and speedometer has
ample space for hands‘ grip and also provides protection from
incoming wind air.
iPhone - It is a highly popular mobile phone manufactured by
American company ‗Apple Inc‘. The sleek, handy and rectangular
body is pleasing to the eyes. The corners are round and smooth. The
features, such as on/off and speech volume, are easy to operate.
Mini Cooper - Mini Cooper is an automobile car manufactured by

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the British Motor Corporation in the later part of the 20th century. It
is a small size car. Its shape has been designed in a unique manner
so as to provide plenty of space (nearly 80%) for passenger seating
and luggage storage.
Rocking Wheel Chair - It is a sleek, circular-shaped chair which
provides smooth rocking motion. There is a provision for a
headlight in the upper part of the chair.
Juicy Salif - It is a citrus juice squeezer and considered an iconic
structural design. The alumina-based body has been moulded in the
shape of a fish called as a squid.
2.4.3. Design Rights
The Design registration also confers a monopolistic right to the
Proprietor by which he can legally exclude others from reproducing,
manufacturing, selling, or dealing in the said registered Design
without his prior consent. The Design registration is particularly
useful for entities where the shape of the product has aesthetic value
and the entity wishes to have exclusivity over the said novel and
original Design applied to its product(s) or article(s).
2.4.4. Enforcement of Design Rights
Once the applicant has been conferred with the rights over a
specific Design, he has the right to sue the person (natural/entity) if
the pirated products of his registered design are being used. He can
file the infringement case in the court (not lower than District Court)
in order to stop such exploitation and for claiming any damage to
which the registered proprietor is legally entitled. The court will
ensure first that the Design of the said product is registered under
the Designs Act, 2000. If the Design is found not registered under
the Act, there will not be legal action against the infringer. If the
infringer is found guilty of piracy or infringement, the court can ask
him to pay the damage (₹ 50,000/-) in respect of infringement of
one registered Design.
2.4.5. Non-Protectable Industrial Designs in India
 Any Industrial Design which is against public moral values.
 Industrial Designs including flags, emblems or signs of any
country.

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 Industrial Designs of integrated circuits.
 Any Design describing the ‗process of making of an article‘.
 Industrial Designs of – books, calendars, certificates, forms and
other documents, dressmaking patterns, greeting cards, leaflets,
maps and plan cards, postcards, stamps, medals.
 The artistic work defined under Section 2(c) of the Copyright
Act, 1957 is not a subject matter for registration for Industrial
Designs, such as:
o Paintings, sculptures, drawings including a diagram, map,
chart or plan.
o Photographs and work of architecture.
o Any other work related to artistic craftsmanship.
 Industrial Designs does not include any Trademark (The
Designs Act, 2000).
2.4.6. Protection Term
The outer ‗Shape or Design‘ of a product makes it more
appealing and acts as the value-adding factor to the product.
Therefore, there is a need to protect one‘s creation from being used
by third parties‘ without consent from the original creator. The
registered Designs are protected for 10 years in India and can be
extended by 5 years after making a renewal application.
2.4.7. Procedure for Registration of Industrial Designs
2.4.7.1. Prior Art Search - Before filing an application for
registration of Industrial Designs, it is prudent to ensure that the
same or similar Design has not been registered earlier. This search
can be carried out using various search engines, such as:
 Design Search Utility (CGPDTM)
(https://ipindiaservices.gov.in/designsearch/).
 Global Design Database (WIPO)
(https://www3.wipo.int/designdb/en/index.jsp).
 Hague Express Database (WIPO)
(https://www3.wipo.int/designdb/hague/en/#).
 Design View (EUIPO) (https://www.tmdn.org/tmdsview-
web/welcome#/dsview).

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2.4.7.2. Application for Registration - Once the applicant is
satisfied that his Design is novel and significantly distinguishable
from other Designs, he can proceed with filing an application for
Design registration. The application for registration of Design can
be filed by an individual, small entity, institution, organization and
industry. The application may be filed through a professional patent
agent or legal practitioner. If the applicant is not a resident of India,
an agent residing in India has to be employed for this purpose. The
applicant submits the registration application at the Design Office
Deputy Controller of Patents & Designs, Patent Office, Intellectual
Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-
700091.
After the application has been filed, an officer (examiner)
analyses the application for qualifying the minimum standards laid
down for eligibility criteria for registration. In case of any query, the
same is sent to the applicant and he is supposed to respond within 6
months from the objection raised. Once the objections are removed,
the application is accepted for registration. The particulars of the
application, along with the representation of the article, are
published in the Official Journal of Patent Office
(http://www.ipindia.nic.in/journal-patents.htm). If no objection is
received from the public, the Design is registered. After the
registration of the Design, the applicant becomes the proprietor of
the Design and is conferred with the exclusive right to apply that
Design to the article belonging to the class in which it is registered.
The applicant puts up a request for issuance of a certificate of
registration (for an Industrial Design). A flow chart of the
registration process is mentioned below:

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 Figure 2.10: Flowchart for the process of Design registration.

Source: https://allthingspatent.wordpress.com (slightly modified)

2.4.8. Duration of the Registration of a Design

Initially, the Design registration is valid for ten years from the
date of registration. In the case wherein the priority date has been
claimed, the duration of the registration is counted from the priority
date. The period of registration may be extended further for five
years. An application has to be made in Form-3 accompanied by
prescribed fees to the Controller General before the expiry of the
said initial period of ten years.
2.4.9. Importance of Design Registration
Registration of Design ensures the exclusive rights of the
applicant on the Design. The owner can prevent the registered
Design products from piracy and imitation. This helps the owner to
boost the sale of the products and establish goodwill in the market.

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2.4.10. Cancellation of the Registered Design
The registration of a Design may be cancelled at any time. The
petition has to be filed in Form-8 with prescribed fee to the
Controller of Designs. The application can be made on the
following grounds:
 Design has already been registered.
 Design has been published in India or elsewhere before the date
of registration.
 Design is not novel and original.
 It is not a Design under Clause (d) of Section 2.
2.4.11. Application Forms
There are a total of 24 forms pertaining to Industrial Designs.
A list of important forms is mentioned below.

Table 2.10: List of important form related to Industrial

Designs.
Fee (₹ )
Form
S. No Name of the Form Natural Small Large
No.
Person Entity Entity
Application for
1. Form-1 1,000 2,000 4,000
registration of Design.
Application for the
2. Form-4 1,000 2,000 4,000
Restoration of Design.
Application for
3. Form-3 2,000 4,000 8,000
renewal of Design.
Petition for
cancellation for
4. Form-8 1,500 3,000 6,000
registration of a
Design.
Notice of intended
exhibition or
5. Form-9 500 1,000 2,000
publication of
unregistered Design.

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 Application for entry
of name of proprietor
6. Form-11 500 1,000 2,000
or part proprietor in
the Register.
Request for
7. correction of clerical Form-14 500 1,000 2,000
error.
Request for certified
8. Form-15 500 1,000 2,000
copy.
Application for
9. rectification of Form-17 500 1,000 2,000
Register.
10. Notice of opposition. Form-19 100 200 400
Source: http://www.ipindia.nic.in/designs.htm

2.4.12. Classification of Industrial Designs

Designs are registered in different classes as per the Locarno
Agreement, 1968; https://www.wipo.int/classifications/locarno/loc
pub/en/fr/). It is used to classify goods for the registration of
Industrial Designs as well as for Design searches. The signatory
parties have to indicate these classes in the official documents too.
The classification comprises a list of classes and subclasses with a
list of goods that constitute Industrial Designs. There are 32 classes
and 237 subclasses that can be searched in two languages i.e.
English and French.
For example, Class 1 includes foodstuff for human beings,
foodstuffs for animals and dietetic foods excluding packages
because they are classified under Class 9 (Bottles, Flasks, Pots,
Carboys, Demijohns, and Pressurized Containers). Class 32
classifies the Design of graphic symbols and logos, surface patterns,
ornamentation.
2.4.13. Designs Registration Trend in India
Figure 2.11 represents the statistics for Industrial Designs (filed,
examined and registered) for the period 2010-20. During this period,
an increase of 88%, 117% and 33% was observed in the parameters
of Designs filed, examined and registered, respectively. In all three

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parameters, the graph depicts a similar pattern (more or less) with
the highest numbers observed in 2019-20 for Designs filed (12,268),
examined (13,644) and registered (14,272).
Figure 2.11: Industrial Designs profile (India)
for the period 2010-20).

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.4.14. International Treaties

The WIPO has put in place two important treaties (international)
dealing with the smooth functioning of various aspects of Industrial
Designs:
 Hague Agreement for international registration (1925)
(https://www.wipo.int/treaties/en/registration/hague/)
 Locarno Agreement (1968) for international classification
(https://www.wipo.int/treaties/en/classification/locarno/)
2.4.15. Famous Case Law:
Apple Inc. vs. Samsung Electronics Co.
In 2011, Apple Inc. filed a case against Samsung Electronics
Co. in the United States District Court for the Northern District of
California for infringing their Designs and Utility Patents of the user
interface like screen app grid and tap to zoom. As evidence, Apple
Inc. submitted the side-by-side image comparison of the iPhone
3GS and the i9000 Galaxy S to demonstrate the alleged similarities
in both models. However, later it was found that the images were

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tempered by the Apple Company to match the dimensions and
features of the controversial Designs. So the counsel for Samsung
Electronics blamed Apple of submitting false and misleading
evidence to the court and the company countersued the Apple
Company in Seoul, South Korea; Tokyo, Japan; and Mannheim,
Germany, United States District Court for the District of Delaware,
and with the United States International Trade Commission (ITC) in
Washington D.C. The proceedings continued for the 7 years in
various courts. In June 2018 both companies reached for a
settlement and Samsung was ordered to pay $539 million to Apple
Inc. for infringing on its patents.

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