Research Methodology and Intellectual Property Rights BRMK557

MODULE 5: INDUSTRIAL DESIGN, GEOGRAPHICAL INDICATIONS

AND CASE STUDIES ON PATENTS

Syllabus

Industrial Designs: Eligibility Criteria, Acts and Laws to Govern Industrial Designs, Design
Rights, Enforcement of Design Rights, Non-Protectable Industrial Designs India, Protection
Term, Procedure for Registration of Industrial Designs, Prior Art Search, Application for
Registration, Duration of the Registration of a Design, Importance of Design Registration,
Cancellation of the Registered Design, Application Forms, Classification of Industrial Designs,
Designs Registration Trend in India, International Treaties, Famous Case Law: Apple Inc. vs.
Samsung Electronics Co.

Geographical Indications: Acts, Laws and Rules Pertaining to GI, Ownership of GI, Rights
Granted to the Holders, Registered GI in India, Identification of Registered GI, Classes of GI,
Non-Registerable GI, Protection of GI, Collective or Certification Marks, Enforcement of GI
Rights, Procedure for GI Registration Documents Required for GI Registration, GI Ecosystem in
India.

Case Studies on Patents: Case study of Curcuma (Turmeric) Patent, Case study of Neem Patent,
Case study of Basmati patent, IP Organizations in India, Schemes and Programs

INDUSTRIAL DESIGNS

 The word ‘Design’ is defined as the features of shape, configuration, pattern, ornament or
composition of lines or colors 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.

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 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.

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 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.

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.

Some of the famous Industrial Designs are mentioned below:

 Coca-Cola Bottle - The contoured-shaped glass bottle of the Coca- Cola Company is
marveled as a master showpiece in the field of industrial design. It was designed in 1915
and is still a cynosure for all eyes.
 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.

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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)

ENFORCEMENT OF DESIGN RIGHTS

 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.

NON-PROTECTABLE INDUSTRIAL DESIGNS INDIA

 Any Industrial Design which is against public moral values.

 Industrial Designs including flags, emblems or signs of any country.
 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.

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 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.
 Industrial Designs does not include any Trademark (The Designs Act, 2000)

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

PROCEDURE FOR REGISTRATION OF INDUSTRIAL DESIGNS

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), Global Design Database (WIPO), etc.

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.

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 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

Fig: Process of Design registration

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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
prioritydate.

 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

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.

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.

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APPLICATION FORMS

There are a total of 24 forms pertaining to Industrial Designs. A list of important forms is
mentioned below.

Fee in Rs
Sl. Name of the form Form No
No Natural Small Large
person Entity Entity

Application for
1 registration of Design. Form - 1 1000 2000 4000

2 Application for renewal of Design. Form –3 2000 4000 8000

Application for the

3 Restoration of Design Form - 4 1000 2000 4000

Petition for Cancellation for registration of

4 Form - 8 1500 3000 6000
a Design.
Notice of intended exhibition or publication
5 of unregistered Design. Form - 9 500 1000 2000
Application for entry of name of proprietor
6 or part proprietor in the Register. Form - 11 500 1000 2000
7 Request for correction of clerical error. Form - 14 500 1000 2000

8 Request for certified copy. Form - 15 500 1000 2000

Application for rectification of Register.

9 Form - 17 500 1000 2000
10 Notice of opposition. Form - 19 100 200 400

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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

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DESIGNS REGISTRATION TRENDS IN INDIA

 The below figure 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 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).

Fig: Industrial Designs Profile in India

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/)

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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 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.

GEOGRAPHICAL INDICATIONS

 A GI is defined as a sign which can be used on products belonging to a particular

geographical location/region and possesses qualities or a reputation associated with that
region.
 In GI, there is a strong link between the product and its original place of production.

ACTS, LAWS AND RULES PERTAINING TO GI

 In India, GI was introduced in 2003 and is governed under the Geographical Indications
of Goods (Registration & Protection) Act, 1999 and the Geographical Indications of
Goods (Registration & Protection) Rules, 2002.

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OWNERSHIP OF GI

 The ownership/holders of GI (registered) can be of the producers, as a group/association/

cooperative society or association or in certain cases, government.

RIGHTS GRANTED TO THE HOLDERS

 Right to grant the license to others - The holder has the right to gift, sell, transfer/grant
a license, mortgage or enter into any other arrangement for consideration regarding their
product. A license or assignment must be given in written and registered with the
Registrar of GI, for it to be valid and legitimate.
 Right to sue - The holder of GI has the right to use and take legal action against a person
who uses the product without his consent.
 Right to exploit - The holder of GI can authorize users with exclusive right to use goods
for which the GI is registered.
 Right to get reliefs - Registered proprietors and authorized users have the right to obtain
relief concerning the violation of such GI products

REGISTERED GI IN INDIA

 GI products registered in India belong to the domains of handicrafts, agricultural, food

stuffs, alcoholic beverages, etc.
 The first GI tag was granted in 2004 to Darjeeling Tea and the latest being Kashmir
Saffron and Manipur Black rice (Chakhao) in May 2020. A total of 370 GI have been
registered in India till May 2020.
 Nearly 58% of these belong to handicrafts, followed by agriculture (30%).
 Other categories belong to food stuff, manufacturing, and natural goods.
 In the Handicraft category, Tamilnadu holds the maximum number (21) of GI followed
by Uttar Pradesh (20) and Karnataka (19).
 A few stands out GI are mentioned in the below table

GI Type State
Darjeeling Tea Agriculture West Bengal

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Mysore Silk Handicraft Karnataka

Kashmir Pashmina Handicraft Jammu & Kashmir
Banaras Brocades and Sarees Handicraft Uttar Pradesh
Naga Mircha Agriculture Nagaland
Tirupathi Laddu Foodstuff Andhra Pradesh
Phulkari Handicraft Punjab, Haryanam Rajasthan
Basmathi Agriculture India

IDENTIFICATION OF REGISTERED GI

 Registered GI products are granted a tag, which is printed on the registered products. The
tag confirms the genuineness of the product in terms of its production (by set standards)
and location of production.
 Non-registered GI products cannot use/exploit this tag.
 By and large, GI tags represent the place of origin (of the product) along with cultural
and/or historical identity e.g. Darjeeling Tea, Mysore Silk, Tirupathi Laddu, etc.
 In India GI tags are issued by the Geographical Indication Registry under the Department
for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry.
 The head of GI registry is at Geographical Indications Registry Intellectual Property
Office Building, Industrial Estate, G.S.T Road, Guindy, Chennai - 600032.
 GI registered products can be grown / produced in any part of the world using standards
laid down by the GI Registry.
 However, these products cannot be labeled as GI as they are not produced/ manufactured
in a specific geographical location, as mentioned in the official records maintained by the
GI Office of GI.
 For example, plants of Darjeeling Tea can be grown in any part of India. But the tea
leaves of these plants cannot be sold under the brand name of Darjeeling Tea, as the
concerned plants were not grown in the soil and climate of the Darjeeling area.

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CLASSES OF GI

 GI certified goods are classified under 34 different classes, such as Class 1 is for
chemicals used in industry, science, photography, agriculture, horticulture and forestry;
unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing
compositions; tempering and soldering preparations; chemical substances for preserving
foodstuffs; tanning substances; adhesives used in industry.
 Class 33 is for alcoholic beverages (except beers) and Class 34 is related to tobacco,
smoker’s articles and matches. More details can be extracted from the official website of
CGPDTM Office

NON-REGISTERABLE GI

For GI registration, the indications must fall within the scope of section 2(1) (e) of GI Act, 1999.
Being so, it has to also satisfy the provisions of Section 9, which prohibits registration of a GI
mentioned below:

 The use of which would be likely to deceive or cause confusion.

 The use of which would be contrary to any law.
 Which comprises or contains scandalous or obscene matter
 Which comprises or contains any matter likely to hurt the sentiments of society
 Religious susceptibilities of any class or section of the citizens of India

PROTECTION OF GI

 The IP rights to GI are enforced by the court of law of the concerned country.
 The GI registration of a product has certain advantages.
 It enables to identify pirated/non-genuine stuff, provides more commercial value to the
product, and also strengthens the case if it reaches the judicial courts.
 The common methods of protecting a GI are:

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o Sui generis systems (i.e. special regimes of protection) and under certification or
collective mark systems. Many countries, including India to protect GI by using
the sui generis system.

COLLECTIVE OR CERTIFICATION MARKS

 Certification marks aim to certify the products comply with specific quality standards
irrespective of their origin. These standards include permitted materials and
manufacturing methods.
 Therefore, the purpose of certification marks is to distinguish certified goods from non-
certified ones.
 Collective marks are owned by associations ensuring compliance with the agreed
standards.
 Collective marks signify that a good or service originates from a member of a particular
association.
 The Collective mark is used by cooperating enterprises that have agreed to comply with
defined quality standards for goods or services that share common characteristics

ENFORCEMENT OF GI RIGHTS

 The rights to GI protection are typically enforced by the court of law.

 The sanctions provided could be civil (injunctions restraining or prohibiting unlawful
acts, actions for damages, etc.), criminal, or administrative.

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PROCEDURE FOR GI REGISTRATION DOCUMENTS

 Prior to filing an application for registering GI, it is prudent to search whether the
concerned GI is already protected or not. This can be done by using search engines
created by WIPO.
 The list of registered GI in India can be accessed from the official website of CGPDTM.
 Once the prior search for registered GI is done, the applicant has to file an application.
 The application for GI can be forwarded by an individual or an organization or authority
of people established under Indian law.
 The application in a prescribed format is submitted to the Registrar, Geographical
Indications along with the prescribed fee.
 In the application, the applicant needs to mention the interest of the producers of the
concerned product.
 The application should be duly signed by the applicant or his agent with all the details
about the GI that how its standard will be maintained.
 The submission of three certified copies of the map of the region where the GI belongs is
mandatory. Once the application is filed at GI Registry, the Examiner will scrutinize the
application for any deficiencies or similarities.
 If the examiner finds any discrepancy, he will communicate the same to the applicant,
which is to be replied within one month of the communication of the discrepancy.
 Once the examiner is satisfied with the response/s, he files an examination report and
hands over the same to the Registrar. Once again, the application is scrutinized.
 If need be, the applicant is asked to clear any doubts/objections within two months of the
communication otherwise, the application will be rejected.
 After getting a green signal from the Registrar, the application is published in the official
Geographical Indication Journal for seeking any objections to the claims mentioned in the
application.
 The objections have to be filed within four months of the publication. If no opposition is
received, the GI gets registered by allotting the filing date as the registration date.
 Initially, GI is registered for ten years but is renewable on the payment of the fee.

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Fig: Procedure for GI registration document

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DOCUMENTS REQUIRED FOR GI REGISTRATION

 Details about the applicant‘s name, address and particulars.

 Application form GI-1A.
 Statement about the designated goods being protected under GI
 Class of goods
 Affidavit to establish the claim of genuinely representing the interest of the producers
 Characteristics of GI
 The special human skill required (if any)

FEEZ STRUCTURE OF REGISTERATION OF GI : they are totally 6 forms

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Form No Title Requisite Fee in

Rs
Application for the registration of a Geographical Indication for goods
5000
included in one class.
Application for the registration of a Geographical Indication for goods
5000
included in one class from a Convention country.
GI - 1
A single application for the registration of a Geographical Indication 5000 for each
for goods in different classes. class
A single application for the registration of a Geographical Indication 5000 for each
for goods in different classes from a Convention country class
Notice of opposition to the registration of a Geographical Indication or 1000 for each
an opposition or an authorized user. class
GI – 2
Form of counter-statement 1000
Application for extension of time for filing notice of opposition 300
Application for the registration of an authorized user of a registered
500
Geographical Indication.
GI – 3
Request for issuance of a registration certificate as an authorized user. 100
For renewal of an authorized user. 1000
Renewal of the registration of a Geographical Indication at the
3000
expiration of the last registration
1000 +
Application for restoration of a Geographical Indication or an
GI – 4 applicable
authorized user removed from the Register.
renewal fee
Application for renewal within six months from the expiration of last
3500
registration of Geographical Indication.
GI – 8 Application for cancellation of an entry in the Register or to strike out 300
goods

GI - 10 Application for registration of a Geographical Indications agent. 1000

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GI ECOSYSTEM IN INDIA

 India is among the geographically and traditionally rich countries.

 The scope of generating GI products in India is enormous. These products can contribute
to the economic development of a particular region or society.
 However, till June 2021, a total of 370 GI have been registered in India, which is much
below its potential.
 The below Figure represents the statistics for GI (filed, and registered) for the period
2010-20. Maximum number (148) of GI was filed in 2011-12 whereas, minimum number
(17) was observed in 2015-16.
 Not much change in the number of GI registrations was observed during the period 2010-
20. Each year the number hovered around in the twenties, with maximum registrations
(34) seen in 2016-17.

Fig: GI Profile (India) for the period 2010-2020

CASE STUDIES ON PATENTS

 Case study of Curcuma (Turmeric) Patent,

 Case study of Neem Patent
 Case study of Basmati patent

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