Contents

I.Introduction
II.History of Industrial design rights
i.Emergence of Designs Rights
ii.Importance and Recognition
iii.Paris Convention and Hague Agreement
III. Evolution of Designs Act in India
i. Introduction of Design Rights by British
ii. Significance and effectiveness of Colonial Designs Act of 1911
iii. Protection of Industrial Designs under the new Indian Designs Act, 2000
IV. International Protection of Industrial designs
i. TRIPS
ii. Objectives and basic features of the Hague System
iii.Filing Application and Procedures for International registration
iv. e-filing
v.Examination
vi.Grant of protection and the Term of protection
V.Locarno Agreement International Classification for IndustrialDesigns
VI. Conclusion

Introduction:
Design is a process of taking something from its existing state and moving it to apreferred
state. This applies to new artifacts, whose existing state is undefined and previouslycreated
artifacts, whose state stands to be improved. An Industrial Design is the commercial
oraesthetic aspect of an article. It makes a product attractive and appealing hence, they add
tothe commercial value of a product and increase its marketability. The design may consist
of three-dimensional features such as shape or surface of an article, or of two-dimensional
features,such as patterns, lines or colour1. Designs are used in various distinct productions
and across thevarious business or commerce like handicrafts, special ornamentations,
jewelry, medical, andengineering appliances. Works of art like paintings and sculptures also
have designs in the sensethat e artists have decided what they will look like and have used
paint and brushes or a hammerand chisel to express their artistic intent2. An Industrial design
rights is an intellectual propertyrights that protects the visual design of objects that are not
purely utilitarian3. It safeguards theappearance, structure, style, design of the industrial object
such as tools, spares, machines andinstruments. Industrial design rights are defined as a part
of intellectual property rights, in orderto ensure a fair return on investment. An effective
system of protection also benefits theconsumers and the public at large by promoting fair
competition and honest trade practices.A product may be superior to another in its aesthetic
features and/or its functionalfeatures, such as, its reliability in performance or the
convenience in its use, based onergonomics delivered through technology. In the context of
industrial design law, it should beappreciated that the word `design' refers only to the eye
appeal or external form of amanufactured product and not to any of its functional features.
Design registration particularlymakes business sense when it improves competitiveness of a
business and brings in additionalrevenue. It helps economic development, by encouraging
creativity in the industrial andmanufacturing sectors and contributes to the expansion of

commercial activities and the exportof national products. The Industrial designs are protected
under the intellectual property rights indifferent forms under different legislations and
international organizations.

History of Industrial design rights:

Emergence of Designs Rights:
Before discovering the history and the evolution of the designs act in India, it will bebetter to
see the history of the designs act in United Kingdom, as they are the pre-runners inprotecting
the industrial designs and our laws relating to industrial designs are based on theirlegislations
during the colonial period. The law of designs has a long history dating back to the latter part
of 18thcentury. Its origin can be found from the United Kingdom in 1787 with theDesigning
and Printing of Linen Act. It was originally introduced to protect the designing andprinting of
linens and cottons, design law has been extended over the years to cover functional aswell as
decorative articles4. This act gave only a limited copyright protection to the designs, butit
effectively begins with a design registration scheme which took recognizable form in the
1830sand 1840s5. The Copyright and Design Act was passed in the year 1839 and increased
theprotection given to fabrics and textiles by extending the law according to the modern
design.This act only introduced the system of registration to avail benefits under the act. Then
the act of 1842 consolidated all earlier acts and provided a higher level of protection and
increased theremedies for infringement. Thereafter in the year 1883 a single consolidated and
amendment actwas passed by the parliament of the United Kingdom, clinching designs,
patents and trademarks.At these times the importance of protection of designs was considered
by most countries andthey started enacting legislations to protect the industrial designs.

Importance and Recognition:

In 1949, the registered designs were once more separated entirely from patents and thelaw
relating to registered designs was governed by the Registered Design Act 1949. Then it
wasfurther modified in the year 1968 by a concise act. The Registered Designs Act 1949 is
still inforce today but as amended by the Copyright, Designs and Patents Act of 1988. The
newamendment of 1988 was intended to reduce the luxurious nature of the designs rights.
The actwas amended further on 9 December 2001 to incorporate the European Designs
Directive6. TheDirective mandate all the member countries of EC to implement the directive
before 2001, to give the holder of a registered design right an exclusive right to authorize or
prohibit others fromusing the design in anyway, but the right holders cannot restrict the
private or non-commercialuse. Further the period of protection was extended to a maximum
total of twenty five years. TheEuropean Community has introduced a community design in
the year 2002 that provides aunitary industrial design right. The scope of the protection
conferred by a community designincludes any design which does not produce a different
impression on an informed user, takingthe degree of freedom of the designer into
consideration7. It also protects the designs in a foreigncountry, if it has business in number of
European countries.

Paris Convention and Hague Agreement:

At the international level the Paris convention for the protection of Industrial Property,1883 is
the first international convention which discusses the concept of industrial property andits
protection. The convention was amended in the year 1979 and mandates the countries of
theunion to protect Industrial designs8. It further introduced a provision to mandate the
memberstates to provide protection to the industrial designs without any forfeiture on the
basis of failureto work or by reason of importation of articles corresponding to those which

are protected9.Another important international document which provides adequate protection

to the industrialproperty is the Geneva Act of the Hague Agreement concerning the
International Registration of Industrial Designs which was adopted in the year 1999. The
Hague system provides aninternational registration of designs which provides a mechanism
for registering a design incountries and intergovernmental organizations party to the
agreement. It is administered by theinternational bureau of the WIPO. The international
registration obtained under this agreementproduces the same effects in each of the designated
countries, as if it was registered in thatcountry. India is a member of Paris convention and
gives protection to the industrial designs, butdoes not signed the Geneva act of the Hague
agreement and the international protection forindustrial designs is not available in India. The
Protection given under the Hague agreement willbe discussed later under the head
International Protection of Industrial Designs.

Evolution of Designs Act in India:

Introduction of Design Rights by British:
The first act in India to grant exclusive privileges to inventors of new patterns anddesigns
was passed in 1872. This act was titled as The Patterns and Designs Act, 1872. It gavea
definition of new manufacture to include any new or original pattern or design or
theapplication of such pattern or design of the application of such pattern or design to any
substanceor articles of manufacture10. Afterward the act was replaced by a new consolidated
act called TheInventions and Designs Act, 1888. This 1988 act was nothing but a clear
reflection of Britishmodel of the same act in the United Kingdom. Then its came the Patents
and Designs Act, 1911,which repealed the previous acts relating to patents and for the first
time in India this act hasintroduced a new separate office for the execution of law relating to
designs. The creation of controller general for all the intellectual properties unified the

registration, administration andinformation in one office and made the procedure for
obtaining protection more steady anduniform. To regulate the practice of registration and for
the purpose of carrying into effect theprovisions of the Act11, patent and designs rules were
framed in the year 1933. Section 2(4) of the act gives copyright protection to a registered
design as Copyright means the exclusive rightto apply a design to any article in any class in
which the design is registered.

Significance and effectiveness of Colonial Designs Act of 1911:

The Act of 1911 excludes any trademark or property mark from the definition of the
termdesign which was stated as only the features of shape, configurations, pattern or
ornamentapplied to any article by any industrial process, which in the finished article appeal
to and are judges solely by the eye12. The act further provides certain essential requirements
to be satisfiedin order to get a design registered in India. The first important requisite is that
the design shouldbe new or original and not previously published in India. For the purpose of
registration of designs, goods have been classified into fourteen different classes and an
applicant, to safeguard his own interest, may register the identical design in different classes
13. When a design isregistered under this act, the proprietor of the design shall have
copyright on his design for aperiod of five years, which may extend to fifteen years on an
application filed before the registrarwith the prescribed fee for the extension of the period of
copyright before the expiry of the fiveyears term14. During the period of the protection, the
registered owner has the exclusive right toapply the design so registered on any particular
thing or object in which it was registered. Underthis act, the registered owner of the design
should mark the article with word Regd orRegistered with the number of registration,
except in case of the textile design. If it was notmarked by the proprietor, the he cannot claim
protection and not entitled to recover damages from an infringer.

Protection of Industrial Designs under the new Indian Designs Act, 2000:
The 1911 act was amended so many times in the British colonial period and after theIndian
independence. Finally Indian Designs Act, 2000 was enacted to consolidate and amendthe
law relating to the protection of designs and to implement the TRIPS Agreement15. It
cameinto effect in India on May 11, 2001, replacing the old law of 1911 to provide more
effectiveprotection to the registered designs and to encourage design activities. The new act
of 2000grants the owner or proprietor of the registered designs an exclusionary right of
selling,licensing, assigning and using the same in any product. In India, registration of an
industrialdesign is possible to protect if it is new or original provided it is a: non-functional
features of shape, configuration, pattern, ornamentation or composition of lines or colours,
applied to anyarticle whether in two or three dimensional or in both forms, by any industrial
process or meanswhether guide, mechanical or chemical, separate or combined16. India,
under this act, hasadopted the first to file, first to get system, which means that the inventor
or creator of a designshould file the application for registration on the earliest possible time in
order to prevent otherpersons claiming rights on that particular designs. A design is
considered to be new if no identical design has been made available to the public before the
date of filing, or the applicationfor registration. In India, novelty is determined on a
worldwide basis17.The main change that the act has brought in is the exclusion of artistic
works as definedin the Indian Copyright Act, 1957 from the definition of the term
design18. Likewise theCopyright act also excludes any design which is registered under the
Designs Act from the scopeof protection under the copyright act. The new definition to the
term design made manyconflicts in giving protection to the artistic works. This was
explained by the Delhi High Court in Microfibers Inc.v.Girdhar Co. & Another 19that the
artistic works which are excluded fromdesigns protection are the piece of art by itself in the
form of painting. The court further observedthat the artistic work with an object to put them

into industrial use are not excluded from thesection 2(d) of the designs act and they needs to
be registered to get protection. The court clearlyexplained in that case that The exclusion of
an 'artistic work' as defined in Section 2(c) of theCopyright Act from the definition of 'design'
under Section 2(d) of the Designs Act, 2000 is onlymeant to exclude the nature of artistic
works like painting of M.F.Hussain. It is, thus, thepaintings, sculptors and such works of art
which are sought to be specifically excluded from the new Act20. The definition under the
act of 2000 is an improved one and more comprehensive21.The inapplicability of copyright
law to the fashion industry has not caused any instability, norhas it adversely affected the
incentive to innovate and create. It is beyond doubt that the fashionindustry needs to regulate
dissemination of designs and art to reduce if not curb unauthorized use and appropriation of
creative artistic works22.Another important case was decided by the supreme court of India
regarding the designsregistration and protection in Bharat Glass Tube Ltd v.Gopal Glass
Works Ltd .23In this case thesupreme court examined the nature of proof required to
establish prior publication of a design.This is an appeal on the cancellation of the design
registration on the ground of similarity of design existing in England. The Design in dispute
in this case is a shape to be applied in glasssheet. The court after examining the two designs
came to the conclusion that there is nocomparision between the two and upheld the order of
the Calcutta high court. The internationalregistration of industrial designs came into conflict
in India for the first time in Disney Enterprises Inc. v.Prime Housewares Ltd.before the Delhi
high court. In this case the Disneycharacters such as mickey mouse, minnie mouse and
donald duck were manufactured byMumbai based Prime housewares limited. The Disney
filed trademark infringement suit with themain contention on their international registration
of their designs and the court observed that theplaintiffs trademark is protected under Indian
law, but not the designs. The court passed theorder on trademark infringement suit in favour
of the Disney. The court also directed the indiancompany to deliver all the infringing material

in their possession to Disney so that it could bedestroyed.24 The new act has made another
major change to the existing act by extending the initialperiod of protection to ten years from
five years, but the maximum term of protection remainsthe same for fifteen years25. In case
of piracy of the designs, the person who infringed the designcopyright shall be liable for the
fine not exceeding fifty thousand rupees. The proprietor can alsobring a suit for recovery of
damages and infringement. The suit for infringement of registereddesigns cannot be instituted
in any court lower than that of a district judge26. The new act is moresuperior and effective
in giving protection and encouraging the industrial designs in India.

International Protection of Industrial Designs:

TRIPS:
The

TRIPS

Agreement

obliges

members

to

provide

for

the

protection

of

independentlycreated industrial designs that are new or original. It says that the members may
provide thatdesigns are not new or original if they do not significantly differ from known
designs orcombinations of known design features and that such protection shall not extend to
designs dictated essentially by technical or functional consideration.27 Further the TRIPS
requires themembers to grant the owner of a protected industrial design the right to prevent
third parties nothaving the owner's consent from making, selling or importing articles bearing
or embodying adesign which is a copy, or substantially a copy, of the protected design, when
such acts areundertaken for commercial purposes. 28 Under the TRIPS agreement, the
minimum term of protection given to the proprietor should be ten years.29 At the
International level, apart from the TRIPS Agreement which mandates the membercountries of
the WTO to enact or amend their legislations to give minimum level of protection tothe
Industrial designs, there are three other international treaties which provide general
standardsof protection to be provided by the contracting states. Paris Convention for the

Protection of Industrial Property is the first major international agreement covering general
standards of protection for industrial designs to be provided by the member states. The
second importantinternational agreement was the Hague Agreement concerning the
International Registration of Industrial Designs, which governs the WIPO administered
global protection system forregistering designs. Then the Locarno Agreement, 1979 which
establishes the internationalclassification for industrial designs. Though India is not a
contracting party to the HagueAgreement, but follows the International classification for
industrial designs based on theLocarno Agreement, it would be better to discuss the Hague
system of international registrationand protection of industrial designs to analyze the
protection of industrial designs underinternational IPR regime.

Objectives and basic features of the Hague System:

The Hague system gives the owner of the industrial design the possibility to have hisdesign
protected in several countries by simply filing one application with the InternationalBureau of
WIPO30, in one language. The design so registered with the WIPO under this systemwill get
the protection at all the member countries to the Agreement. At present there are 58countries
are contracting parties of the Hague Agreement, of which 41 countries are bound bythe
Geneva Act, 1999 which provides for international registration for industrial designs.
The European Union joined the Hague system for international design protection in the year
2008,which mandates all the members of the EU to give protection to the designs registered
under theHague system. Another Union of countries which joined the Hague system is the
AfricanIntellectual Property Organization (OPAI) with 16 countries. The Hague system was
aimed atproviding simpler and more cost-effective design protection solutions for the users
from themember states. It also simplifies the management of an industrial design registration,
since it ispossible to record subsequent changes or to renew the registration through a single

proceduralstep with the International Bureau. One advantage to filing via the Hague
Agreement is that noin-country patent agent is required in order to obtain protection in that
jurisdiction. Additionally,countries are required to accept applications whose formalities are
in agreement with Hagueagreement practice, but not necessarily with practice in that
country31. The Earlier acts of theHague systems, the London Act of 1934 and the Hague Act
of 1960 give relief to the owners of the designs only after fulfilling some procedural matters
in the national level. But as per theGeneva Act of 1999, the international design registration
completely takes care of the applicantinterest and relives him from filling separate individual
application before the national office. Itoffers the possibility of obtaining protection for
industrial designs in a number of States andIntergovernmental Organizations by way of filing
a single international application32. The filingof an international application does not require
any prior national application or registration.Protection for an industrial design can therefore
be applied for at the international level throughthe Hague Agreement for the first time33.

Filing Application and Procedures for International registration:

An international registration may be obtained only by a natural person or legal entityhaving a
connection, through establishment, domicile, nationality with a Contracting Party to anyof the
three Acts of the Hague system. Over 99 percent of international registrations
currentlyobtained are governed by either the 1999 or the 1960 Act; hence the application of
the 1934 Acthas been frozen since January 1, 2010. Only under the 1999 Act, an international
application may be filed on the basis of habitual residence in a contracting party34. An
internationalapplication must be filed on the official form and it must contain a reproduction
of the industrialdesign concerned, together with the designation of the contracting parties in
which protection issought. It must be filed in English, French, or Spanish, at the applicants
option. A singleinternational application may comprise several different designs up to a

maximum of 100provided that all designs included in the same application must belong to the
same class of theinternational classification of Locarno Agreement35. The international
application may be filed;at the option of the applicant either directly with the International
Bureau or through the Officeof the applicants contracting party. An international application
is subject to the payment of three types of fees: a basic fee, a publication fee, and designation
fee for each designatedcountry. All the payment to the International Bureau should be made
in Swiss currency.However, National offices who receive international application may
collect fees in their owncurrency but while transferring application and fee to the
International Bureau should be in Swisscurrency36.

e-filing:
WIPO introduced an electronic interface for electronic filing (e-filing) for the onlinefiling of
an international application directly with the International Bureau of WIPO37. Theelectronic
filing system has a number of advantages over filing a paper application, such as:faster
delivery of the application, lower fees when the application contains many reproductionsof
the industrial designs to be registered, since reproductions submitted on paper are subject to
afee for each page beyond the first, automatic checking of much of the information
provided,reducing the likelihood of irregularities38. e-filing application also must have all the
details of thecreated design and the creator like name, address, phone number, e-mail,
designation, indicationas to contracting party, identity of the creator and specimens of the
design same like the paperform applications. Every attachments and reproduction
accompanying the internationalapplication like power of attorney, model should be in the
image formats by scanning the original reproduction not exceeding 2 MB capacity. The same
portal offers e-payment and e-renewal options for online payment of fees as notified by

WIPO with regard to the internationalapplication and the renewal of international design
registration, by using credit card or by acurrent account created with the WIPO.

Examination:
Once filed, the application will be examined by the International Bureau of WIPO forformal
requirements, with the applicant being given the opportunity to make corrections. Whenall
formalities have been met, the application will get recorded in the International Register
andpublished electronically in the International Designs Bulletin of WIPO. This publication
takesplace on WIPOs website and contains all the relevant data concerning the
internationalregistration, including a reproduction of the industrial designs. The date on
which each issue of the Bulletin is made available on the internet will be communicated
electronically by theInternational Bureau to the office of each contracting party. Upon
publication of the InternationalDesigns Bulletin on the internet, substantive examination must
be conducted by each contractingpartys office, if it was provided for by its own legislation.
As a result of that examination, theOffice may notify to the International Bureau a refusal of
protection for its territory. However,an international registration may not be refused on
grounds of non-compliance with formalrequirements, since such requirements must be
considered satisfied following the examinationcarried out by the International Bureau39.
Such refusal must be notified to the InternationalBureau within six months from the date of
publication on WIPOs website. The same can bedone within twelve months from the date of
publication in case of the international applicationsfiled under the Geneva Act. The holder
cannot get protection in the country which refused theregistration and he can file an appeal
against the refusal of protection before the competentauthorities within the time limits and in
accordance with the legislations of the contracting partywhich refuse the registration. The
International Bureau will not involve in this procedure.

Grant of protection and the Term of protection:

The Office of a contracting party, if satisfied on substantive examination, can send to
theInternational Bureau a statement to the effect that protection is granted to the industrial
designs that are the subject of the international registration in the contracting Party
concerned. In everycontracting party that does not issue such a refusal, the international
registration takes effect andprovides the same protection as if the design(s) had been
registered under the domestic law of that contracting party. The International registration
shall be effected for an initial period of fiveyears and may be renewed for one or more
additional terms of five years in accordance with theprocedures and after payment of fees40.
The maximum duration of protection in each designatedcontracting party corresponds to the
maximum duration provided for by the domestic laws of thatcontracting party. In Europe,
Community Designs provide for rights within the Europeancommunity that can extend for up
to 25 years, subject to payment of renewal fees every fiveyears. The Renewals are handled
centrally by the International Bureau. The applicant must paythe renewal fee and notify the
International Bureau the countries for which his registration is tobe renewed. The
International Bureau itself will send an unofficial notice to both the holder andhis
representative about the renewal of registration, six months before the expiry of a five
yearterm of protection41.The WIPO is conducting programs, at frequent time gap, on the
working of theInternational Registration of Industrial Designs. Recently in March 30, 2011 a
Seminar on theHague System for the International Registration of Industrial Designs was
organized by theWIPO. It was discussed in the seminar the advantages of the Hague system
from the users pointof view, the management of the international registration and the general
overview of the Haguesystem. It was further observed in the seminar that the system of
international registration of industrial designs arose from a need for simplicity and economy.

In effect, it enables designowners originating from a Contracting Party to obtain protection

for their designs with aminimum of formality and expense.

Locarno Agreement International classification for Industrial Designs:

The Locarno Agreement spells out how industrial designs are classified and protectedaround
the world. The agreement was finalized in 1968 and amended on 1979, but is still
beingratified. The Locarno classification gives and international classification system for
industrialdesigns which established in accordance with the agreement of 1968. It classifies
Industrial design thirty two classes and two hundred and nineteen subclasses based on goods
or products inan alphabetical order in which industrial designs are incorporated42. Product
classes covered inthe Locarno Agreement include foodstuffs, which are further broken down
into such items asbaked goods, meat and produce; brush ware, which is further broken down
into items such aspaint and tooth brushes and brushing machines; and building and
construction elements etc.,43.In total there are 7,024 indications of different kinds of goods
which have been classified and, forsearching purposes; these are provided in a purely
alphabetical list as well as alphabeticallywithin each subclass. In order to keep the Locarno
Classification up to date, it is continuouslyrevised and a new edition is published every five
years. The current (ninth) edition has been inforce since January 1, 2009. The revision is
carried out by a Committee of Experts set under theLocarno Agreement. All States party to
the Agreement are members of the Committee of Experts. At present 49 states were party to
the Agreement and they have to adopt and apply theLocarno classification for industrial
designs. International classification based upon Locarnoclassification had been adopted by
India, in which the classification is based on articles. LikeIndia, many other countries follow
the International Classification for industrial designs, basedon the Locarno Agreement.It is
important to remember that the Locarno Classification is solely an administrativetool and

does not bind the member States with regards to the nature of protection afforded by adesign
so classified. The use of the Locarno Classification as a single international
classificationsystem adopted by several Industrial Design Offices facilitates design searching
in a number of different territories. It can also negate the need for re-classification when
related designs are filedin more than one member state. Moreover, as the Locarno
Classification system is product-basedit is relatively easy to expand it to include new
products by adding new classes, sub-classes orproduct descriptions, as required. Furthermore,
since design protection is limited in time, olddesigns will not remain in force for long and
therefore product trends and commercial conflictscan be relatively easily tracked44.

Conclusion:
The Industrial Design registration helps in safeguarding the ornamental or aestheticelements
of the article and it gives exclusionary rights to the holder or proprietor of the
registereddesigns against unauthorized use like replicating or copying by a person without his
consent. Theprotection to the industrial designs helps the economic development, which
promote creativity inthe industrial arena. From the above discussion it is clear that The Hague
system for internationalregistration of designs provides maximum advantages and benefits to
the internationalmerchandisers to acquire registration and get protection within the
contracting states through asingle application. It makes the procedure simple and efficient in
registering and gettingprotection for the designs created by an individual at the international
level. However, India isnot a member to the Hague system of international registration of
design, it gives widerprotection to the industrial designs under the designs act of 2000. But it
will be better to haveinternational protection in India to make the protection available in all
the contracting parties tothe Hague system and to provide much protection to the
international traders in India.