When two titans fight, the effects can be far-reaching. The Apple v/s. Samsung global wars are a case in point. The effects have already had widespread repercussions and are a matter of intense debate worldwide – and the Jury is still out!!
One of the major issues in this war is the lesser used aspect of Intellectual Property i.e. Design Laws. In fact, in the verdict in the US in favour of Apple, Design was the key arsenal in its attack.
The 'lit wars' or the litigations have not quite reached the Indian shores. However, this brings us to an interesting aspect of comparison of the Indian Design laws with the laws of other countries and how it holds up.
Historically, the Indian Design law and practice has always veered towards taking literally the concept of 'Copyright in Designs' in comparison to being a Design Patent. Now, though it is moving closer to the concept of Patents, the vestiges of the old methods still remain in practice.
In India what is protected is 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, ........
...... which in the finished article appeal to and are judged solely by the eye".
"Judged solely by the eye" has been interpreted to mean that every design is to be looked at for an "eye appeal", i.e. the aesthetic value of the design needs to be gauged. However, typically any article could have both aesthetic and functional elements. In such cases the definition does not include "....any mode or principle of construction or anything which is in substance a mere mechanical device...".
Meaning thereby, any article, wherein the function dictates the look of the article, cannot be claimed by way of a design protection. While Design is usually concerned with aesthetics, with reference to an article, there are situations wherein the aesthetics and the functions will most obviously be intertwined. There is no concept that defines such situations in the Indian context till now. In fact, for most articles on which the design is applied, the functionality to a great extent defines the shape of the article. It is hard to imagine that an article will be manufactured or created without any purpose and therefore function. The lacuna in the law is in the interpretation of the definition itself! The definition in the Indian context takes "eye appeal" to exclude any form of functionality, i.e. dictated by function, which would be antithetical to the very purpose of the article.
All the jurisdictions such as US, China and Japan, have the concept of Utility Models. Therefore when it comes to enforcement, all the protections sought in the various IPs are combined to cover all aspects of an article.
The way that the US laws deals with this is in the form of the "Design Patent" to protect the way an article looks (35 U.S.C. 171). This has all the trappings of a Patent albeit at a lower threshold than a regular patent. Simultaneously in the US context also there is a concept of Utility Patents which protects the way an article is used and works (35 U.S.C. 101). The law therefore takes care of both the "aesthetics" in the Design Patent and the "utility" or the "functionality" in the Utility Patents. Accordingly, as per US jurisprudence, a situation is envisaged wherein a clear cut separation of functionality from aesthetics or ornamentation is not so easy. In such cases both Utility Patents and/or Design Patents can be filed.
In South Africa, it is dealt with in a different way. The South African law provides protection separately for the functionality and aesthetics. As per the law, prevalent "design" means an aesthetic design or a functional design. Accordingly, by definition, it includes two registrations, one each for both the above aspects. Further the two concepts are defined as:-
"aesthetic design" means any design applied to any article, .........., having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof;
"functional design" means any design applied to any article, .............having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work and a series of mask works; (ACT NO. 195 OF 1993: DESIGNS ACT, 1993.)
One further aspect of the Indian Designs Act is that the protection is granted only for a single embodiment. For a practitioner, though this is good for business, for a right owner, this would entail not only additional cost but also the danger of losing one or more embodiments while claiming priority from a foreign case in India. In US and for an International Registration under WIPO, for example, multiple embodiments are allowable and therefore the obvious effort when these cases are filed in India.
A difficulty faced by right owners claiming priority from EU and International Registrations, is in the change of class -- from Locarno based classification (Ninth Edition) followed in these jurisdictions, to the classification followed in India which uses the 3rd edition of the said classification as its base. This change of class many a times defeats the purpose of the claim for an article. For example whereas in EU the article may be in Class 32, in India since the class is not available, the article would need to be defined as per the Indian Classification, as a result of which the original scope would be upset.
Application of drawings is yet another aspect of consideration. Earlier the Designs Office would not consider any line drawings wherein the lines were not made solid. However in recent times this concept is changing with the 'Manual of Designs Practice & Procedure' a publication of the Indian Patent Office clarifying the usage of dotted lines to depict the unclaimed portions of the design protection. Accordingly, now it would be easier for the Controller to understand the claim of the design and its environment when line drawings are used both as solid and dotted lines. The Manual defines the same as:-
"Dotted lines may be used in representation to indicate those elements of the article for which no protection is sought. Dotted lines identify elements which are not part of the claimed design. In such a case, features of design for which protection is sought must be shown in solid lines in the drawing.
For instance, an ornamentation or surface pattern on an article can be registered. In such a case, the representation shall contain a solid line drawing for the claimed ornamentation or surface pattern, and dotted line for rest of the article."
In US this requirement is more elaborate and includes the usage of surface shading and broken lines to delineate the claimed area. As per 37 CFR 1.152 design drawings is explained as:-
"The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing...".
Claiming of Priority for an application which has passed the 6-month priority period in a foreign jurisdiction and wherein the Priority country has the provision of grace period extension would be a cause of concern for the applicants filing in India. As per the WIPO's proposals, in SCT/27/4, the applicant shall have a 6 months' period from the date of first disclosure of the design to apply for its registration. This would have direct impact on corresponding Indian application with regard to novelty. It can be suggested that for all those countries where provision of disclosure exists, the date of first use or disclosure shall be the date of filing for all practical purposes for applicable laws. In this case, Applicant has to support the date of first use with documentary evidence while filing the application. This step may safeguard the novelty in corresponding Indian Design Application and any other member state where there is no provision of grace period.
All these above considerations and other such differences led the WIPO to consider the formulation of a draft Design Law Treaty. In the latest round of talks taking place, the member countries are trying to come to a consensus on a draft Design Law Treaty, so as to harmonize the differences in law across borders.
In the WIPO General Assembly Forty-Third (21st Ordinary) Session held in Geneva from September 23 to October 2, 2013 on "Matters Concerning the Convening of a Diplomatic Conference for the Adoption of a Design Law Treaty" the conclusion was as follows:-
"At the outcome of the twenty-ninth session of the SCT, the Chair concluded that "the SCT had made good progress on the draft Articles and draft Rules included in documents SCT/29/2 and 3 and that the work on technical assistance and capacity building had advanced. A number of delegations stated that sufficient progress had been made by the SCT to recommend to the WIPO General Assembly the convening of a diplomatic conference in 2014. Other delegations, expressing the view that there was a need for more progress on technical assistance and capacity building in order to reach a concrete outcome, were of the opinion that the General Assembly would take stock of and consider the text, progress made, and decide on convening a diplomatic conference" (document SCT/29/9, paragraph 10)"1.
In coming to the above conclusions vis-à-vis India, recently by way of notification the Patent Office had run a survey for the submission of comments on annexure VI of SCT/27/4.
As per this a study by the WIPO was conducted in order "to gain a better understanding of the potential impact on users/applicants and national/regional offices of the changes to industrial design law and practice proposed in the draft Articles and draft Rules contained in documents SCT/26/2 and 3. The objective of the study, as per the applicable Terms of Reference (Annex IV of the present document), was to analyze the potential benefits, constraints and costs for SCT Members of the application of above-mentioned draft Articles and Rules, and the impact, if any, of those draft Article and Rules on a number of factors that can be generally described as incentivizing design activities and access to knowledge".
The study was initiated in March 2012, with data collection carried out in April and May, 2012. Requests to complete the questionnaires were circulated to the Industrial Property Offices of all 185 Member States of WIPO and to the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Office of Harmonization for the Internal Market (OHIM) and the Benelux Office of Intellectual Property (BOIP), with responses gained from 52 offices from 25 high-income countries and 28 middle- and low-income countries.2
Both the office and the applicant/user questionnaires reviewed the proposed changes to design law and practice, and sought to gain the views of offices and applicants on the impact of such changes, particularly in terms of design activity and commercialization and in terms of ease, time and cost of registering.
The top changes so sought were as follows:
Change 1 – Choice of Illustration
Change 2 – Reduced Number of Copies of Each Illustration
Change 3 – Registering a Set of Designs
Change 4 – Easier to Gain a Secure Filing Date
Change 5 – Register a Design Six Months After Disclosure
Change 6 – Register a Design 12 Months After Disclosure
Change 7 – Secrecy for Six Months After Filing
Change 8 – Standardizing Information
Change 9 – Simplifying Procedures for Legally Valid Documents
These were then ranked from 1 to 9 as per priority for each
member country wherein 1 is the highest and 9 is the least priority
Fig A.3.1: Relative importance of proposed changes – high-income and middle and low-income countries
Realities of differences in laws, the headaches of both a successful grant of Design as well as enforcement across borders and the slip roads available to infringers using cross border tactics, have led to a situation wherein internationally there has been a move towards harmonization of all forms of Intellectual Property. Patents, through the PCT route, Trademarks through the Madrid Route and now Designs through the Design Law Treaty are all policies aimed at bridging the divide.
As and when such unanimity is reached, it will enable the right owners to correctly structure their design portfolio. However the road is long and arduous, and one which will need to be travelled, overcoming economic and political bottlenecks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.