Industrial Design - The Modest Cousin of Patent

In the present globalization era, importance of overarching nature of intangible assets in day-to-day life cannot be over emphasized. IP Assets are ever evolving and are established as a foundation for any successful business. Although patents and trademarks are predominant while considering Intellectual Property (IP) protection, industrial designs cannot be overlooked. Industrial designs play an increasingly important role in manufacturing processes, as it creates a niche for the product in the market place by differentiating, an otherwise similar product, on the basis of ‘eye appeal’. The choice of consumers and market demand to a large extent depend on the appearance of the product, therefore design of a product has its own place in the market. Industrial design, also termed as "Design Patent" in few other countries, is a form of legal protection offered to protect the external or ornamental appearance of an otherwise functional item. In more general terms, an industrial design protects the way an article looks, not the way it functions.

Industrial designs generally protect any new or original shape, configuration, pattern, ornamentation or composition of lines or colors applied or applicable to an article of manufacture, which is capable of being made and sold separately. Design protection provides an exclusive right to the owner to make, sell, and use articles that embody the protected design. The total term of protection of a registered design is 15 years (10 years, extendable to another 5 years). Design registrations are generally faster, easy to obtain and cost effective, when compared to that of patents.

The general presumption about design registration which offers lesser protection when compared to patents has been turned upside down in recent years. As per the Annual report (2017-2018) released by IP office India, filing of design applications has shown a tremendous increase of 15.9% for the year 2017-18 as compared to the previous year, while its counterpart, patent application filing, has increased only by 5.3%. This renaissance of industrial design registration is attributed to the following benefits:

  • Simple and straight forward registration process.
  • Quick prosecution time.
  • Cost-effective, does not require yearly renewal/maintenance.
  • Easy to prove in case of infringement.
  • Difficult to invalidate a design registration.
  • Easy to combat counterfeiting of products
  • Provides legal validity in the conflict of copyright infringement.
  • Acquire trade dress protection by distinctive usage.

It is easier to establish design infringement; designs have sharper claws because infringement is more easily proven. A registered design is infringed either by an identical design or a design that is substantially similar in the eyes of an ordinary observer. However the extent of similarity is ultimately up to the Judge. It is also more difficult to invalidate a registered design and an infringer has to overcome a heavy burden to invalidate a design registration. Injunctions are also relatively easy to obtain because no technical expertise is needed. There exists a possibility of getting the "total profits" made by the infringers as recovery in cases of proven infringement. This prospect of immediate relief makes the design registrations an important addition to a company’s IP portfolio.

The importance and renaissance of “Industrial designs” gained momentum with the high profile decision on the historic Apple iPhone lawsuit against Samsung. Apple’s allegations included patent infringement and design registration infringement on its iPhone and iPad. This Apple v. Samsung damages trial ended in a remarkable award of $533 million verdict for infringement of Apple’s design patents, but only $5.3 million for infringement of Apple’s utility patents. This verdict showed that design registration is no longer the weak sister of the IP world and can be a powerful and invaluable business tool. Following this decision, Apple’s market capitalization jumped by $11 billion whereas Samsung’s market capitalization suffered a loss of equal quantum.

In a more recent case on April 22nd 2019, The Hon'ble Delhi High Court passed a judgment, awarding the highest ever quantum of damages in a copyright & design infringement case. Plaintiff Philips filed two suits, first one was for piracy of its registered design under Section 22 of the Designs Act, 2000 and one other for infringement of copyright as well as trade dress for its Advance Beard Trimmer Series 3000 against Nova Manufacturing Industries Ltd., Badri Electro Supply and Trading Company and Omni Exim Private Limited (importer of the infringed product). Plaintiff’s allegation on Nova was that product NOVA NHT 4000 Trimmer, placed in the market was deceptively similar to Philip's own product. Everything from the packaging, design, layout and color scheme and description of the product including its registered design had been copied by the defendants. Total cumulative relief awarded to the Plaintiff (Philips) amounts to about INR 3,15,71,000 (USD 451,244) against the importer & the manufacturers of the infringing product.

Another prominence of securing design registration is its conversion into a trade dress protection. By statute, the expiry term of a registered design is limited to 15 years, after which the design registration will be ineffective in blocking the competitors from using the design. However, the proprietor can use the exclusivity provided by the design registration to achieve distinctiveness for his product in the marketplace, thereby acquiring trademark rights in the form of trade dress, which provides a longer lasting protection. After five or more years of use, the owner of the registered product design can apply for a trademark registration on the basis of acquired distinctiveness in the market place. Once granted, the trademark is perpetual and protects the design of the product as long as it is being used. In several other countries this type of extended protection for product design are offered under the name "Trade Dress" protection.

Design registration owners can obtain the same remedies as in case of utility patents including damages, attorney’s fees, and injunctive relief. Design Act also provides for an additional remedy specifically for designs − an award of an infringing defendant’s profits from sales of an “article of manufacture” that bears the design protected by the design registration as in case of Apple v. Samsung. Further in a more recent judgement of 2019, in Carlsberg Breweries v. Som Distilleries and breweries Ltd., five judge bench of Delhi High court held that two causes of action of passing off and design infringement under the Designs Act, 2000 can be joined and tried in a composite suit. Therefore a composite suit filed design infringement and passing off is maintainable and remedy for both can be sought in a single suit.

Thus Industrial Design, which has been historically overshadowed by patents and other forms of IP protection, proven to be an effective complement to its counterparts with recent changes in the case law. Design patents can be an extremely useful tool in your intellectual property arsenal, particularly when you are attempting to create overlapping protection. While developing a comprehensive product protection strategy, incorporation of design registrations can create exclusive markets for the products which supplement the protections offered by patents and trademarks.

Bhuvaneswari. E
Patent Agent & Senior Associate
Surana & Surana International Attorneys