57 RESEARCH METHODOLOGY & IPR
MODULE 5
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.
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 ([Link]
[Link]) and Design Rules, 200 ([Link] 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 [Link]
industrialdesign-12121488. Some of the famous Industrial Designs are mentioned below:
Coca-Cola Bottle - The contoured-shaped glass bottle of the CocaCola 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 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.
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).
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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.
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
• 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.
o 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) - ([Link]
• Global Design Database (WIPO) - ([Link]
• Hague Express Database (WIPO) - ([Link]
• Design View (EUIPO) - ([Link]
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,
Kolkata700091.
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 ([Link] If no objection
is received from the public, the Design is registered. After the registration of the Design, the applicant becomes the
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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:
Figure: Flowchart for the process of Design registration
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.
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.
Application Forms
There are a total of 24 forms pertaining to Industrial Designs. A list of important forms is mentioned below.
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Table: List of important form related to Industrial Designs
Classification of Industrial Designs
Designs are registered in different classes as per the Locarno Agreement, 1968;
[Link] 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.
Designs Registration Trend in India
The figure here 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).
Figure: Industrial Designs profile (India) for the period 2010-20).
International Treaties
The WIPO has put in place two important treaties (international) dealing with the smooth functioning of various
aspects of Industrial Designs:
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• Hague Agreement for international registration (1925) -
([Link]
• Locarno Agreement (1968) for international classification -
([Link]
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
In every country, there are certain regions famous for their traditional knowledge/heritage in various sectors,
such as agriculture, food products, textiles, etc. People from far-off places used to travel to buy these products. For
example, Christopher Columbus sailed from Spain to import world-famous spices from India. British people travelled
to Arabian countries to import Arabian horses for siring fast running horses for commercial gains. Similarly, China
silk and Dhaka Muslin have been in great demand from times immemorial. The reputation of these products was built
upon and painstakingly maintained by the experts/masters of respective geographical locations. The know-how of
these reputed products was passed onto future generations. With the passage of time, a specific link between the
goods produced and geographical location evolved, resulting in the growth of Geographical Indications (GI).
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.
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 has been registered in India till May 2020.
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([Link] 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 standouts GI are mentioned in table below.
Table: List of popular GIs registered in India
International countries, such as Thailand, France, Portugal, Italy, Mexico, Peru and the United Kingdom, have also
filed GI in India e.g. Champagne (wine) of France and Scotch Whisky of the United Kingdom.
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 labelled 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.
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, matches. More details can be extracted from the official website of
CGPDTM - Office - ([Link]
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.
• Which are determined to be generic names or indications of goods and are, therefore, not or ceased to be
protected in their country of origin or which have fallen into disuse in that country.
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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 two common methods of protecting a
GI are: 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. This decision was taken after the TRIPS
agreement (1995) and an option was given to the countries to choose either TRIPS standards or the sui generis
system. This was decided by considering the fact that every country has different legislation and geographical structures
& resources. Therefore, this system is not uniform in all countries and varies according to the jurisdiction and
legislation of the particular country.
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.
Procedure for GI Registration
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
([Link] where Search of Appellations of Origin and
Geographical Indications both can be conducted. Additionally, WIPO has created a directory of all IP offices of its
member countries. The registered GI of any country can be searched by accessing the website of the respective country
([Link] The list of registered GI in India can be accessed from the official
website of CGPDTM - [Link] 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
([Link] 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 ([Link] 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.
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
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64 RESEARCH METHODOLOGY & IPR
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.
Procedure for GI Registration
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
([Link] where Search of Appellations of Origin and
Geographical Indications both can be conducted.
Additionally, WIPO has created a directory of all IP offices of its member countries. The registered GI of
any country can be searched by accessing the website of the respective country
([Link] The list of registered GI in India can be accessed from the official
website of CGPDTM [Link]
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 ([Link]
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 ([Link] 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.
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).
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Figure: Flow chart for the process of GI registration
The important forms to file GI in India under various classes are mentioned below:
Table: Important application forms related to GI.
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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 has been registered in India, which is much below its potential
([Link] Figure 2.13
represents the statistics for GI (filed, and registered) for the period 2010-20. Maximum number (148) of GI were 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.
Figure: GI profile (India) for the period 2010-20
Case Studies on Patents
• Case study of Curcuma (Turmeric) Patent
o [Link]/v1n1/[Link]
• Case study of Neem Patent
o [Link]
• Case study of Basmati patent
o [Link] (or) [Link]
IP Organizations in India
In India, there are several organizations that play a key role in managing and regulating intellectual property
(IP) rights. These organizations are responsible for granting patents, trademarks, copyrights, and other forms of
intellectual property protection. Here are some of the important IP organizations in India:
• Controller General of Patents, Designs & Trade Marks (CGPDTM):
CGPDTM is the primary government agency responsible for granting patents and registering trademarks
and designs in India. - Website: [Link]
• Indian Patent Office (IPO):
Under the CGPDTM, the Indian Patent Office is responsible for the administration of the patent system in
India. - Website: [Link]
• Office of the Controller General of Copyrights:
This office oversees copyright registration and administration in India. - Website: [Link]
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67 RESEARCH METHODOLOGY & IPR
• National Institute of Intellectual Property Management (NIIPM):
NIIPM is an autonomous institute that provides training, research, and education in the field of intellectual
property. - Website: [Link]
• Intellectual Property Appellate Board (IPAB):
IPAB hears appeals against the decisions of the Controller General of Patents, Designs & Trade Marks and
the Registrar of Copyrights.
• Indian Performing Right Society Limited (IPRS):
IPRS is a copyright society that represents the rights of music composers, lyricists, and publishers in India. -
Website: [Link]
• Confederation of Indian Industry (CII):
CII is an industry association that works on various business-related issues, including intellectual property
rights advocacy. - Website: [Link]
• FICCI - Intellectual Property Division:
The Intellectual Property Division of the Federation of Indian Chambers of Commerce and Industry
(FICCI) is involved in promoting and protecting intellectual property rights. - Website: [Link]
Schemes and Programmes in India to encourage Intellectual Property
India has several schemes and programs aimed at promoting and protecting intellectual property (IP) rights.
These initiatives are implemented by various government agencies and organizations. As of my last knowledge update
in January 2022, here are some key schemes and programs related to intellectual property in India:
• National Intellectual Property Rights (IPR) Policy:
The National IPR Policy of India was launched in 2016 with the aim of fostering innovation and promoting
the use of intellectual property for economic growth.
• Patent Facilitation Centres (PFCs):
PFCs have been established across the country to provide assistance and guidance to inventors and
entrepreneurs in filing and processing patent applications.
• Scheme for Facilitating Startups Intellectual Property Protection (SIPP):
This scheme aims to promote awareness and adoption of intellectual property rights among startups by
providing them with financial support for filing patents, trademarks, and designs.
• R&D Grant for Patent Acquisition:
The Department of Science and Technology (DST) provides financial assistance to academic institutions,
research and development organizations, and MSMEs for acquiring patents.
• Trademark Registration Camps:
The Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) organizes camps
and workshops to create awareness about the importance of trademark registration and to facilitate the registration
process.
• Geographical Indications (GI) Scheme:
This scheme focuses on the protection of goods that have a specific geographical origin and possess qualities,
reputation, or characteristics that are essentially attributable to that place of origin.
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• IPR Awareness and Promotion:
Various campaigns and awareness programs are conducted to educate businesses, innovators, and the
general public about the significance of intellectual property rights.
• Technology and Innovation Support Centres (TISCs):
TISCs are established to provide access to patent information and support in patent searches. They aim to promote
innovation and the effective utilization of patent information.
Some Commonly used icons:
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