EVENT REPORT: Guest Lecture on Practical Approach to Design Law
ABOUT THE SPEAKER
The speaker for the lecture was Mr. Makyam Vijay Kumar, Technical Member – Trademarks, Intellectual Property Appellate Board, Government of India. He is a Postgraduate in Law with a specialization in Intellectual Property Rights and a Master of Science in Information Technology. He has 15 years of experience in the field of intellectual property laws. He is a Registered Patent and Trademark Agent for Indian Patent and Trademark Office and has filed and prosecuted patent and Trademark applications and oppositions before the Controller of Patents and Trademark Registrar in India. He has also coordinated the filing of Patent and Trademark applications in other countries including the USA, EU, Australia, Malaysia, Singapore, Sri Lanka, South Korea, South Africa, UAE and Japan.
Mr. Makyam Vijay Kumar started the guest lecture by explaining in depth the definition of the term design under the Industrial Design Act, 2000. He elaborated on the various kinds of designs and their classifications and categorisations. The importance of patterns and ornamentation of the different kinds of two-dimensional designs was demonstrated by Mr. Makyam with examples of wallpapers, carpets, and other various textiles to further elaborate his point.
With context to three-dimensional designs, Mr. Makyam presented many examples in the form of the ever-evolving and improving smartphones, the shape of perfume bottles, as well as the design of lounge chairs among others to further establish the various kinds of designs and the need to protect them.
The basal requirements for filing an application for design registration such as the need for design so being applied for being new and original was discussed in the lecture along with the benefits of applying for design rights. Deep dissection of the requirements for registering was followed by understanding the distinction between articles that could be registered under designs in comparison to articles that could not be registered. Furthermore, the lecture extensively focused on the process of filing design applications.
Each design application ought to be registered with the attachment of representation of the design from four sides, along with a statement of novelty, as well as the requisite fee with the form. The representation of the design on all planes of vision is a compulsory addition, mandatory for the application. Throughout the lecture, the process of filing for application, as well as the stages leading up to registration of design were given clarity along with timeframes for the same by Mr. Makyam making the lecture a very enrapturing one to attend. In furtherance to applying for design, the numerous classifications, as well as sub-classifications of designs, were also presented by Sir in the lecture, with the differences between all elucidated
Lastly, the Hague System and the filing of an application under the same was elaborated upon in the lecture by Mr. Makyam. Under the Hague System, a single application is valid for up to a hundred designs and would be protected under the member countries of the treaty post successful registration. Sir detailed the intricacies of the Hague System as well as the basic principles of it to provide a clearer picture of the procedure as well as the dissection of the applications made in the last few years as well as the classifications of the designs under the same. Concluding his lecture, Mr. Makyam presented a number of popular examples of registered and protected designs ranging from the classic Coca Cola bottle to the various kinds of masks that have come up during the pandemic, as well as other classic examples such as the Ford Model T, whistling tea kettle, and the British Red telephone box among others.
On wrapping up the webinar, he provided the various methods for registration of design while also answering the many doubts and queries provided by the participants, bringing an end to an extremely informative session.
The webinar, conducted on the 11th of May from 4pm to 6pm, was a successful and fruitful session with over thirty students having a very immersive experience. The objectives of the session, understanding the procedure of registration of designs and steps to be upon opposition, along with understanding different types of classifications in designs were successfully achieved. An interactive session with Sir interspersing all answers with interesting facts and illustrations, the webinar was the perfect mix of information and examples with pictorial representation to keep the participants enraptured throughout. With a balanced approach to the subject, he provided all the basics for a refresher to the students while giving the detailed ins and outs to the topic in the second half. The session ended successfully with everyone having learnt a lot and having a clearer idea about design registration and its various purposes and uses in different fields.
During the webinar, Mr. Vijay Kumar Makyam provided his insights about registration under the Designs Act, disputes in design law and the nuances of litigation as well as different types of commercial agreements. Throughout the course of the session, he covered the jurisprudential aspect of design infringement in India by discussing various landmark judgments. He started off the webinar by summarizing the previous day’s discussion. While recapping the requirement for design registration in India, he reiterated that the primary objective of the Design Act was to protect the shape and not the function of the article. Thereafter, he explained that the expression ‘new or original’ appearing in Section 4 of the Act connoted that the design that had been registered had been invented for the first time and had neither been published anywhere nor been reproduced by anyone. He further elaborated that in order to be considered ‘new or original’ within the meaning of the Act, it was not necessary that the design had never been seen before as it was possible that the application of an old thing to a new user also had novelty.
In order to provide further clarity on this point, he elucidated the case of Gammeter v. Controller of Patents and Designs and Others. He also explained that a design would be deemed to be pre-published if it had been disclosed to any individual member of the public who was not under an obligation to keep it a secret. In addition to this, he explained that as per Section 22 of the Act, a design should be capable of being applied to an article such that it showcases a particular shape, configuration or pattern and a mere functional component without any appeal to the eye could not be registered as a design.
Furthermore, elaborating on Section 6(3) of the Act, he explained that the Design Act permitted the registered proprietor of the design to make an application for registration of one or more articles comprised in that particular class of articles. It also provided that such an application could not be rejected on the ground that the design was previously published in India or any other country on account of its application to the article in respect of which it was previously registered. In order to provide further clarity on this point, he elucidated the case of Whirlpool India Limited v. Videocon Industries Limited. Subsequently, elaborating further on design infringement in the country, he explained that the test of ascertaining whether two designs were identical or not was that the designs had to be judged by the eye and each design had to be compared to a whole with all its component features, important and unimportant. He also explained that design patent infringement was not just exact copying. Instead, the test was if an ordinary observer would see substantial similarity. Thereafter, in order to provide further clarity on this point, he elucidated the cases of Crocs v. ITC and Victor Stanley v. Creative Pipe. Elaborating further, he explained that in the first case, the Federal Court had passed a judgement of infringement against ITC opining that a side-by-side comparison of the products suggested that an ordinary observer, familiar with the prior art designs would be deceived into believing that the accused products were the same as the patented designs. The Court, in this case, also explained that minor differences between a patented design and an accused article’s design could not and should not prevent a finding of infringement. A similar judgement was also passed by the Court in the second case. Thereafter, a brief question and answer round was held wherein Sir cleared the doubts and queries of the participants and thereby brought an end to an overall informative and interactive session.
The webinar organized on the 12th of May from 4pm to 6pm was a successful and fruitful session with over fifty students having an informative and outstanding experience. The objective of the session, understanding the enforcement of industrial designs and the detailed procedure regarding registration of the same. The concept of deceptive similarity was also differentiated and explained in a very clear manner. Along with this, various case laws and examples are explained in a detailed manner to understand the registration and remedies available after cancellation of same. This session was not only informative but also interactive. The questions related to the topic were answered by the guest speaker with various illustrations and recent developments. The webinar was the perfect mix of information and examples with pictorial representation to keep the participants enraptured throughout. A balanced approach to the subject has been provided by the speaker. Speaker has provided all the basics for a refresher while giving detail ins and outs of the topic in the second half. The session was adjourned successfully with everyone having a great learning experience, having a clear idea about the industrial design and its future prospects.