Industrial design rights

Industrial design rights are intellectual property rights that protect the visual

design of objects that are not purely utilitarian. An industrial design consists of the

creation of a shape, configuration or composition of pattern or color, or combination

of pattern and color in three dimensional form containing aesthetic value. An

industrial design can be a two- or three-dimensional pattern used to produce a

product, industrial commodity or handicraft.

Under the Hague Agreement Concerning the International Deposit of Industrial

Designs, a WIPO-administered treaty, a procedure for an international registration

exists. An applicant can file for a single international deposit with WIPO or with the

national office in a country party to the treaty. The design will then be protected in as

many member countries of the treaty as desired. Design rights started in the United

Kingdom in 1787 with the Designing and Printing of Linen Act and have expanded

from there.

Legislations

[edit] Canada

Canada's industrial design act affords ten years of protection to industrial designs

that are registered; there is no protection if the design is not registered. The

Industrial Design Act (R.S., c. I-8) defines "design" or "industrial design" to mean

features of shape, configuration, pattern or ornament and any combination of those

features that, in a finished article, appeal to and are judged solely by the eye.

During the existence of an exclusive right, no person can "make, import for the

purpose of trade or business, or sell, rent, or offer or expose for sale or rent, any

article in respect of which the design is registered." The rule also applies to kits and

substantial differences are in reference to previously published designs.

[edit] Japan

Article 1 of the Japanese Design Law states: "This law was designed to protect and

utilize designs and to encourage creation of designs in order to contribute to

industrial development". The protection period in Japan is 15 years from the day of

registration.

[edit] United States

U.S. design patents last fourteen years from the date of grant and cover the

ornamental aspects of utilitarian objects. Objects that lack a use beyond that

conferred by their appearance or the information they convey, may be covered by

copyright -- a form of intellectual property of much longer duration that exists as

soon as a qualifying work is created. In some circumstances, rights may also be

acquired in trade dress, but trade dress protection is akin to trademark rights and

requires that the design have source significance or "secondary meaning." It is

useful only to prevent source misrepresentations; trade dress protection cannot be

used to prevent others from competing on the merits.

[edit] United Kingdom

Under UK law there is both a registered design right and an unregistered design

right. The unregistered right, which exists automatically (depending on where and by

whom the design is created), lasts up to 15 years (depending on when articles

according to the design are put on the market), while the registered design right can

last up to 25 years. UK residents can also use the European Community Designs

regime administered, as far as the registered right is concerned via OHIM in

Alicante.

Industrial Design Rights

Industrial design rights are intellectual property rights that make exclusive the visual design of objects that

are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or

composition of pattern or color, or combination of pattern and color in three dimensional form containing

aesthetic value.

An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial

commodity or handicraft. Under the Hague Agreement Concerning the International Deposit of Industrial

Designs, a WIPO-administered treaty, a procedure for an international registration exists. An applicant can

file for a single international deposit with WIPO or with the national office in a country party to the treaty.

The design will then be protected in as many member countries of the treaty as desired. Industrial design

rights are intellectual property rights that protect the visual design of objects that are not purely utilitarian.

An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or

combination of pattern and color in three dimensional form containing aesthetic value. An industrial design

can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

Under the Hague Agreement Concerning the International Deposit of Industrial Designs, a WIPO-

administered treaty, a procedure for an international registration exists.

An applicant can file for a single international deposit with WIPO or with the national office in a country party to the treaty. The design will then be protected in as many member countries of the treaty as desired. Design rights started in the United Kingdom in 1787 with the Designing and Printing of Linen Act and have expanded from there.

Industrial Design

Background

Industrial designs consist of features of shape, configuration, pattern or ornament that give

manufactured articles eye appeal. When different industrial designs are applied to similar

articles, those articles may work identically, but they differ from each other in their

appearance. Examples of designs can be seen in clothing and fashion accessories, in

automobile bodies and interiors, in furniture, appliances, office equipment and essentially,

in just about all types of manufactured goods. Industrial designs derive their value from

making articles attractive.

While the subject matter of industrial designs is relatively straightforward, the legal issues

that come into play in protecting new designs are among the most complex in the

intellectual property field. Like other works of art, industrial designs are fundamentally

expressions of style or form. However, designs that involve utilitarian articles must also

incorporate functional considerations. Industrial designs are thus properly associated with

copyright, but they tend to spill over into the subject area of patents as well.

Copyright prevents the unauthorized copying of an original artistic work, but copyright does

not protect the concepts expressed in the work, only the specific manner of their expression.

Patents, by contrast, can provide broader protection for new structural features in an article

that give it functional advantages, but patent protection is only available for developments

that meet the law's high standard of inventiveness.

The law therefore treats the products of intellectual creativity quite differently, depending

on whether they are matters of form, or of function. The ultimate goal of modern design,

however, is often to achieve a perfect marriage of form and function. The distinction

between the two is in fact often blurred in successful industrial designs to the point where it

can be difficult to recognize.

The competing policy considerations underlying the two dominant paradigms of copyright

and patents lead to a number of special provisions in the law's treatment of industrial

designs. Moreover, industrial designs can also present trade mark issues as well, since an

article's appearance may often serve to distinguish it from similar articles available from

other manufacturers.

In Canada, legal protection for industrial designs may be found through copyright, under the

Industrial Design Act, and within the law of trade marks.

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The Industrial Design Act and The Copyright

Act

To protect a design under the Industrial Design Act, the design has to be registered. An

application to register the design must be filed within one year of its first publication. A

design must be new to be registrable, and it must be sufficiently different from previously

registered designs that it would not be confused with them. The maximum term of

protection is ten years.

Wherever possible, it is usually desirable to rely on copyright to protect an industrial design,

either in addition to obtaining an industrial design registration, or as an alternative. This is

because copyright arises automatically, without any cost, and the term of protection lasts

throughout the life of the author of the design plus an additional fifty years. Moreover, a

design may qualify for copyright protection even if it is not novel or significantly different

from earlier designs, as long as it was not copied.

Notwithstanding the advantages of copyright, registration under the Industrial Design Act

nevertheless provides a primary means of protecting designs, because for many industrial

designs copyright does not arise, or it is either lost or becomes unenforceable if articles

comprising the design have been mass produced.

For designs created prior to a statutory amendment that came into force on June 8, 1988,

copyright is not recognized at all in patterns for textiles, wallpaper, and so forth. For other

designs created prior to the 1988 amendment, copyright is automatically lost once more than

fifty articles embodying the design have been made.

For designs created after the 1988 amendment, a significantly modified set of rules apply.

Copyright in such designs becomes unenforceable once more than fifty articles embodying

the design have been made only if the articles have a utilitarian function. If they merely

serve as a substrate for artistic matter, copyright continues to be enforceable regardless of

the number of articles made. Copyright in such designs also remains enforceable where the

design is one of certain specified types, for example, representations of a real or fictitious

being, and graphic or photographic matter applied to the face of an article. Copyright is as

well recognized in patterns for textiles and so forth created after the 1988 amendment.

Even where copyright is available to protect a design, the additional protection of an

industrial design registration may offer some further advantages. One is that it provides an

absolute right to exclude, and not merely the right to prevent copying. Thus, unlike

copyright infringement, it is not necessary to show that an infringer of a registered design

ever even saw it.

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Trade Mark Protection for Designs

Trade mark rights as well come into play in protecting industrial designs. However, these

rights are dependant on establishing that the public associates the design with a single

source of the product. Such a design can be protected under common law trade mark rights

as part of the product's "get up", and may even be registered under the Trade-marks Act as a

"distinguishing guise" provided that such a registration would not unreasonably limit the

development of the relevant industry.

Trade mark rights also have advantages as a source of protecting industrial designs. For one

thing, they have the potential to last indefinitely. Moreover, in certain cases, problems that

can be encountered in enforcing copyright or design rights, such as establishing a chain of

title, can sometimes be avoided by relying on trade mark rights.

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Summary

Protection of industrial designs can involve a consideration of a number of different areas of

intellectual property law. This is true not only for Canada, but for many important foreign

jurisdictions as well, including the U.S. Early consultation with legal counsel is the best

course to follow to ensure that valuable design rights will be fully exploitable.

About industrial designs

An industrial design renders an object attractive or appealing,

thus increasing its marketability and adding to its commercial

value.

The design may be three-dimensional based on the shape or

surface of the object, or two-dimensional based on the

objects patterns, lines or colours. Novelty, originality and visual appeal are essential if an industrial design is to be

patented, although these criteria can differ from one country

to another. Its aesthetic features should not be imposed by

the technical functions of the product.

Legally, industrial design is the title granted by an official authority, generally the Patent Office, to protect the aesthetic or ornamental aspect of an object.

This protects solely the non-functional features of an industrial product and does not protect any

technical features of the object to which it is applied.

Industrial design rights are granted to the creator of designs to reward them for their effort and

investment in manufacturing the product. These rights enable the owner to make articles to which the design is applied or in which the design is embodied.

The holder of this legal title has the exclusive right to make, import or sell any objects to which

the design is applied. They can authorise others to exploit the design and bring a legal action against anyone using the design without authorisation.

In general the period of protection granted is from 10 to 25 years. This is often divided into

terms and an extension of the term requires renewal of the registration.

The Ariane launcher family artist's view

Why protect an industrial design?

Consumers often take the visual appeal of a product into consideration when

choosing between different products. This is especially true when the market

offers a large variety of products with the exact same function. As the aesthetic

appeal of a product can determine the consumers choice an industrial design adds commercial value to a product.

Protecting an industrial design is also a reward for creativity and encourages

economic development. Above all, it ensures protection against unauthorised

copying or imitation of the design and can be relatively simple and inexpensive

to develop. An industrial design is not protected unless it has been published in

an official bulletin.

Industrial design versus copyright

Objects meeting the requirements for protection under industrial design law can also be

protected under copyright law. If a design embodies elements or features which are protected by

both industrial design laws and copyright laws then claims under both laws can be made. The

creator can choose to be protected under only one of the laws but in this case they can not then invoke the other law when making a claim.

Whereas an industrial design needs to be registered, in most countries copyright does not

require registration. Copyright protection lasts longer than industrial design protection. However,

the right conferred by registration of an industrial design is an absolute right in the sense that

there is infringement even though the infringer acted independently or without knowledge of the

registered design. In copyright law, the copyright should always be stated.

FREQUENTLY ASKED QUESTIONS & ANSWERS

Q.1 What is meant by Intellectual Property ?

Ans. Intellectual Property is the Property, which has been created by exercise of Intellectual

Faculty. It is the result of persons Intellectual Activities. Thus Intellectual Property refers to

creation of mind such as inventions, designs for industrial articles, literary, artistic work,

symbols which are ultimately used in commerce. Intellectual Property rights allow the creators or

owners to have the benefits from their works when these are exploited commercially. These

rights are statutory rights governed in accordance with the provisions of corresponding

legislations. Intellectual Property rights reward creativity & human endeavor which fuel the

progress of humankind. The intellectual property is classified into seven categories i.e . (1)

Patent (2) Industrial Design (3) Trade Marks (4) Copyright (5) Geographical Indications (6) Lay

out designs of integrated circuits (7) Protection of undisclosed information/Trade Secret

according to TRIPs agreements.

Q.2. What is meant by Design under the Designs Act, 2000 ?

CNES protected the Ariane-4 launcher design in 1985

Ans. Design means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two

dimensional or three dimensional or in both forms, by any industrial process or means, whether

manual, mechanical or chemical, separate or combined, which in the finished article appeal to

and are judged solely by the eye, but does not include any mode or principle or construction or

any thing which is in substance a mere mechanical device, and does not include any trade mark,

as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act,

1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.

Q. 3. What is meant by an article under the Designs Act, 2000 ?

Ans. Under the Designs Act, 2000 the "article" means any article of manufacture and any

substance, artificial, or partly artificial and partly natural; and includes any part of an article

capable of being made and sold separately;

Q.4. What is the object of registration of Designs?

Ans. Object of the Designs Act to protect new or original designs so created to be applied or

applicable to particular article to be manufactured by Industrial Process or means. Sometimes

purchase of articles for use is influenced not only by their practical efficiency but also by their

appearance. The important purpose of design Registration is to see that the artisan, creator,

originator of a design having aesthetic look is not deprived of his bonafide reward by others

applying it to their goods.

Q.5. What are the essential requirements for the registration of design under the Designs Act, 2000?

Ans. (1) The design should be new or original, not previously published or used in any country

before the date of application for registration. The novelty may reside in the application of a

known shape or pattern to new subject matter. Practical example:

The known shape of "Kutub Minar" when applied to a cigarette holder the same is registrable.

However, if the design for which application is made does not involve any real mental activity

for conception, then registration may not be considered.

(2) The design should relate to features of shape, configuration, pattern or ornamentation applied

or applicable to an article. Thus, designs of industrial plans, layouts and installations are not

registrable under the Act. (3) The design should be applied or applicable to any article by any

industrial process. Normally, designs of artistic nature like painting, sculptures and the like

which are not produced in bulk by any industrial process are excluded from registration under

the Act. (4) The features of the design in the finished article should appeal to and are judged

solely by the eye. This implies that the design must appear and should be visible on the finished

article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse

or almirah may not be considered for showing such articles in the open state, as those articles are

generally put in the market in the closed state. (5) Any mode or principle of construction or

operation or any thing which is in substance a mere mechanical device, would not be registrable

design. For instance a key having its novelty only in the shape of its corrugation or bend at the

portion intended to engage with levers inside the lock associated with, cannot be registered as a

design under the Act. However, when any design suggests any mode or principle of construction

or mechanical or other action of a mechanism, a suitable disclaimer in respect there of is required

to be inserted on its representation, provided there are other registrable features in the design. (6)

The design should not include any Trade Mark or property mark or artistic works as define under

the Copyright Act, 1957.

Q.6. Can stamps. Labels, tokens, cards, be considered an article for the purpose of

registration of Design?

Ans: No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper,

metal or like material remains and the article referred ceases to exist. Article must have its

existence independent of the Designs applied to it. [Design with respect to label was held not

registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the

Design as applied to an article should be integral with the article itself.

Q.7. When does the Applicant for Registration of Design get the registration certificate?

Ans: When an application for registration of a Design is in order, it is accepted and registered

and then a certificate of registration is issued to the applicant.

However, a separate request should be made to the Controller for obtaining a certified copy of

the certificate for legal proceeding with requisite fee.

Q.8. What is a Register of Designs?

Ans: The Register of Designs is a document maintained by The Patent Office, Kolkata as a

statutory requirement. It contains the design number, class number, date of filing (in this

country) and reciprocity date (if any), name and address of Proprietor and such other matters as

would affect the validity of proprietorship of the design and it is open for public inspection on

payment of prescribed fee & extract from register may also be obtained on request with the

prescribed fee.

Q.9. What is the effect of registration of design?

Ans. The registration of a design confers upon the registered proprietor Copyright in the design for the period of registration. Copyright means the exclusive right to apply a design to the article belonging to the class in which it is registered.

Q.10. What is the duration of the registration of a design? Can it be extended?

Ans. The duration of the registration of a design is initially ten years from the date of

registration, but in cases where claim to priority has been allowed the duration is ten years from

the priority date.

This initial period of registration may be extended by further period of 5 years on an application

made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the

said initial period of Copyright.

The proprietor of a design may make application for such extension even as soon as the design is

registered.

Q.11. What is the date of registration?

Ans. The date of registration except in case of priority is the actual date of filing of the

application. In case of registration of design with priority, the date of registration is the date of

making an application in the reciprocal country.

Q.12. Is it possible to re-register a design in respect of which Copyright has expired?

Ans. No. A registered design, the copyright of which has expired cannot be re-registered.

Q.13. How one can ascertain whether registration subsists in respect of any design?

Ans. For ascertaining whether registration subsists in respect of a design, a request should be

made to the Patent Office, Kolkata. If the serial number of the registered design is known, the

request should be made on Form 6, otherwise on Form 7, together with fee of Rs. 500/- or Rs.

1,000/- respectively. Each such request should be confined to information in respect of a single

design.

Q.14. What is piracy of a Design?

Ans: Piracy of a design means the application of a design or its imitation to any article belonging

to class of articles in which the design has been registered for the purpose of sale or importation

of such articles without the written consent of the registered proprietor. Publishing such articles

or exposing terms for sale with knowledge of the unauthorized application of the design to them

also involves piracy of the design.

Q.15. What is the penalty for the piracy of a registered Design?

Ans: If anyone contravenes the copyright in a design he is liable for every offence to pay a sum

not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/-

recoverable as contract debt in respect of any one design. The registered proprietor may bring a

suit for the recovery of the damages for any such contravention and for injunction against

repetition of the same. Total sum recoverable shall not exceed Rs. 50,000/-as contract debt as

stated in Section 22(2)(a). The suit for infringement, recovery of damage etc should not be filed

in any court below the court of District Judge.

Q.16. Is marking of an article compulsory in the cases of article to which a

registered design has been applied?

Ans: Yes, it would be always advantageous to the registered proprietors to mark the article so as

to indicate the number of the registered design except in the case of Textile designs. Otherwise,

the registered proprietor would not be entitled to claim damages from any infringer unless the

registered proprietor establishes that the registered proprietor took all proper steps to ensure the

marking of the article, or unless the registered proprietor show that the infringement took place

after the person guilty thereof knew or had received notice of the existence of the copyright in

the design.

Q. 17. Can the Registration of a Design be cancelled ?

Ans.: The registration of a design may be cancelled at any time after the registration of design on

a petition for cancellation in form 8 with a fee of Rs. 1,500/-to the Controller of Designs on the

following grounds:

1. That the design has been previously registered in India or 2. That it has been published in India or elsewhere prior to date of registration or 3. The design is not new or original or 4. Design is not registrable or 5. It is not a design under Clause (d) of Section 2.

Q. 18. Is it mandatory to make the article by industrial process or means before making an

application for registration of design ?

Ans.: No, design means a conception or suggestion or idea of a shape or pattern which can be

applied to an article or intended to be applied by industrial process or means. Example- a new

shape which can be applied to a pen thus capable of producing a new appearance of a pen on the

visual appearance. It is not mandatory to produce the pen first and then make an application.

Q. 19. Why is it important for filing the application for registration of design at the earliest

possible ?

Ans.: First-to-file rule is applicable for registrability of design. If two or more applications

relating to an identical or a similar design are filed on different dates only first application will

be considered for registration of design.

Q. 20. Can the same applicant make an application for the same design again, if the prior

application has been abandoned ?

Ans.: Yes, the same applicant can apply again since no publication of the abandoned application

is made by the Patent Office, provided the applicant does not publish the said design in the

meanwhile.

Q. 21. How to get information on registration of design ?

Ans.: After registration of designs the most relevant view(s) of the article alongwith other

bibliographic data will be available in the official gazette, which is being published on every

Saturday. However, such provision cannot be implemented at this stage due to insufficient

infrastructure.

Q. 22. Whether it is possible to transfer the right of ownership ?

Ans.: Yes, it is possible to transfer the right through assignment, agreement, transmission with

terms and condition in writing or by operation of law. However, certain restrictive conditions not

being the subject matter of protection relating to registration of design should not be included in

the terms and condition of the contract/agreement etc. An application in form-10, with a fee of

Rs. 500/- in respect of one design and Rs. 200/- for each additional design, for registration of the

transfer documents is required to be made by the beneficiary to the Controller within six months

from the date of execution of the instruments or within further period not exceeding six months

in aggregate. An original/notarized copy of the instrument to be registered is required to be

enclosed with the application.

Q. 23. What is meant by priority claim ?

Ans. India is one of the countries party to the Paris Convention so the provisions for the right of

priority are applicable. On the basis of a regular first application filed in one of the contracting

state, the applicant may within the six months apply for protection in other contracting states,

latter application will be regarded as if it had been filed on the same day as the first application.

Q. 24. How it is possible to restore the lapse design due to non-payment of extension fee

within prescribed time ?

Ans.: a registration of design will cease to be effective on non-payment of extension fee for

further term of five years if the same is not paid before the expiry of original period of 10 years.

However, new provision has been incorporated in the Act so that lapsed designs may be restored

provided the following conditions are satisfied:

1. Application for restoration in Form-4 with fee of Rs. 1,000/- is filed within one year from the date of lapsed stating the ground for such non-payment of extension fee with

sufficient reasons.

2. If the application for restoration is allowed the proprietor is required to pay the extension fee of Rs. 2,000/- and an additional fee of Rs. 1,000/- and finally the lapsed registration is

restored.

Q. 25. Can the name, address of proprietor or address for service be altered in the register

of design ?

Ans.: Name of the registered proprietor, address or address for service can be altered in the

register of designs provided this alteration is not made by way of change of ownership through

conveyance i.e. deed of assignment, transmission, licence agreement or by any operation of law,

for which reference may be made to the answer against Q. 21. Application in form-22 with a fee

of Rs. 200/- should be filed to the Controller of Designs with all necessary documents in support

of the application as required.

Q. 26. Are the registered designs open for public inspection ?

Ans.: Yes, registered designs are open for public inspection only after publication in the official

gazette on payment of prescribed fee of Rs. 500/- on a request in Form-5.

Q. 27. Can the application for registration of design be filed by the applicant himself

only or through a professional person ?

Ans.: The application for registration of design can be filed by the applicant himself or through a

professional person (i.e. patent agent, legal practitioner). However, for the applicants not resident

of India an agent residing in India has to be employed.

Q. 28. How does a registration of design stop other people from exploiting ?

Ans.: Once a design is registered, it gives the legal right to bring an action against those persons

(natural/legal entity) who infringe the design right, in the Court not lower than District Court in

order to stop such exploitation and to claim any damage to which the registered proprietor is

legally entitled. However, it may please be noted that if the design is not registered under the

Designs Act, 2000 there will be no legal right to take any action against the infringer under the

provisions of the Designs Act, 2000.

The Patent Office does not become involved with any issue relating to enforcement of right

accured by registration, similarly The Patent Office does not involve itself with any issue relating

to exploitation or commercialization of the registered design.

Q. 29. What are the important criteria for determining a "set of article" ?

Ans.: If a group of articles meets the following requirements then that group of articles may be

regarded as a set of articles under the Designs Act, 2000:

a. Ordinarily on sale or intended to be used together. b. All having common design even though articles are different (same class). c. Same general character.

Generally, an article having the same design and sold in different sizes is not considered as a set

of articles. Practical example: "Tea set", "Pen set", "Knife set" etc.

Q.30. What is an artistic work which are not subject matter of registration ?

Ans.: An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject

matter for registration which reads as follows:

"Artistic works" means: -

i. A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality.

ii. An work of architecture and iii. Any other work of artistic craftsmanship.

Q. 31. What is meant by classification of goods mentioned in the Third Schedule ?

Ans.: In the third Schedule of Design Rules, 2001 the classification of goods has been

mentioned. The classification is based on Locarno Agreement. Only one class number is to be

mentioned in one particular application. It is mandatory under the Rules. This classification has

been made on the basis of Articles on which the design is applied.

Practical Example: If the design is applied to a toothbrush it will be classified under class 04-02.

Similarly if the design is applied to a calculator, it will be classified in class 18-01. Subsequent

application by the same proprietor for registration of same or similar design applied to any article

of the same class is possible, but period of registration will be valid only upto period of previous

registration of same design.

Q. 32. What is meant by Property mark as per the Indian Penal Code (Sec. 479) ?

Ans.: A mark used for denoting that movable property belongs to a particular person is called a

property mark. It means that marking any movable property or goods, or any case, package or

receptacle containing goods; or using any case, package or receptacle, with any mark thereon.

Practical example: The mark used by the Indian Railway on their goods may be termed as a

Property Mark for the purpose of easy identification of the owner.

Industrial Property Regulations Act, 1997

PART II

INDUSTRIAL DESIGNS

Definition of Industrial Design

17. (1) For the purposes of these Regulations, any composition of lines or colours or

any three dimensional form, or any material, whether or not associated with lines or

colours, is deemed to be an industrial design, provided that such composition, form or

material gives a special appearance to a product of industry or handicraft and can serve

as a pattern for a product of industry or handicraft, and appeals to and is judged by the eye.

(2) The protection under these Regulations does not extend to anything in an industrial

design which serves solely to obtain a technical result and to the extent that it leaves

no freedom as regards arbitrary features of appearance.

Registrable Industrial Designs

18.

(1) An industrial design is registrable if it is new. (2) An industrial design shall be new if it has not been disclosed to the public in Bhutan

by publication in tangible form or by use or in any other way, prior to the filing date or,

where applicable ,the priority date of the application for registration. Section 5(2)(c) shall apply mutatis mutandis.

(3) Industrial designs that are contrary to public order or morality shall not be registrable.

Right to Registration of Industrial Design; Naming of Creator

19. Section 6 shall apply mutatis mutandis.

Application

20.

(1) The application for registration of an industrial design shall be filed in the prescribed

manner with the Registrar and shall contain a request, drawings, photographs or other

adequate graphic representations of the article embodying the industrial design and an

indication of the kind of products for which the industrial design is to be used. It may

be accompanied by a specimen of the article embodying the industrial design, where

the industrial design is two dimensional. The application shall be subject to the payment of the prescribed application fee.

(2) Where the applicant is not the creator, the request shall be accompanied by a

statement justifying the applicants right to the registration of the industrial design.

(3) Section 9 shall apply mutatis mutandis.

(4) Two or more industrial designs may be the subject of the same application,

provided they relate to the same class of the International Classification or to the same set or composition of articles.

(5) The application, at the time of filing, may contain a request that the publication of

the industrial design, upon registration, be deferred for a period not exceeding 12

months from the date of filing or, if priority is claimed, from the date of priority, of the

application.

(6) The applicant may withdraw the application at any time during its pendency.

Examination; Registration and publication of Industrial Design

21.

(1) The Registrar shall accord as the filing date the date of receipt of the application,

provided that, at the time of receipt, the application contains indications allowing the

identity of the applicant to be established and the required graphic representation of

the article embodying the industrial design. Section 11(1) (b) shall apply mutatis. (2) After according a filing date, the Registrar shall examine whether the application

complies with the requirements of Section 20(1) and (2) and the Rules pertaining

thereto, whether the application fees has been paid and whether the industrial design

complies with the requirements of sections 17 and 18 (3) and the Rules pertaining thereto.

(3) Where the Registrar finds that the conditions referred to in subsection (2) hereof

are fulfilled, he shall register the industrial design, publish a reference to the

registration and issue to the applicant a certificate of registration of the industrial

design; otherwise, he shall refuse the application.

(4) (a) Notwithstanding subsection (3), where a request has been made under Section

20(5) for deferment of publication, upon registration of the industrial design, neither

the representation of the design nor any file relating to the application shall be open to

public inspection. In this case, the Registrar shall publish a mention of the deferment

of the publication of the Industrial design and information identifying the registered

owner, and indicating the filing date of the application, the length of the period for which deferment has been requested and any other prescribed particulars.

(b) At the expiry of the period of deferment, the Registrar shall publish the registered

industrial design.

(c) The institution of legal proceedings on the basis of a registered industrial design

during the period of deferment of publication shall be subject to the condition that the

information contained in the Register and in the file relating to the application has been communicated to the person against whom the action is brought.

Right Conferred by Registration; Duration; Renewal

22.

(1) The exploitation of a registered industrial design in Bhutan by person other than the

registered owner shall require the agreement of the latter.

(2) For the purposes of these Regulations, exploitation of an registered industrial design means the making, selling or importation of articles incorporating the industrial design.

(3) Section 13 (4) (a) (i) shall apply mutatis mutandis.

(4) The registered owner of an industrial design shall, in addition to any other rights,

remedies or actions available to him, have the right to institute Court proceedings

against any person who infringes the industrial design by performing, without his

agreement , any of the acts referred to in subsection (2) or who performs acts which make it likely that infringement will occur.

(5) The registration of an industrial design shall be for a period of five years from the

filing date of application for registration. The registration may be renewed for two

further consecutive periods of five years through the payment of the prescribed fee. A

period of grace of six months shall be allowed for the late payment of the renewal fee on payment of the prescribed surcharge.

Invalidation

23. (1) Any interested person may request the Court or the Registrar to invalidate the registration of an industrial design.

(2) The Court or the Registrar shall invalidate the registration if the person requesting

the invalidation proves that any of the requirements of Section 17 and 18 is not fulfilled

or if the registered owner of the industrial design is not the creator or his successor in title.

(3) Section 16(3) and (4) shall apply mutatis mutandis.

Industrial Property Regulations Act, 1997

PART III

MARKS, COLLECTIVE MARKS, TRADE NAMES AND OF ACTS UNFAIR

COMPETITION

Definition of Mark, of Collective Mark and of Trade Name

24. For the purposes of these Regulations:

(i) mark means nay visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise;

(ii) collective mark means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common

characteristic, including the quality, of goods or services of different enterprises which

use the sign under the control of the registered owner of the collective mark:

(iii) trade name means the name or designation identifying and distinguishing an enterprise.

Acquisition of the Exclusive Right to a Mark; Registrability

25.

(1) The exclusive right to a mark, as conferred by these Regulations, shall be acquired by registration in accordance with the provisions thereof.

(2) Nothing in these Regulations shall be deemed to affect rights of action against any

person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

(3) A mark cannot be validly registered if it is:

(i) incapable of distinguishing the goods or services of one enterprise from those of

other enterprises;

(ii) contrary to public order or morality;

(iii) likely to mislead the public or trade circles, in particular as regards the

geographical origin of the goods or services concerned or their nature or characteristics;

(iv) identical with, or is an imitation of or contains as an element, an armorial bearing,

flag and other emblem, a name or abbreviation or initials of the name of, or, official

sign or hallmark adopted by, any State, intergovernmental organization or

organization created by an international convention, unless authorized by the competent authority of that State or organization;

(v) identical with, or confusingly similar to, or, constitutes a translation of, a mark or

trade name which is well known in Bhutan for identical or similar goods or services of

another enterprise, or if, it is well known and registered in Bhutan for goods or

services which are not identical or similar to those in respect of which registration is

applied for, provided, in the latter case, that use of the mark in relation to those goods

or services would indicate a connection between those goods or services would indicate

a connection between those goods or services and the owner of the well known mark

and that the interests of the owner of the well known mark are likely to be damaged by such use;

(vi) identical with a mark belonging to a different proprietor and already on the

Register, or with an earlier filing or priority date, in respect of the same goods or

services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.

Application for Registration

(1) The application for registration of a mark shall be filed in the prescribed manner

with the Registrar and shall contain a request, a reproduction of the mark and a list of

the goods or services for which registration of the mark is requested, listed under the

applicable class or classes of the International Classification. It shall be subject to the

payment of the prescribed application fee.

(2)

(a) The application may contain a declaration claiming the priority, as provided for in

the Paris convention, of an earlier national or regional application filed by the applicant

or his predecessor in title , in which case, the Registrar may require that the applicant

furnish, within the prescribed time limit, a copy of the earlier application, certified as

correct by the Registry with which it was filed.

(b) The effect of the said declaration shall be as provided in the Paris Convention; if

the Registrar finds that the requirements under this subsection and the Rules

pertaining thereto have not been fulfilled, the said declaration shall be considered not

to have been made.

(3) The applicant may withdraw the application at any time during its pendency.

Examination; Opposition; Registration of Mark.

27.

(1) (a) The Registrar shall examine whether the application complies with the

requirements of Section 26 (1) and the Rules pertaining thereto.

(b)The Registrar shall examine and determine whether the mark is a mark as defined in Section 24(I) and is registrable under section 25(3) (I) to (vi).

(2) (a) Where the Registrar finds that the conditions referred to in subsection (1)

hereof are fulfilled, he shall forthwith cause the application, as accepted to be published in the prescribed manner.

(b) Any interested person may, within the prescribed period and in the prescribed

manner, give notice to the Registrar of opposition to the registration of the mark on the

ground that one or more of the requirements of section 24(I) and 25 (3) and the Rules pertaining thereto are not fulfilled.

(c) The Registrar shall send forthwith a copy of such a notice to the applicant, and

within the prescribed period and in the prescribed manner, the applicant shall send to

the Registrar a counter-statement of the grounds on which he relies for his application; if he does not do so, he shall be deemed to have abandoned the application.

(d) If the applicant sends a counter-statement, the Registrar shall furnish a copy

thereof to the person giving notice of opposition and, after hearing the parties, if either

or both wish to be heard, and considering the merits of the case, shall decide whether the mark should be registered.

(e) After an application is published and until the registration of the mark, the

applicant has the same privileged and rights as he would have if the mark had been

registered; however, it shall be a valid defence to an action brought here under in

respect of an act done after the application was published, if the defendant establishes that the mark could not validly have been registered at the time the act was done.

(3) Where the Registrar finds that the conditions referred to in subsection (1) are

fulfilled, and either;

(i) the registration of the mark has not been opposed within the prescribed time limit; or

(ii) the registration of the mark has been opposed and the opposition has been decided in the applicants favour,

he shall register the mark, publish a reference to the registration and issue to the applicant a certificate of registration. Otherwise, he shall refuse the application.

Rights Conferred by Registration; Duration ; Renewal

28.(1) The use of a registered mark, in relation to any goods or services for which it

has been registered by, any person other than the registered owner shall require the

agreement of the latter.

(2) The registered owner of a mark shall, in addition to any other rights, remedies or

actions available to him, have the right to institute court proceedings against any

person who infringes the mark by using, without his agreement, the mark as aforesaid

or who performs acts which make it likely that infringement will occur. The right shall

extend to the use of a sign similar to the registered mark and use in relation to goods

and services similar to those for which the mark has been registered, where confusion may arise in the public.

(3) The rights conferred by registration of a mark shall not extend to acts in respect of

articles which have been put on the market in Bhutan by the registered owner or with his consent.

(4) (a) The registration of a mark shall be for a period of ten years from the filing date of the application for registration.

(b) The registration of a mark may, upon request, be renewed for consecutive periods of ten years, provided that the registered owner pays the prescribed renewal fee.

(c) A period of grace of six months shall be allowed for the late payment of the renewal fee on payment of the prescribed surcharge.

Invalidation; Removal on Ground of Non - Use

29 (1) (a) Any aggrieved person may request in the prescribed manner the Court or

the Registrar to invalidate the registration of a mark.

(b) The Court or the Registrar shall invalidate the registration if the person requesting

the invalidation proves that any of the requirement of Section 24(I) and 25 (3) is not fulfilled.

(c) Any invalidation of a registration of a mark shall be deemed to have been effective

as of the date of registration, and it shall be recorded and a reference thereto published

as soon as possible.

(2) Any aggrieved person may request the court or the Registrar to order the removal

of a mark from the Register, in respect of any of the goods or services for which it is

registered, on the ground that up to one month prior to filing the request the mark

had, after its registration, not been used by the registered owner or a licensee during a

continuous period of three years or longer, provided that a mark shall not be removed

if it is shown that special circumstances prevented the use of the mark and that there

was no intention not to use or to abandon the same in respect of those goods or

services.

Collective Marks

30. (1) Subject to subsections (2) and (3), sections 25 to 29 shall apply to collective

marks, except that references therein to section 24 (I) shall be read as reference to Section 24 (ii).

(2) (a) An application for registration of a collective mark shall designate the mark as

a collective mark and shall be accompanied by a copy of the Rules governing the use of

the collective mark.

(b) The registered owner of a collective mark shall notify the Registrar of any changes

made in respect of the Rules referred to in paragraph (a).

(3) The addition to the grounds provided in Section 29(1), the Court or the Registrar

shall invalidate the registration of a collective mark if the person requesting the

invalidation proves that only the registered owner uses the mark, or that he uses or

permits its use in contravention of the Rules referred to in subsection (2) (a) or that he

uses or permits its use in a manner liable to deceive trade circles or the public as to the origin or any other common characteristics of the good or services concerned.

Licensing of Marks and Collective Marks

31. (1) Any license contract concerning the registration of a mark, or an application

therefor, shall provide for effective control by the licensor of the quality of the goods

and services of the licensee in connection with which the mark is used. If the license

contract does not provided for such quality control or if such quality control is not effectively carried out, the license contract shall not be valid.

(2) The Registration of a collective mark, or an application therefor, may not be the

subject of a license contract.

Trade Names

32. (1) A name or designation may not be used as a trade name if by its nature or the

use to which it may be put, it is contrary to public order or morality and if, in particular,

it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name.

(2) (a) Notwithstanding any laws or rules providing , for any obligation to register

trade names, such names shall be protected, even prior to or without registration,

against any unlawful act committed by third parties.

(b) In particular, any subsequent use of the trade name by a third party, whether as a

trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful.

Acts of Unfair Competition

33. (1) Any act of competition contrary to honest practices in industrial or commercial matters shall be unlawful.

(2) The following acts, in particular, shall be deemed to constitute acts of unfair

competition;

(i) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods or the industrial or commercial activities of a competitor;

(ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods or the industrial or commercial activities or a competitor;

(iii) indications or allegations the use of which in the course of trade is liable to mislead

the public as to the nature, the manufacturing process, the characteristics, the

suitability for their purpose, or the quantity of the goods.

PART IV

GENERAL PROVISIONS Changes in Ownership; License Contracts

34.

(1) Any change in the ownership of a patent, the registration of an industrial design or the

registration of a mark or collective mark, or in the ownership of an application therefor,

shall be in writing and shall, at the request of any interested party to the Registrar, be

recorded and, except in the case of an application, published by the Registrar. Such change shall have no effect against third parties until such recording is effected.

(2) Any change in the ownership of the registration of a collective mark, or in the ownership of an application therefor, shall require previous approval by the Minister.

(3) Any change in the ownership of a trade name must be made with the transfer of the enterprise or part thereof identified by that name and shall be in writing.

(4) A change in ownership of the registration of a mark or a collective mark shall, however

be invalid if it is likely to deceive or cause confusion, particularly in regard to the nature,

origin, manufacturing process, characteristics, or suitability for their purpose, of the goods

or services in relation to which the mark or collective mark is intended to be used or is

being used.

(5) Any license contract concerning a patent, a registered industrial design or a registered

mark, or an application therefor, shall be submitted to the Registrar who shall keep its

contents confidential but shall record it and publish a reference thereto. The license contract shall have no effect against third parties until such recording is effected.

Agents

35. Where an applicants ordinary residence or principal place of business is outside Bhutan, he shall be represented by a legal practitioner resident and practicing in Bhutan or

a person registered in the prescribed manner as an industrial property agent.

Organization of the Industrial Property Registry

36.

(1) (a) The Industrial Property Registry shall be established within the Ministry of Trade and Industry.

(b) The Industrial Property Registry shall be entrusted with all functions relating to the

procedure for the grant of patents and the registration of industrial designs, marks and

collective marks and for the administration of granted patents and registered industrial

designs and marks as specified in these Regulations and the rules,

(2) (a) The Registrar Shall be appointed by the Minister.

(b) The Registrar shall be assisted by such number of Deputy Registrars and Assistant Registrars as may be appointed.

(c) Decisions shall be signed by the Registrar or an official designated by him.

(3) The Minister shall determine the organizational structure and regulate all questions concerning the financial and budgetary system of the Industrial Property Registry.

Registers; Official Bulletin

37. (1) (a) The Industrial Property Registry shall maintain separate Registers for patents,

industrial designs and marks. Collective marks shall be registered in a special section of the

Register of Mark. All the recordings provided for in these Regulations shall be effected in

the said Registers.

(b) The Registers may be consulted by any person, and any person may obtain extracts therefrom, under the conditions prescribed in the Rules.

(2) The Industrial Property Registry shall publish in the Official Bulletin all the publications provided for in these Regulations.

Correction of Errors; Extension of Time

38. (1) The Registrar may, subject to any provision in the Rules, correct any error of

translation or transcription, clerical error or mistake in any application or document filed

with the Industrial Property Registry or in any recording effected pursuant to these Regulations or the Rules.

(2) If the Registrar is satisfied that the circumstances justify it, he may, upon receiving a

written request, extend the time for doing any act or taking any proceeding under these

Regulations and the Rules, upon notice to the parties concerned and upon such terms as he

may direct. The extension may be granted through the time for doing the act or taking the proceeding has expired.

Exercise of Discretionary Powers

39. (1) The Registrar shall give any party to a proceeding before him an opportunity of

being heard before exercising adversely to that party any discretionary power vested in him

by these Regulations or the Rules.

(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time under section 38 (2).

Appeals

40. Any decision taken by the Registrar under these Regulations, in particular the grant of

a patent or the registration of an industrial design or of a mark or collective mark, or the

refusal of an application for such a grant or registration, may be the subject of an appeal by

any interested party before the court and such appeal shall be filed within two months of the date of the decision.

Infringement; Unlawful Acts; Offences

41. (1) Subject to sections 13(4), 15, 22(3) and 28(3), an infringement shall consist of the

performance of any act referred to in sections 13, 22 and 28 in Bhutan by a person other than the owner of the title of protection and without the agreement of the latter.

(2) (a) On the request of the owner of the title of protection, or of a licensee if he has

requested the owner to institute court proceedings for a specific relief and the owner has

refused or failed to do so, the court may grant an injunction to prevent infringement, an

imminent infringement, or an unlawful act referred to in Sections 32(2) and 33, award damages and grant any other remedy provided for in the general law.

(b) On the request of any competent authority or any interested person, association or

syndicate, in particular of producers, manufacturers or traders, the Court may grant the same relief in case of an act of unfair competition referred to in Section 33.

(3) Any person who knowingly performs an act which constitutes an infringement as

defined in subsection (1) hereof or a unlawful act as defined in section 32(2) and 33 shall be

guilty of an offence punishable by a fine not exceeding Ngultrum one hundred thousand or by imprisonment for a term not exceeding one year, or by both.

(4) For the purposes of proceedings, other than criminal proceedings, in respect of the

violation of the right of the owner of the patent referred to in subsections(1) and (2), where

the subject matter of the patent is a process for obtaining a product, the burden of

establishing that a product was not made by the process shall be on the alleged infringer if either of the following condition is fulfilled:

(i) the product is new, or

(ii) a substantial likelihood exists that the product was made by the process and the owner

of patent has been unable through reasonable efforts to determine the process actually used.

(5) In requiring the production of evidence, the Court before which the proceedings

referred to in subsection(4) take place shall take into account the legitimate interests of the alleged infringer in not disclosing his manufacturing and business secrets.

Application of International Treaties

42. The provisions of any international treaties in respect of industrial property to which

Bhutan is a party shall apply to matters dealt with by these Regulations and, in case of

conflict with provisions of these Regulations and, in case of conflict with provisions of these

Regulations, shall prevail over the latter.

Rules; Administrative Instructions

43. (1) The Minister shall issue Rules prescribing details, for the implementation of these

Regulations. The Rules may, in particular, provide for the payment of fees in connection

with applications for the grant of patents and for the registration of industrial designs, marks and collective marks and matters related thereto.

(2) The Registrar may issue Administrative Instructions relating to the procedures under

the Regulations and the Rules as well as to the other functions of the Industrial Property

Registry.

Interpretation

44. In these Regulations, unless the context otherwise requires:

Court means a Court of competent jurisdiction;

International Classification means, as regards industrial designs the classification according to the Locarno Agreement Establishing an International Classification for

Industrial Designs of October 8, 1968, as last revised, and as regards marks, the

classification according to the Nice Agreement Concerning the International Classification of

Goods and Services for the Purposes of the Registration of Mark, of June 15, 1957, as last revised;

Minister means the Minister of the Trade and Industry;

Paris Convention means the Paris Convention for the Protection of Industrial Property of March, 20, 1883, as last revised;

Priority date means the Registers referred to in section 37 (1);

Registers means the Registers referred to in section 37(1);

Registrar means the Registrar of Industrial Property;

Rules means the Rules referred to in section 43 (1