REGISTRATION OF DESIGN

REGISTRATION OF DESIGN

In our daily life we see a lot of artificial articles and things which carries a specific shape or dimensions which enable us to identify that article and create a impression in our mind to its manufacturer. That specific shape or dimension is called “Design”. Legislation has defined the design per Section 2(d) as only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, 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.

Design has been identified as the Intellectual Property Right of the person who creates or draws such shape, configuration or pattern using his skills.

Points to be taken care before making application of design (Section 4):

·         Design shall be new and original

·         Design shall not have been disclosed to the public anywhere in India or abroad by any publication or use prior to the date of filing

·         The Design shall not resemble with the designs already registered.

·         The design shall not be any scandalous or obscene material.

·         Any work which consist any literal or artistic work cannot be applied as the Design such as paintings, books etc.

Step wise procedure:

·         Any person being the proprietor of a new or original design or the legal representative or the assignee can apply for the registration, which includes any partnership firm and body corporate.

·         Before applying for the registration of design the department may be approach for the search of the design through Form-7 (Rs. 1000/-). It may be taken note that the Form-7 is submitted only to the Kolkata Office. The zonal offices are entitled to take only Form-1. Hence, any request to search shall be submitted to the Kolkata Office only. However if the registration number is know then Form No. 6 (Rs. 500/-)

·         The search is not mandatory, however, recommended. An application for the registration may be made to the department at the Address under Form -1 with a fee of Rs. 1000/-. The Application shall be submitted to the Design Wing of the Patent Office at "Intellectual Property Office", CP-2, Sector V, Salt Lake, Kolkata - 700 091 or any of the Branch Offices of the Patent Office at Delhi, Mumbai and Chennai. The Application (Form-1) shall be accompanied with:

                                 (i).            Cheque of Rs. 1000/- drawn in favor of The Controller of Patents, Kolkata.

                               (ii).            Representation (in quadruplicate of size 33 cm x 20.5 cm with a suitable margin) of the article. Drawings \ sketches should clearly show the features of the design from different views and state the view (e.g. front or Bide).

                             (iii).             A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark, work, letter, numerals should be endorsed on each representation sheet which should be duly signed and dated.

                              (iv).            Power of attorney (if necessary).

                                (v).            Priority documents (if any) in case of convention application claimed under Section 44 of the Designs Act, 2000.

The Department shall analyze the application and shall communicate the applicant about any defect thereto. After rectification of the defect, a certificate of registration is issued in the name of the Applicant.

Disclaimer: The procedure mentioned above is based upon the individual analysis of the author. Author or any of its associates shall not be liable for any damages, of whatsoever in nature, caused due to any person acting solely on behalf of this article.

Use of trademark for unrealted goods and consequences

Using the registered mark in unrelated/different goods amounts to the infringement of trademark.

In the recent judgment delivered by Hon’ble Delhi High Court in Anchor Health & Beauty Care Pvt. Ltd. vs. Shivam Hygienes India Pvt. Ltd, a penalty of Rs. 5,00,000/- alongwith the litigation cost of Rs. 25,000/- was imposed on the user of similar trademark for altogether different goods.

The plaintiff, Anchor Health & Beauty Care Pvt. Ltd , has filed the suit alleging infringement of its trademark “ANCHOR” by the defendant, Shivam Hygienes.

The Plaintiff is a well known Indian Company belong to the ANCHOR group of companies. The initial range of products offered by the plaintiffs were switches, which were manufactured from a small unit in Mumbai. However, over the past 45 years the group had spread, and is claimed to be a truly Indian Multinational having a large range of products including the FMCG products such as Anchor White Tooth Paste, Gel Tooth Paste, Dyna Soap and confectionery items. The plaintiffs claim user of their mark ANCHOR in a large number of classes and for a large specification of goods since the year 1963. The class wise registration claimed to have been obtained by the plaintiffs for its mark ANCHOR. The plaintiffs claim that the mark ANCHOR is registered in a large number of countries and applications for registration are pending in several countries.

The claim of the plaintiffs is that apart from the statutory rights in the trademark ANCHOR, the plaintiffs also enjoy common law rights in their mark and logo owning to such extensive, long and continuous use.

The plaintiffs placed on record the packaging material used by the defendants to market their CTC Tea under the brand ANCHOR with the device of ANCHOR. The defendants have used the mark ANCHOR and the device in the following manner:

Hon’ble High Court analyzed the fact and opined as follows:

Ø In the present case, the impugned mark adopted by the defendant bears the same word “ANCHOR” as that of the plaintiff. Owing to the fact that the plaintiff’s mark is associated with FMCG products like soaps , toothpastes etc, amongst other goods, the use of the word “ANCHOR” by the defendant in respect of FMCG products, like tea in the instant case, is likely to mislead a consumer into believing that the defendant’s product is offered by the plaintiffs.

Ø A consumer with imperfect memory is likely to remember the name “Anchor” and associate the defendant’s goods with those of the plaintiffs, even if the logo of the defendant isn’t identical to the plaintiff’s trademark, but bears a close resemblance to it.

Ø The products sold under the impugned mark are available at the same stores, on the same shelves, where the plaintiff offers for sale its FMCG goods and therefore there exists a high likelihood of confusion amongst consumers. (In case of Hamdard National Foundation)

Ø Notably, even in cases where the goods offered under the impugned mark are not cognate to the plaintiff’s goods, the Courts have leaned in favour of preventing a party from riding on another’s goodwill to mislead the consumers.

Ø In Bata India Limited, the plaintiffs’ trademark “Bata” was registered in respect of canvas, rubber, leather shoes etc. The defendants were using the impugned mark “Batafoam” in respect of mattresses, sofas, cushions etc. The Court restrained the defendant from using the impugned mark observing that

Ø Other cases in this context are :

(i) Time Incorporated Vs. Lokesh Srivastava & Anr., 2005 (30) PTC 3(Del);

(ii) Microsoft Corporation Vs. I. Sadiq Batcha & Ors., 2009 (40) PTC 477 (Del); and

 (iii) St. Ives Laboratories INC Vs. Sunny Bakshi & Anr., 2009 (41) PTC 231

Hon’ble High Court deliver the judgment as follows:

“In view of the aforesaid discussion, and the aspects that the trademarks are identical and logos are confusingly and deceptively similar and are being used by the defendant in respect of cognate goods, in my view, the plaintiffs have made out a case for grant of injunctive relief, as prayed for in the plaint and for award of damages against the defendant. Accordingly, the suit is decreed in terms of prayer (a) of para 25 of the plaint. A further decree is passed in favour of the plaintiffs and against the defendant for Rs. 5,00,000/- towards damages. The plaintiffs shall also be entitled to costs, which are quantified at Rs. 25,000/-.”

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