THE ROLE OF DESIGN PATENTS IN PROTECTING PRODUCT AESTHETICS

ABSTRACT

A groundbreaking design has the capacity to transform the industry. Even the most basic designs, with their inherent effectiveness and distinctiveness, have satisfied consumers’ fundamental requirements for generations.[1] In the bustling world of innovation and commerce, products not only serve a functional purpose but also beckon us with their aesthetics. The sleek lines of a smartphone, the elegant curves of a luxury chair, or the distinctive look of a designer handbag—all these are not just incidental features but often the result of meticulous design. However, in this era of rapid imitation and replication, how can creators protect these visual identities? Enter the unsung heroes of intellectual property—design patents.

Keywords

Design, Design Patent, Aesthetics, Originality, Distinctiveness.

INTRODUCTION

In the constantly changing landscape of innovation, safeguarding intellectual property (IP) has become essential to business strategy. While utility patents, which protect the functionality of inventions, are well-known, design patents play a central role in maintaining the visual attractiveness of a product.[2]

Design patents are essential for protecting the visual aspects, or the ornamental look, of different products. In a world where distinguishing products and establishing brand identity are crucial, design patents offer inventors and companies a potent means to safeguard their distinctive designs from replication or mimicry.[3]

They encompass elements such as the form, surface embellishments, arrangement, or visual appeal that set a product apart from others available in the market. Design patents are vital for guaranteeing that a product’s visual attributes stay unique to its creator or proprietor, stopping others from producing, utilizing, or marketing a design that closely mimics the patented one.[4]

In this article we are going to discuss the role of design patents in preserving the aesthetics and originality of a product. It also summarily deals with the protection afforded to design patents under the Indian legal domain.

DEFINING THE ESSENCE OF DESIGN PATENTS

Design patents represent a distinctive subset of intellectual property protections designed specifically to safeguard a product’s decorative design and visual presentation. In contrast to utility patents, which concentrate on the functionality and construction of an invention, design patents are focused on preserving the overall appearance, form, and surface embellishments.[5]

Design patents are essential for safeguarding the distinct visual aspects of products, ranging from their shapes to surface patterns. Their purpose is to deter the creation or sale of similar items, offering a less expensive and intricate alternative to utility patents. Failing to patent a design opens the door to imitation, making them crucial for protecting a company’s distinct product designs and competitive edge, as illustrated by notable cases such as Apple’s legal battle with Samsung over its iPhone design patents.[6]

A design patent may be granted for products with a distinct shape, configuration, or surface decoration. A design patent provides protection for the ornamental aspect of a product that also serves a practical function.

An item shielded by a design patent enjoys extensive protection against copyright violations. A design, even if it was not created as a copy and was independently developed without knowledge of an existing, design-patent-protected item, could still infringe upon that design patent. In certain nations like the U.S., Canada, China, Japan, and South Africa, applications for design patents remain confidential until they are officially approved.

A design patent should not be conflated with a utility patent, which shields the distinct manner in which an item operates or its functionality. A design patent, on the other hand, safeguards the appearance of an object. It is possible for a single product to hold both a design patent and a utility patent simultaneously. One notable distinction between these patents is their duration. Whereas a design patent typically endures for 14 or 15 years, contingent upon its filing, a utility patent remains valid for 20 years and necessitates regular maintenance fees. Unlike a utility patent, a design patent does not entail maintenance fees.

Some examples of design patents may be ornamental designs on jewelry, automobiles or furniture, as well as packaging, fonts, and computer icons. Some of the most famous design patent items include the original shape of Coca-Cola bottle (1915) and the Statue of Liberty (1879).

When a company’s product design holds significant prestige, a design patent fortifies its competitive edge by penalizing other firms attempting to create similar-looking products. For instance, Apple was granted damages reportedly exceeding $1 billion from Samsung, which infringed upon its iPhone design patents.[7]

In a market flooded with comparable products, consumers frequently base their purchasing choices on aesthetics. Design patents provide inventors and companies with a competitive advantage by hindering others from copying the visual elements of their innovations. This exclusive privilege plays a crucial role in shaping brand identity, nurturing consumer confidence, and upholding a competitive edge in the market.[8]

KEY ELEMENTS OF DESIGN PATENTS[9]

Novelty and Originality: For eligibility for design patent safeguarding, the design must exhibit novelty and originality. It should not have been revealed to the public or widely recognized before the filing date.
Ornamental Characteristics: Design patents protect the decorative or ornamental aspects of a product. The design must be non-functional, as functional features are covered by utility patents.
Distinctiveness: The design must possess enough distinctiveness to be readily discernible from existing designs within the same category.

ESSENTIAL ROLES OF DESIGN PATENTS[10]

In a market where distinguishing products is crucial, design patents serve as protectors of visual creativity. They safeguard the imaginative concepts of designers and businesses, providing a legal structure that encourages innovation, reinforces brand recognition, and supports economic development.

PRESERVING ORIGINALITY:

In a crowded marketplace where products compete for attention, visual appeal often emerges as a crucial factor in attracting consumers. At the core of design patents lies the concept of originality. When a designer crafts a product with a unique appearance, a design patent ensures that this creativity receives due recognition and protection. This safeguard extends not just to the overall product but also to its smallest details that define its aesthetic charm.

Consider the iconic designs that have become synonymous with their respective brands—a swoosh on athletic footwear, a sleek logo on tech gadgets, or the distinctive shape of a cola bottle. These symbols are more than just incidental; they are carefully crafted identities. Design patents serve as a barrier around these identities, dissuading imitators and preserving the uniqueness that consumers appreciate and admire.

Design patents act as a protective shield, guaranteeing that a product’s distinct appearance remains the sole domain of its creator. This exclusivity promotes and rewards creative efforts, nurturing a culture of innovation within design-focused industries.

BRAND IDENTITY AND PROMOTING FAIR COMPETITION:

Obtaining a design patent not only provides a shield against imitations but also reinforces a brand’s identity. The unique visual characteristics become synonymous with the brand, amplifying its recognition among consumers. This distinctiveness sets the brand apart from rivals, fostering customer loyalty and trust. In essence, design patents transcend mere legal protection; they emerge as a strategic asset in shaping and fortifying a brand’s identity within the marketplace.

Design patents not only safeguard the interests of individual creators but also promote equitable competition in the market. By deterring unauthorized replication or imitation of a product’s design, design patents ensure that competitors cannot capitalize on the success of a visually appealing product without investing in the creation of their own distinctive design. This fosters equitable competition, where companies must differentiate themselves through genuine innovation rather than duplicating the designs of others.[11]

ECONOMIC ADVANTAGE AND ENHANCING CONSUMER CHOICE:

The significance of design patents in the economy cannot be overstated. For businesses, these patents serve as substantial assets that impact investment decisions and market strategies. They offer a competitive edge by safeguarding the investment made in design and aesthetics, thereby encouraging further innovation and differentiation.

Consumers are not only attracted to functionality but also to the emotional appeal and prestige associated with well-designed products. Design patents, by protecting these aspects, enhance the commercial value of products and boost their market appeal.

The availability of design patents also expands consumer choice by fostering a broader range of aesthetically pleasing products. When creators have assurance that their designs are safeguarded, they are more inclined to invest in introducing distinctive and visually appealing products to the market. This results in a diverse array of options for consumers, enabling them to select products that resonate with their individual preferences and tastes.[12]

DRIVING INNOVATION AND CREATIVITY :

Furthermore, design patents serve as catalysts for fostering innovation and creativity. By ensuring that innovators receive recognition and protection for their distinct design ideas, these patents promote an ongoing cycle of innovation.

They motivate designers and businesses to explore the boundaries of creativity, knowing that their original visual concepts are safeguarded. Design patents serve as a potent tool for preserving the uniqueness of product aesthetics. By granting exclusive rights to the design, creators are encouraged to invest in the creation of distinctive and visually appealing products.

This stimulation of innovation pushes designers to explore unconventional ideas, resulting in a wide array of aesthetically pleasing products in the market.[13]

LEGAL ARSENAL AGAINST IMITATORS- INDIAN LEGAL FRAMEWORK

When infringement arises, design patents emerge as potent tools in the legal arsenal. They empower creators to uphold their rights and seek remedies against those who unlawfully profit from their designs. The legal framework surrounding design patents ensures that the dedication of time, effort, and creativity invested in a product’s aesthetics remains uncompromised amidst the proliferation of blatant imitations flooding the market.

Design rights are territorial statutory rights (enforceable solely upon the registration of the design) that enable the owner to prevent others from manufacturing, importing, selling, or distributing products with an identical appearance or a deceptive or obvious imitation. The filing, processing, and registration of industrial designs in India are regulated by the Design Act, 2000, and the corresponding Design Rules, 2001.[14]

The Act has been put into effect with the primary aim of providing the minimum level of protection for designs as outlined in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), while adhering to international standards of protection. According to the Act, a ‘design’ encompasses the features of shape, configuration, pattern, ornamentation, or composition of lines or colors applied to any article, whether in two or three dimensions, or both, through any industrial process or means, be it manual, mechanical, or chemical, either separately or in combination. These features, in the final product, are judged solely by visual appeal.

But the scope of protection offered under the Act excludes the following:

any mode or principle of construction;
anything essentially a mere mechanical device; and
any trademark as described in clause (v) of subsection (1) of section 2 of the Trade and Merchandise Marks Act, 1958, or a property mark as defined in section 479 of the Indian Penal Code, or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

The Act aims to safeguard novel or original designs that can be applied to a specific article producible through an industrial process or means. The primary objective of design registration is to guarantee that the creator, designer, or originator of an aesthetically appealing design is not denied their rightful reward by others using it for their products. Therefore, the originality of a new design is considered to be its creation by the author of such a design and encompasses situations where designs, though old in their essence, are new in their application.⁵

Hence, according to Section 4 of the Act, some key requirements for design registration include:

• Being new or novel;

• Not having been disclosed through publication or use anywhere globally, including in India or previously claimed in an application elsewhere, thus not being part of the public domain or considered state of the art;

• Being notably distinguishable from known designs or a combination of known designs; and

• Not including any scandalous or obscene content.

When a design satisfies the legal requirements, it is officially registered, granting the owner a copyright for that design lasting 10 years from the registration date (or from the priority date if priority is claimed). This protection can be extended for an additional 5 years if requested within the initial protection period.

LOCARNO CLASSIFICATION

The Locarno Agreement was initially established in 1968 to serve as a standard for the consistent international classification of goods for the registration of industrial designs. This Classification comprises classes and sub-classes of around 5,000 goods listed alphabetically. India formally joined the Locarno Classification Agreement in June 2019.

DESIGN PROTECTION UNDER THE PARIS CONVENTION

India’s membership in the Paris Convention signifies that the regulations concerning the right of priority are operational. In line with these regulations, an applicant has the opportunity, within a timeframe of no more than six months (starting from the filing date of the initial application in India), to pursue design protection in other member states of the Convention. This subsequent application will be treated as though it was submitted on the same day as the first application.[15]

RELEVANT CASE LAWS

INTERNATIONAL CASE

Gorham Co. v. White[16]

The fundamental examination for establishing infringement of a design patent was established in the landmark case of Gorham Co. v. White. In Gorham, the United States Supreme Court ruled that infringement of a design patent occurs when: “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same.”

In 2008, a Federal Circuit court affirmed that the “ordinary observer test,” as set forth in Gorham, serves as the exclusive method for determining design patent infringement; however, this assessment must be “conducted in light of the prior art.” If a design patent closely resembles prior art, then the distinctions between the design patent and the potentially infringing products will be emphasized. Consequently, the appropriate basis for determining design patent infringement is whether a normal observer would find two designs substantially identical, considering the prior art.

Crocs v. ITC[17]

The Federal Circuit court, in a case involving Crocs, issued a ruling of infringement against ITC, noting that a “side-by-side comparison of the… products indicates that an average observer, familiar with the prior art designs, would be misled into thinking the accused products are identical to the patented design.” Specifically, the Federal Circuit court clarified that “small variances between a patented design and the design of an accused article cannot, and should not, preclude a determination of infringement.” The illustration below illustrates a direct comparison of the two products in question in the case.

Victor Stanley v. Creative Pipe[18]

The Federal District Court of Maryland, in the case of Victor Stanley, determined that the makers of a park bench violated a preceding design patent because “an average observer, acquainted with previous art designs, would find it difficult to distinguish them in a direct comparison without particularly careful scrutiny.” The illustration below demonstrates a direct comparison of the products.

While the previous art in Victor Stanley presented a looped armrest and curved legs for the bench, both the ‘623 patent and the infringing design showcased pronounced curvature of the legs, which served as the distinctive feature of the ‘623 patent and the previous art.

INDIAN CASE[19]

Whirlpool of India Vs Videocon Industries[20]

In 2012, Whirlpool Of India Ltd encountered a washing machine produced and sold by the Defendant, Videocon Industries Ltd., under the brand name “Videocon Pebble.” This washing machine bore striking resemblance and/or similarities in design and shape features to the products of Whirlpool Of India Ltd. and the designs registered by Whirlpool. According to Whirlpool, a mere glance at the Defendant’s product unmistakably reveals it as a direct copy of Whirlpool’s product and/or its registered designs. The shape and features of Videocon’s washing machine closely reflected that of Whirlpool’s. Videocon’s washing machine replicated the precise and innovative combination of the distinctive circular washing area, the compact control panel aligned to the right, and the distinct rectangular drying area from an external perspective.

However, Videocon argued that there was no possibility of imitation or counterfeit, contending that consumers do not purchase a washing machine based on its shape, color, appearance, or overall design. “People purchase such expensive items primarily based on branding and not aesthetics,” as asserted by Videocon.

Upon review, the court found that the devices possessed distinct forms or appearances and were easily identifiable during the “Judging by the Eye” examination. The judgment on Videocon’s washing machine highlighted that the form and design of the washing machine were unmistakable. As a result, the High Court of Mumbai restrained Videocon from manufacturing and marketing its product, the Videocon Pebble washing machine, commercially.

CONCLUSION

Designs have a vital role in visually distinguishing one’s products from competitors, especially given the increasing competition in the industry. Protecting these designs is essential for gaining a competitive edge. The requirement for visual appeal to qualify as a design leaves a lasting impression on consumers, establishing a unique association with the owner over time.[21]

Within the realm of intellectual property, design patents serve as guardians of creativity, safeguarding the distinct visual character of inventive products. Industrial designs, emphasizing the blend of form and function, are crucial in defining the appearance and utility of everyday objects. As companies persist in their pursuit of innovation, recognizing and utilizing the influence of design patents becomes crucial for establishing a competitive advantage in the marketplace and nurturing an environment of creativity and ingenuity.[22] In a world where imitation is easy, design patents serve as beacons of originality, guiding us towards a future where creativity thrives, and every design is a masterpiece worthy of protection.

REFERENCES

EXCELONIP, https://excelonip.com/whirlpool-of-india-vs-videocon-industries/#:~:text=The%20court%20determined%20that%20the,confirmed%20the%20trial%20judge’s%20ruling. (last visited March 31,2024).
FASTERCAPITAL, https://fastercapital.com/content/Design-Patents–Safeguarding-Aesthetic-FFIP-in-Products.html (last visited March 21, 2024).
JT, Design Patents: Protecting the Aesthetics of Your Inventions, BREALANT (March 19, 2024, 4:03 PM) https://www.patent.net.ph/design-patents-protecting-the-aesthetics-of-your-inventions/
S.S. Rana & Co. Advocates, India: Protection And Enforcement Of Design Rights In India, MONDAQ (March 21, 2024, 1:01 AM ) https://www.mondaq.com/india/trademark/984694/protection-and-enforcement-of-design-rights-in-india
S.S. RANA & CO. ADVOCATES, https://ssrana.in/ip-laws/design-law-india/, (last visited March 21, 2024).
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WISSEN RESEARCH, https://www.wissenresearch.com/unveiling-the-art-of-protection-a-deep-dive-into-industrial-designs-and-design-patents/, (last visited March 19, 2024).

[1] S.S. Rana & Co. Advocates, India: Protection And Enforcement Of Design Rights In India, MONDAQ (March 21, 2024, 1:01 AM ) https://www.mondaq.com/india/trademark/984694/protection-and-enforcement-of-design-rights-in-india

[2] JT, Design Patents: Protecting the Aesthetics of Your Inventions, BREALANT (March 19, 2024, 4:03 PM)https://www.patent.net.ph/design-patents-protecting-the-aesthetics-of-your-inventions/

[3] FASTERCAPITAL, https://fastercapital.com/content/Design-Patents–Safeguarding-Aesthetic-FFIP-in-Products.html (last visited March 21, 2024).

[4] TT CONSULTANTS, https://ttconsultants.com/design-patents-crafting-a-shield-for-aesthetic-excellence/#:~:text=Unlike%20utility%20patents%20that%20protect,from%20others%20in%20the%20market (last visited March 20, 2024).

[5] JT, supra note 2.

[6] Will Kenton, Design Patent: Definition, How It Works, Examples, INVESTOPEDIA (March 19, 2024, 9:19 PM), https://www.investopedia.com/terms/d/design-patent.asp.

[7] Id.

[8] JT, supra note 3.

[9] WISSEN RESEARCH, https://www.wissenresearch.com/unveiling-the-art-of-protection-a-deep-dive-into-industrial-designs-and-design-patents/, (last visited March 19, 2024).

[10] TT CONSULTANTS, supra note 2.

[11] FASTERCAPITAL, supra note 2.

[12] Id.

[13] Id.

[14] S.S. RANA & CO. ADVOCATES, https://ssrana.in/ip-laws/design-law-india/, (last visited March 21, 2024).

[15] S.S. Rana & Co. Advocates, supra note 2.

[16] 81 U.S. 511 (1871)

[17] 598 F.3d 1294 (Fed. Cir. 2010)

[18] 2011 LEXIS 112846 (D.Md. 2011)

[19] EXCELONIP, https://excelonip.com/whirlpool-of-india-vs-videocon-industries/#:~:text=The%20court%20determined%20that%20the,confirmed%20the%20trial%20judge’s%20ruling. (last visited March 31,2024).

[20] (L) 1675 of 2012

[21] Id.

[22] WISSEN RESEARCH, supra note 2.

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