Design
Design law, often referred to as industrial design (ID) law, is a branch of intellectual property (IP) law that deals with the protection of the visual and aesthetic aspects of industrial and consumer products. The primary objective is to safeguard the unique and non-functional design elements of products, promoting innovation and preventing unauthorized copying or imitation. The key aspects of design law are:
Our team of highly experienced Design attorneys are adept at providing end-to-end value-added/quality design registration/protection services to diverse range of clientele across various jurisdictions. Our proficiency in evaluating features eligible for design registration/protection ensures well-curated strategies for efficiently achieving design registration grants. Our expertise lies in adhering to strict timelines while also supplying following high-quality services to propel your organization’s competitive curve:
Our services
Filing Design Applications
A. Searching and Analysis
A design search typically refers to the process of searching for existing designs to determine whether a particular design is already registered or in use. This is a crucial step, especially for individuals or businesses looking to protect a new design through registration or to avoid infringing on existing design rights. We cater our diverse range of clientele to:
- Conducting comprehensive design application and literature-based searches using proprietary databases/ tools.
- Carrying out in-depth analysis of the search results to determine the registrability/novelty of a design
- Drafting reports to provide legal opinion/approach/statement of novelty.
✔ Purpose of design search:
- Avoiding Infringement: Ensuring that a proposed design does not infringe on existing design rights.
- Registration Process: Checking for similar designs before applying for design registration to assess novelty and uniqueness.
✔ Sources of Design Search:
- Intellectual Property Offices: National or regional intellectual property offices maintain databases of registered designs.
- Online Databases: Various online platforms and databases allow users to search for registered designs globally.
Such as, WIPO’s Global Design Database, the European Union Design Database, and the United States Design Patent Database.
Some design search tools also allow users to upload an image or provide a description of the design to find visually similar designs.
✔ Steps in a Design Search:
- Identifying Key Features: Clearly identifying the distinctive features of the design to be searched.
- Selecting Search Criteria: Using relevant keywords, classifications, or visual elements to conduct the search.
- Conducting the Search: Utilizing databases to look for similar or identical designs.
- Analysing Results: Assessing the search results to determine the availability or uniqueness of the proposed design.
Time duration: This process usually takes 1-3 days as per requirement.
B. Design classification
Design searches often involve using classification systems (such as the Locarno Classification) to categorize designs based on their visual characteristics. Our design attorneys expertise in identifying/evaluating the class of a design, and providing client advisory.
C. Application drafting
Drafting a design application involves preparing the necessary documentation and information for filing a design registration with the relevant intellectual property office. The design application should provide a clear and complete description of the design, along with any visual representations or drawings. With in-depth knowledge of Design law, our Design attorneys expertise in preparing well-curated/well-articulated descriptions and illustrations to fortify your design.
Our general design application drafting practice comprises:
- Understanding the design to be protected. Identifying its unique and distinctive features.
- Carrying out preliminary search to ensure that the design is novel and not already registered or in use by others.
- Gathering all relevant documentation, including sketches, drawings, or other visual representations of the design.
- Creating clear and accurate design drawings or representations. Using views that best showcase the unique features of the design.
- Preparing a detailed written description of the design to compliment the visual representations and highlight specific elements of the design.
- Classifying the design according to the appropriate classification system (e.g., Locarno Classification) based on its visual characteristics.
- Providing a name or title for the design, if applicable, for identifying and referring to the design.
- Including accurate information about the Applicant. Providing contact details for correspondence.
- If the design application claims priority from an earlier application, including the details of the priority application.
- Ensuring that the design application meets the formal requirements of the relevant intellectual property office. This may include provision of specific file formats for drawings, document size, and other administrative details.
- Drafting and providing a Power of Attorney document for authorization on behalf of the client.
Time duration: This process usually takes 1-3 days as per requirement.
D. Design filing (India or Overseas)
Filing a design application involves submitting the necessary documentation and information to the appropriate intellectual property office for the purpose of obtaining protection for a design. We cater our wide range of clientele to:
E. Domestic filing:
Filing a design application in India involves procedures outlined by Design Act, 2000. We support in:
- Ensuring that the design is eligible for protection under the Act
- Conducting preliminary searches
- Preparing design representation
- Classifying the design
- Preparing design application form as per the guidelines provided by IPO
- Submitting the application along with requisite fees (online/physical) at the designated design office
F. International filings:
Source: link
Filing for international design protection involves seeking design rights in multiple countries through a unified and streamlined process. The Hague System for the International Registration of Industrial Designs, administered by the World Intellectual Property Organization (WIPO), is one of the primary mechanisms for international design filing. We support in:
- Determining Eligibility: Checking if the country or countries of interest are members of the Hague System. Not all countries are part of the system, so it’s essential to verify eligibility.
- Eligibility of Designs: Ensuring that the design is eligible for international registration. The design must be new and have an industrial or handicraft application.
- Carrying out preliminary search, and design classification
- Preparing application form: Drafting the application form provided by Hague system. Including details about the applicant, design, and any other required information.
- Submitting the application to WIPO (online or offline format). Paying necessary fees depending on factors like the number of design and classes.
Our well-systemized filing services adhere to the local requisites and assure fortified and swiftly timed/quick-paced/fast paced design filings within the desired jurisdictions (India or Overseas).
Time duration: This process usually takes 1-3 days as per requirement.
Design Monitoring
Design monitoring involves systematic tracking and assessing of the status of registered designs to ensure their continued protection, and to detect and address potential infringements. Effective design monitoring is essential for safeguarding intellectual property rights and taking prompt action against any unauthorized use or copying of protected designs. We understand that it is pivotal to keep tabs on new design filings and evaluate identical and/or similar designs. Our team guarantees well-regulated assessment and reporting of designs that closely relate to our client’s criteria, permitting them to feasibly undertake following suitable actions to curb any potential infringement:
- Creating a Monitoring Strategy: Defining the objectives of your design monitoring efforts. Determining the scope of the monitoring, including the territories, industries, and competitors you want to focus on.
- Identifying Key Competitors and Markets: Identifying competitors and markets relevant to your industry where potential infringements may occur. Considering both domestic and international markets.
- Establishing the Monitoring Tools and Systems: Utilizing tools and systems to monitor design databases, legal publications, industry publications, and online platforms. Some tools allow for automated monitoring based on predefined criteria.
- Reviewing Official Gazettes and Databases: Regularly reviewing official design gazettes and databases provided by intellectual property offices to stay updated on newly registered designs and identify potential conflicts.
- Setting up Alerts and Notifications: Setting up alerts and notifications for changes in design databases, competitor activities, or industry trends. Automated alerts help in timely detection of potential issues.
- Engaging Professional Monitoring Services: Evaluating and considering the requirement of engaging professional intellectual property monitoring services that specialize in tracking design registrations and potential infringements.
- Monitoring Online Platforms and Marketplaces: Keeping an eye on online platforms, e-commerce websites, and marketplaces where products featuring designs similar to yours may be offered for sale.
- Attending Trade Shows and Exhibitions: Aiding to actively participate in or monitoring industry trade shows and exhibitions where new designs are showcased. This can help identify emerging trends and potential infringements.
- Collaborating with Industry Associations: Aiding to collaborate with industry associations that may provide insights into market developments, design trends, and potential infringements.
- Establishing Internal Procedures: Aiding to develop internal procedures for receiving and evaluating reports of potential infringements from employees, customers, or other stakeholders.
- Regularly Reviewing Competitor Products: Regularly reviewing/ aiding to regularly review competitor products to identify any similarities with your protected designs. This may involve physical inspections or monitoring online product listings.
- Providing legal Analysis and Opinion: Providing legal opinions by assessing the strength of the case and evaluating potential infringement cases.
- Enforcing Design Rights: If potential infringements are identified, taking prompt legal action to enforce design rights. This may involve sending cease-and-desist letters, negotiating settlements, or pursuing litigation.
- Maintaining Comprehensive Records: Keeping comprehensive records of design registrations, monitoring activities, and enforcement actions. This documentation is valuable for legal proceedings and strategic decision-making.
- Regularly Updating Monitoring Strategies: Design landscapes, market trends, and competitor activities change over time. Regularly updating and adapting design monitoring strategies to remain effective.
Effective design monitoring helps protect investment in intellectual property, maintain a competitive edge, and preserve the distinctiveness of a designs in the marketplace. It requires a combination of proactive surveillance, strategic analysis, and timely enforcement actions.
Design Prosecution
Design prosecution refers to the process of filing, examining, and securing a design from a government patent office. Our team specializes in evaluating, and prosecuting design applications to ensure their speedy registration by:
✔ Replying to examination reports
Evaluating examination report and strategically drafting appropriate responses to address the contentions raised by the Examiner / Controller.
✔ Attending hearings
Appearing before the Examiner/ Controller and strategically addressing contentions raised by the Examiner/ Controller to secure design registration.
We, at Stratjuris Law Partners understand the cruciality of effective communication with the Controller for feasible design grant, and ensure effectuating significant role in navigating complexities of design prosecution and increasing the likelihood of a successful outcome.
✔ For international filing:
- Providing legal opinion with respect to office actions/ national examination reports of designated countries and/or support to respond to contentions presented therein.
- Providing support to initiate hearings
Time duration: This process usually takes 6-10 days as per requirement.
Licensing and Assignment
We understand that licensing and technology transfer aids in commercializing IP and maximally capitalizing its gains. We expertise in identifying and studying the requisite domain, and strategizing and directing our clients to seek/propel their prospective business goals by:
Licensing: Licensing a design involves granting permission to someone else to use, produce, and/or sell your design while you retain ownership of the design. Licensing is a common practice in various industries, such as fashion, graphic design, product design, and more. We expertise in:
- Understanding Your Design: Clearly defining and documenting the design. This may include detailed specifications, drawings, or any other relevant information.
- Carrying out market Research: Researching the market to identify potential licensees—companies or individuals who may be interested in using your design. Considering their reputation, distribution channels, and compatibility with your brand.
- Providing a Licensing Agreement: Drafting a licensing agreement that outlines the following.
- License Scope: Specifying how the licensee can use the design (e.g., exclusive, or non-exclusive rights).
- Duration: Defining the period for which the license is granted.
- Territory: Specifying the geographical area where the licensee can use the design.
- Royalties: Determining the compensation structure, which may include upfront fees, ongoing royalties, or a combination of both.
- Quality Control: Setting standards to maintain the quality of the products/services associated with the licensed design.
- Termination Clauses: Outlining conditions under which the license can be terminated.
- Negotiate Terms: Initiating negotiations with potential licensees. Being prepared to discuss and potentially modify terms based on mutual agreement.
- Legal Review: Reviewing the agreement to ensure that the agreement is legally sound and protects your interests.
- Execution of Agreement: Once both parties agree on the terms, initiating the execution of the licensing agreement. This typically involves signing the agreement and ensuring that all parties involved have a copy.
- Monitoring and Enforcement: Monitoring the licensee’s activities to ensure compliance with the terms of the agreement. Addressing any issues promptly and enforce your rights if necessary.
Time duration: This process usually takes 6-10 days as per requirement.
Assignment
Assigning a design involves transferring the ownership of the design from the original creator (assignor) to another party (assignee). This is a significant legal action, and it typically requires a written agreement to clearly outline the terms and conditions of the assignment. We expertise in:
- Understand the Design: Clearly defining and documenting the design that is being assigned. This may include detailed specifications, drawings, or any other relevant information.
- Intellectual Property Rights: Ensuring that the assignor (original creator) has the full and unencumbered intellectual property rights to the design. This may involve confirming ownership through copyright, trademark, or design patent registration.
- Creating an Assignment Agreement: Drafting a comprehensive assignment agreement that clearly outlines the terms and conditions of the design transfer, and encompassing:
- Identification of Parties: Clearly stating the names and details of the assignor and assignee.
- Description of Design: Providing a detailed description of the design being assigned.
- Transfer of Rights: Clearly stating that the assignor is transferring all rights, title, and interest in and to the design to the assignee.
- Consideration: Specifying any consideration or payment associated with the assignment.
- Warranties and Representations: Including any warranties or representations made by the assignor regarding ownership and the design’s originality.
- Indemnification: Addressing indemnification clauses to protect both parties against potential legal claims.
- Governing Law: Specifying the jurisdiction and laws that will govern the agreement.
- Negotiate Terms: Engaging in negotiations with the assignee to reach mutual agreement on the terms of the assignment. Evaluating and preparing to discuss and potentially modify terms based on negotiations.
- Legal Review: Ensuring that the agreement is legally sound and protects the interests of both parties.
- Execution of Agreement: Once both parties agree on the terms, executing the assignment agreement. Initiating the signing of the agreement and ensuring that all parties involved have a copy.
- Record the Assignment: Depending on the jurisdiction, recording the assignment with the relevant intellectual property office. This can help establish the assignee’s ownership and rights.
Time duration: This process usually takes 6-10 days as per requirement.
Design Portfolio Management
When managing a design portfolio, especially in the context of Intellectual Property Rights (IPR), we understand that it is crucial to consider legal and ethical aspects to ensure that you have the right to showcase your work. We provide expertise in:
- Clarifying the ownership of intellectual property rights for each project in your portfolio.
- Looking out at the working of the market to evaluate, and identify if something can interfere with the rights.
- Reviewing Employment Contracts.
- Reviewing client agreements.
- Reviewing confidentiality Agreements.
- Providing help in seeking permission of relevant parties.
- Modifying Anonymity: we aid in modifying certain elements to maintain anonymity while still demonstrating your skills and design process.
- Evaluating and highlighting collaborative Efforts.
- Keeping Records: Maintaining records of agreements, contracts, or any written communication that pertains to the ownership and use of intellectual property.
- Keeping the client informed of the portfolio.
Litigation Support Services
Design litigation refers to legal actions related to the protection and enforcement of intellectual property rights in the field of design. Design rights typically involve the protection of the aesthetic or ornamental aspects of a product, rather than its functional features.
Some aspects of design litigation are:
- Grounds for Design Litigation
Infringement: identifying, and evaluating unauthorized usage, making, sell, or importing of any product that is substantially similar to a protected design.
Invalidity: challenging the validity of a design right, claiming that it shouldn’t have been granted in the first place. - Jurisdiction and Laws:
Design litigation is subject to the laws of the jurisdiction where the design right is registered or protected. Laws regarding design rights can vary significantly from one country to another. - Prior Art and Novelty:
In design litigation, the concept of prior art is crucial. The design in question must be novel and not obvious in light of existing designs. - Litigation Process:
Design litigation typically involves filing a lawsuit, presenting evidence, and arguing before a court. The court will then determine whether there has been infringement or if the design right is valid. - Defences in Design Litigation:
- Non-infringement: The accused party may argue that its design does not infringe on the protected design.
- Invalidity: The accused party may challenge the validity of the design right.
- Prior Use: In some jurisdictions, prior use of the design may be a defense against an infringement claim.
- Remedies:
If infringement is established, remedies may include injunctive relief (to stop the infringing activities) and damages or an account of profits (compensation for the harm caused). - International Considerations:
Design litigation can become complex when dealing with international aspects. Design rights are often territorial, so protection may need to be sought in multiple jurisdictions. - Alternative Dispute Resolution (ADR):
Parties involved in design disputes may explore alternative methods of resolution, such as mediation or arbitration, to avoid the costs and time associated with traditional litigation.
We understand that it is essential for designers and businesses to be aware of design rights and to take necessary steps to protect their designs. Our services are curated to identify the commercial prospects of your design. We specialize in providing all the above-described litigation support.
Handling Design Oppositions
Design oppositions refer to legal proceedings wherein third parties challenge the registration or protection of a design. These oppositions typically occur after an application for design registration has been filed and published, and they provide an avenue for interested parties to contest the validity or registrability of the design. Some key aspects of design oppositions are:
✔︎ Grounds for Opposition:
- Lack of Novelty: Opponents may argue that the design lacks novelty, meaning it is not sufficiently different from existing designs.
- Lack of Individual Character: Opponents may claim that the design doesn’t have individual character, meaning it doesn’t create a different overall impression from other designs already in the public domain.
- Functional Features: In some jurisdictions, designs that are purely functional may not be eligible for registration, and oppositions can be based on this ground.
- Prohibited Subject Matter: Designs that are contrary to public policy or morality may be opposed on these grounds.
- Who Can Oppose: Typically, any person or entity with a legitimate interest can file an opposition. This includes competitors, businesses, or individuals who believe the design registration may negatively affect their rights.
- Timing and Procedure: Design oppositions are usually filed within a specified period after the publication of the design application. The procedures and timeframes can vary by jurisdiction.
The opposition process may involve submitting evidence, legal arguments, and responses to the design office. - Mediation and Settlement: In some cases, design offices encourage or require parties to attempt mediation or settlement before proceeding with a formal opposition hearing.
- Decision-Making Body: The design office or intellectual property office of the relevant jurisdiction typically handles design opposition proceedings. Decisions may be made by an examiner, a hearing officer, or a designated board.
- Possible Outcomes: If the opposition is successful, the design registration may be refused, or the existing registration may be cancelled. If the opposition is unsuccessful, the design registration proceeds.
- Appeals: In some jurisdictions, parties dissatisfied with the decision in an opposition may have the right to appeal to a higher authority or court.
- Costs and Timeframe: Design opposition proceedings can be time-consuming and may involve legal costs. It’s essential for parties involved to be aware of the potential costs and timelines.
- International Considerations: Design oppositions may vary in procedure and requirements across different jurisdictions. Some international systems allow for centralized oppositions against designs registered through international agreements.Design oppositions can take various forms depending on the jurisdiction and the legal framework in place. Here are some common types of design oppositions:
✔ Pre-Grant Oppositions:
Filed before the design right is officially granted, pre-grant oppositions aim to prevent the registration of a design by raising concerns about its novelty, individual character, or other grounds.
✔ Post-Grant Oppositions:
Filed after the design right has been granted, post-grant oppositions challenge the validity of the existing design registration. Grounds for opposition may include lack of novelty, lack of individual character, or functionality.
✔ Invalidity Actions:
Similar to post-grant oppositions, invalidity actions are legal proceedings initiated in court or through administrative bodies to declare a design right invalid. This can be based on various grounds, such as prior art or lack of novelty.
✔ Cancellation Proceedings:
In some jurisdictions, a party may file for the cancellation of a design registration based on certain grounds. This can be similar to an invalidity action but may have specific procedural requirements.
✔ Non-Use Oppositions:
Some jurisdictions allow oppositions based on non-use of a registered design. If the design owner fails to use the registered design within a specified period, third parties may oppose the registration.
✔ Procedural Oppositions:
Oppositions can also be based on procedural grounds, such as errors or deficiencies in the application process. This may include issues related to the filing of documents, payment of fees, or other formalities.
✔ Public Policy Oppositions:
Oppositions on public policy grounds may be raised when a design is considered contrary to public morals or order. This could involve designs that are offensive or inappropriate.
✔ Third-Party Observations:
While not always a formal opposition, some jurisdictions allow third parties to submit observations or comments on pending design applications. These comments may be considered by the design office during the examination process.
✔ Partial Oppositions:
In certain cases, an opposition may target only specific aspects or features of a design rather than challenging the entire registration. This may occur when a design includes both protectable and non-protectable elements.
✔ Appeals:
While not an opposition in the strict sense, parties dissatisfied with the outcome of an opposition proceeding may have the option to appeal the decision. Appeals may be heard by higher administrative bodies or courts.
We understand that design oppositions play a crucial role in maintaining the integrity of design registration systems. Our services are curated to identify, and evaluate situations, and we specialize in providing support for all the above-described cases.
Time duration: This process usually takes 3-10 days as per requirement.
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