Transcript Getting Noticed: The Importance of

Getting Noticed: The Importance of Industrial
Design Protection
Mr. Rahul Beruar
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“Good design is good
business”
Tom Watson, Jr., the former chairman of
IBM at Wharton Business School in
1973
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What is Industrial Design
• The ornamental or artistic aspect of an
article
• Made up of three-dimensional features,
such as the shape or surface of an article,
or of two-dimensional features, such as
patterns, lines or color.
• An integration of art and Design, whereby
mass produced products are improved for
marketability and production.
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The Designs Act, 2000.
• Section 2 of the Design Act, 2000
“Design means 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; but does not include any mode or
principle of construction or anything which is in substance a mere
mechanical device”
“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”
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Criteria for Registration of Industrial Design
under the Designs Act, 2000.
A design which:
• Is new or original
• Has not been disclosed to the public by
publication in tangible form or by use or in
any other way prior to the filing date.
• Is significantly distinguishable from known
designs or combination of known designs.
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What is a Industrial Design Right
• A statutory Right which protects the
aesthetic appeal of an article.
• Design Right is a limited period Right.
• In India registered Design is protected for a
maximum period of Fifteen Years.
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Advantages of Registration
• A valuable business asset that can be bought,
sold, transferred or licensed like any other
property.
• Provides the basis for taking legal action.
• Grants exclusive right for 15 years.
• Prevents others from copying or imitating the
design.
• Adds value to the product.
• Makes it attractive to customers.
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Copyright Act: Protection of
Industrial Design
• Copyright subsists in an Industrial Design only if it is an
‘artistic work’ under the Copyright Act.
• Protection under the Copyright Act is available only when
the aesthetic design of the product is separable from the
product's function.
• No necessity of registration, under the Copyright Act, to
secure copyright in such Design.
• Copyright in the Design subsists for the life of the artist
plus 60 years.
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Difference between Design Right and
Copyright for a Industrial Design
Design Right
The Design Right is valid
for a period of Maximum
15 Years.
Copyright
The Copyright subsists for
a period of 60 years plus
life of the author.
Registration is required for No registration is required
obtaining statutory relief.
for obtaining statutory
relief.
Reproduction is restricted
only to the article
consisting of the
Registered Design.
Reproduction is Restricted
to all forms including
articles.
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Protection of Industrial Design
through Trademark
• Trademark Act can be used to protect industrial
designs in cases where the design has acquired
distictiveness, i.e. secondary meaning and
people associate the design with the source/
origin of the product.
• Industrial Design may be protected as a
Trademark and renewed every ten years.
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Importance of Industrial Design
• Makes it attractive and appealing to customers.
• Key factor in the decision of a customer to buy
the product.
• Distinguishes a product where there is a wide
range of products performing the same function,
such as cars and computers.
• Are business assets and increase the
commercial value of a company and its products.
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Successful Industrial designs
Beetle
Ipod
Segway
Syringe
Nokia Phone
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Case Study – Purple Pill
• Purple Pill - a prescription drug Prilosec
manufactured by AstraZeneca for relief from
heartburn caused by acid reflux disease.
• An huge marketing campaign was carried out in
1997, where advertisements for the “Purple Pill”
appeared everywhere—on TV, the Internet, and
in print ads.
• The whole advertising campaign was centered
on the colour of the Pill.
• The advertisement resulted in consumers
identifying the pill with its colour and not the
name.
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Case Study – Purple Pill
• The marketing strategy was successful
• First ever drug to hit $5 Billion Dollars1 a year in
worldwide sales.
• The Patent for Purple pill expired in 2001.
• AstraZeneca then replaced Prilosec with Nexium
as a new prescription drug.
• Nexium was also supported with an aggressive
marketing focusing on the colour of the Pill.
• In 2004 the sales of Nexium reached $3.9 Billion
Dollars2.
1. Neil Swidey, The Costly Case of the Purple Pill—The Story of One Blockbuster Heartburn Drug Tells You Everything You
Need To Know About the High Cost of Prescription Medicine, BOSTON GLOBE, Nov. 17, 2002,
2. David Seemungal, On the Mend at AstraZeneca, BUSINESS WEEK ONLINE, Aug. 9, 2005
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Case Study – Purple Pill
• A color of a pill is usually arbitrarily
selected by the manufacturer and is
unrelated to the efficacy of the ingredients
contained in the pill.
• A color scheme when aggressively
marketed by a manufacturer creates a
association in the mind of the consumers
with regard to the source of the product.
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Case Study – Purple Pill
SK&F Co. v. Premo Pharmaceutical Laboratories, Inc
• Premo Pharmaceutical Laboratories, Inc.
appealed an order prohibiting it from
marketing a combination drug, in capsules
having the same maroon and white color
combination as the capsule used by SK&F,
Co. (SKF) in marketing its product
containing the same combination drug.
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Case Study – Purple Pill
SK&F Co. v. Premo Pharmaceutical Laboratories, Inc
The Third Circuit Court held:
– A unique color scheme employed by a brand name
pharmaceutical manufacturer for their pills could not be imitated
by the manufacturer of a generic equivalent.
– “Proof of non functionality serves no purpose other than
identification” and that, in the case of drugs, “the nonfunctional
element must not enhance efficacy.”
– Color scheme was arbitrary and not related to performance or
processing of the Drug.
– The color scheme of the Pill had acquired a protectable
secondary meaning.
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Case Study – Purple Pill
Shire U.S., Inc. v. Barr Laboratories, Inc.
• Shire U.S., Inc., manufactured a drug to treat
attention deficit hyperactivity disorder (ADHD)
under the brand name “Adderall.”
• The pills were marketed in various strengths,
and color and size of the pills varied with pill
strength.
• All the pills were marked “AD” on one side, and
the dosage size (in milligrams) were marked on
the other side.
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Case Study – Purple Pill
Shire U.S., Inc. v. Barr Laboratories, Inc.
• Barr Laboratories in February 2002, began
marketing a generic version of Adderall.
• Barr marketed their generic equivalent in
different dosages, and mirrored the color,
shape, and dosage combinations of
Shire's Adderall product.
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Case Study – Purple Pill
Shire U.S., Inc. v. Barr Laboratories, Inc.
The Third Circuit Court held:
– Shire has failed to prove the requisite
functionality of their unique color scheme.
non-
– similarity in pill appearance between Adderall and its
generic counterpart both enhanced patient safety by
allowing them to readily identify the pills and dosages
by color.
– The Court did not address the question of whether or
not Shire had achieved secondary meaning for the
pill's color scheme.
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