REGISTRABLE INDUSTRIAL DESIGNS AND OVERLAPPING INTELLECTUAL PROPERTY RIGHTS UNDER THE SRI LANKAN
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Registrable Industrial Designs And Overlapping Intellectual Property under this Article
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1.0 Historical Perspective
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“Every person who shall invent, design and print, or cause to be invented, designed and printed, and become the Proprietor of any new and original pattern or patterns for printing Linens, Cotton, Calicoes or Muslin” was entitled to a two month protection by the Designing and Printing of Linens, Cotton, Calicoes and Muslin Act of 1787. This was the first law in the United Kingdom that gave protection to Designs. Since then this area has developed in to the protection of an intellectual property right of Industrial Design which is internationally recognised today . The most recent development in this regard is The Hague Agreement concerning the International Deposit of Industrial Designs (06.06.1999). In Sri Lanka, the Designs Ordinance of 1904 was the formal introduction of this right preceding the Copyright Ordinance (1912) and the Patents Ordinance (1906).
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This is a fair indication of the importance attached to this right, even though it is considered by some to be a superfluous right in view of the developments in other intellectual property rights.
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It would appear that this protection was intended for those Creations (designs) which, when embodied in some product, served to attract attention to such product though such Creations were not per se being marketed. This is clearly stated in the early British case of Dover v. Nurnberger Celluloid Warren Fabric Gebruder Wolff,2, where Buckley LJ stated thus (sic):
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“It is a conception, suggestion, or idea and not an article, which is the thing capable of being registered… It is a suggestion of form and ornament to be applied to the physical body.”
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Thus protection was given to the innovation of the manufacturer of an already existing product. It is therefore, in this context, that the provisions of the Code of Intellectual Property relating to registrable Industrial Designs should be examined.
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2.0 Industrial Designs under the Sri Lankan Law
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An Industrial Design is defined in Section 27 of the Code of Intellectual Property thus-
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“Any composition of lines or colours or any three dimensional form, whether or not associated with lines or colour, that gives a special appearance to a product of industry or handicraft and is capable of serving as a pattern for a product of industry or handicraft shall be deemed to be an Industrial Design”
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There is a qualification to this definition in the proviso to Section 27, which states that “anything in an Industrial Design, which serves solely to obtain a technical result, shall not be protected under this Part.”
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However, Section 26, which provides protection for Industrial Designs, does not protect all Industrial Designs. Only new Industrial Designs are protected. Industrial Designs, which consist of any scandalous design or are contrary to morality or public order or which, in the opinion of the Registrar or the Court, are likely to offend the religious or racial susceptibilities of any community are also denied protection under Section 26(2).
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Thus protection for Industrial Designs set out in Sections 26 & 27 has three aspects to be noted. They are as follows:
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(a) only New Designs qualify for protection
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(b) Industrial Designs which serve solely to obtain a technical result do not qualify for protection
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(c) Designs contrary to the public order etc. are also not protected.
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Before examining these three aspects, the definition of an Industrial Design itself should be-briefly scrutinised.
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The phrase “composition of lines and colours” or “any three dimensional form” incorporates the outer appearance of all two-dimensional and three-dimensional articles. The allusion to colours, lines and form means that it is the visual effect that is protected. This perspective is prevalent in other jurisdictions as well. Section 2(1) of the Design Law of Japan refers to this aspect thus: “which produce an aesthetic impression on sight.”
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It should be noted that mere visual effect is insufficient – it should give a special appearance to a product of industry or handicraft. This phrase implies that there should be distinctiveness about that particular Design.
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Further, a Design would become an Industrial Design only if it is capable of serving as a pattern for a product of industry or handicraft. The fact that the Design would have to serve as a pattern to a product shows that a fundamental distinction is made between the product and the Design. This distinction is maintained universally. For instance in the US case of Carol Barnhart Inc v. Economy Cover Corp3 it was held that the models designed for clothes to be draped, were not eligible for protection as they would have the effect of giving protection to the product itself. This is in consonance with the origin of Industrial Designs, in that the Design should not be the product itself but that appearance of the product that draws attention to the product.
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2.2 Aspects of Industrial Designs
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Novelty is defined in Section 28 in the following terms-
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(1) A new Industrial Design shall mean an Industrial Design which had not been made available to the public anywhere and at anytime whatsoever through description, use or in any other manner before the date of an application for registration of such Industrial Design or before the priority date validly claimed in respect thereof.4
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(2) An Industrial Design shall not be deemed to have been made available to the public solely by reason of the fact that, within the period of six months preceding the filing of an application for registration, it had appeared in an official or officially recognised international exhibition.5
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(3) An Industrial Design shall not be considered a new Industrial Design solely by reason of the fact that it differs from an earlier Industrial Design in minor respects or that it concerns a type of product different from a product embodying an earlier Industrial Design.6
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This definition requires that certain words and phrases be examined closely.
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(a) “Not been made available to the public anywhere “
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While in UK and in India it is felt that this phrase has only local application, our law, as it stands today, seems to indicate otherwise. In the Rabea7 case Palakidnar J held, that in respect of Trademarks, the word “public” in Section 117(2)(a) of the Code of Intellectual Property Act transcended local boundaries. The use of the word “anywhere” in Section 28(1) in relation to Industrial Designs would substantiate the proposition that it is international in application.
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4 Section 28(1) of the Code of Intellectual Property Act
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5 Section 28(2) of the Code of Intellectual Property Act
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6 Section 28(3) of the Code of Intellectual Property Act
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7 [1989] 1 Sri L.R.182 at 193
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(b) “Official or officially recognised international exhibition”
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The word official is not defined and is vague. Thus, in this context, it could cause confusion. Furthermore, as only ‘international’ exhibitions are excepted, small time Creators who have exhibited their wares in exhibitions not international in nature are denied protection.
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An interesting feature in this section is the fact that any disclosure to the public, even by the Creator himself, would prevent him from obtaining protection under this part. Section 28 (2) provides some latitude in this regard though it is only limited to international exhibitions. Further, any disclosure without the Creator’s permission in violation of his rights would also qualify as a disclosure to the public under these provisions.
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In contrast, examining the provisions of Section 61 (3), dealing with disclosure to the public in relation to Patentable Inventions, it is found that a higher degree of flexibility has been given. Section 61(3) reads thus –
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A disclosure made under subsection (2) shall be disregarded
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(a) if such disclosure occurred within one year preceding the date of the patent application and if such disclosure was by reason or in consequence of acts committed by the Applicant or his predecessor in title
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(b) if such disclosure occurred within six months preceding the date of the patent application and if such disclosure was by reason or in consequence of any abuse of the rights of the Applicant or his predecessor in title.
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Similar laxity in respect of the provisions relating to Industrial Designs would be welcome to overcome this anomaly.
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The fact that the Design has not been made available to the public would mean it is new as per the definition. The question then arises whether a new Industrial Design though not original would obtain protection? In view of Section 61 (3), which shows that some amount of originality is needed, it is submitted that the word ‘new’ in this context includes the word ‘original’. Thus, it is submitted that the principles involved in testing originality under Copyright Law would be applicable as it is the aesthetic value and not the technical value that is being tested. Dreyfus and Kwall express a contrary view8 stating that the law relating to utility Patents ought to be followed in this regard. Such proposition is of course under the US Law, and it is submitted that such view would not be appropriate in the context of the Sri Lankan Law, where Industrial Designs bear a closer link to Copyright.
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8 Dreyfus and Kwall, Intellectual Property Cases and Materials on Trademark, Copyright and Patent Law. 1996 ed. p. 608
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2.2.2 Solely to obtain a technical result
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This implies that a purely functional design cannot obtain Industrial Design protection. WIPO/ IP/CM/99/11 prepared by the International Bureau of WIPO in paragraph 20 justifies this clause. It states that since many articles to which designs are applied, are not themselves novel, and are produced by a large number of different manufacturers, if a Design for one such article is dictated purely by the function which it is intended to perform, protection for that Design would have the effect of excluding all other manufacturers from producing items intended to perform the same function,
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An examination of the US law relating to Designs could help provide an interesting perspective. In the US, Designs are protected under US Patent Law of 1952 . A patentable Design is defined as one that is new, original and ornamental. The work ornamental is somewhat akin to the phrase “not solely to obtain a technical result”.10
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In this context Dreyfus and Kwall11 state that –
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“Designs that are dictated purely by functional considerations are not any more eligible for Patent protection than they are for Copyright protection. Thus, purely functional Designs- for instance boat hulls, dash boards and refrigerator panels – receive no protection under US Patent Law or Copyright Law.”12
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In Kieselstein Cord v. Accessories by Pearl Inc13 for instance the court felt that ornate designs on belt buckles were conceptually separable from the product itself and as such qualified for protection.
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Identifying and distinguishing functional and non-functional Designs are not always easy. For example in 1987 in Brandir International Inc v. Cascade Pacific Lumbar Co,14 where a wire sculpture designed by the Plaintiff inspired him to Design a bicycle rack, the US Court of Appeals reconciling the decisions in Carol Barnhart15 and Kieselstein – Cord16, held that though the wire Design might be entitled to Copyright depending on its originality, the bicycle rack could not be Copyrighted, as the Design was functional.
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Prof. Denicola17 has cautioned that any categorical approach in this regard would undermine the legislative determination to preserve an artist’s ability to exploit utilitarian markets.1
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9(Sections 171 -173) 10 Section 27 proviso of the Code of Intellectual Property Act
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11 Dreyfus and Kwall, Intellectual Property Cases and Materials on Trademark, Copyright and Patent Law, 1996 ed. p. 608
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12 Patent Law here deals with Industrial Designs 13 632 F 2d 989 14834F2d 1142 15773FLD417
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17 Prof. Denicola, Applied Art and Industrial Design: A suggested approach to copyright in useful articles
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18 Please note that reference is made to copyright in the above case, however it is submitted that the same principle would be applicable even to Industrial Designs. This nexus would be examined later.
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The test postulated by Prof. Denicola that “Copyrightability ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional consideration” was endorsed in Brandir’s19 case and is generally accepted. It is contended that the same test should be followed when ascertaining eligibility for Industrial Design protection under the Code of Intellectual Property Act.
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2.2.3 Contrary to Public order
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This qualification is required to protect the moral interests of society. However the word scandalous does not seem to fully represent the intentions of the Legislature.
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The law relating to the registrability of Trademarks is closely connected in this regard and the same principles could be followed. This would seem appropriate, in view of the fact, that the wording in Section 99 (1) (e) of the Code of Intellectual Property Act relating to the registrability of a mark is identical to the provisions relating to the registrability of Industrial Designs.
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Thus it is seen that Industrial Design protection is extended to the visual appearance of a product where such appearance is conceptually separable from the product. The above examination of the three vital aspects of Industrial Designs provide an interesting phenomenon, in that, the tests used in ascertaining or determining such aspects have very close relationships with the tests used in respect of other Intellectual Property Rights.
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Of the three aspects of Industrial Design protection the first, viz. novelty, has two issues that need be determined:
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(1) as regards to whether the Design has been made available to the public in terms of Section 28 (1), it would appear that the law relating to Patents would have to be followed
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(2) in ascertaining whether the Design is ‘new’ as required by Section 28(3), the law relating to Copyright when examining ‘originality’ would be appropriate.
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The second aspect deals with the non-functionality of the Design. As anything in an Industrial Design that serves solely to obtain a technical result will not be protected, it is clear that only the work that reflects artistic expression uninhibited by functional consideration that ought to qualify for protection.20 The author therefore contends that the law relating to Copyright would be applicable in determining whether a Design is functional or not and as such whether it qualifies for protection.
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The final aspect relating to whether a Design is contrary to public order etc., for the reasons stated previously, would be examined under the provisions relating to Trademark law.
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It would then be evident that a registrable Industrial Design has a very close relationship with all other intellectual property rights.
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3.0 Overlapping Intellectual Property Rights and Protection
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“The protection of Industrial Designs provided under this Part shall be in addition to and not in derogation of any other protection under any other written law, in particular under Part II of this code21
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Thus it is evident that it is possible to claim Industrial Design protection in addition to any other protection. In order to fully understand the extent of this provision it is essential to examine the nexus between Industrial Design protection and other intellectual property rights viz. Copyright, Patents and Trademark.
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The proximity between Copyright and Industrial Design protection is highlighted by the special reference to Part II in Section 25.22 Under Sri Lankan law, as it stands today, Copyright protection is available for original literary, artistic and scientific works.23 Section 7(2) in an inclusive definition of such works, inter alia, refers to
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(1) works of drawing, painting, architecture, sculpture, engraving, lithography and tapestry – 7(2)(g)
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(2) works of applied art, whether handicraft or produced on an industrial scale – section –
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Thus, prima facie, it is evident that certain products could be copyrighted. Take for example, a vase. If the vase is created and is original, it would obtain protection under Copyright. However, this does not mean that other vases cannot be made. The protection only extends to the outer appearance of the vase. This then would enter the domain of Industrial Design. Therefore it is apparent that these two areas overlap under our law.
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At this juncture, an analysis of the US Copyright Law would provide a useful insight. The US Copyright Act of 1976 sought to remove from the domain of Copyright such Designs that cannot be identified separately from and are capable of existing
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21 Section 25 of the Code of Intellectual Property Act
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22 Part 11 of the Code deals with Copyright
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23 Vide Section 7(1) of the Code of Intellectual Property Act
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independently of the utilitarian aspects of a useful article.24 Under the US law therefore Designs are three fold viz.:
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(1) those Designs that can be identified separately from and are independent of the utilitarian aspects – these Designs have the lowest degree of functionality and are copyrightable
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(2) those Designs that are inextricably intertwined with the functional aspect – these Designs possess the highest degree of functionality and obtain no protection under either Copyright Law or Patent law
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(3) those Designs that are connected to the function but not inextricably intertwined -these Designs display a certain level of functionality and qualify for Design protection under the Patent Law. (Designs are protected under the Patent Law in the US)
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Under the Sri Lankan law, however, there exist only two types of Designs:
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(1) those Designs that do not serve solely to obtain a technical result
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(2) those Designs that serve solely to obtain a technical result.
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While there is no express bar in both types of Designs qualifying for Copyright protection under the Code, it is clear that Designs that serve solely to obtain a technical result will not generally fall within the realm of Copyright. Only those Designs in (1) above qualify for Industrial Design protection. Therefore, all Industrial Designs would qualify for Copyright protection under the Code of Intellectual Property.
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Section 60 of the Code states that an invention is patentable if it is new, involves an inventive step and is industrially applicable. An invention is defined as an idea of an inventor, which permits in practice the solution to a particular problem in the field of technology.
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As Industrial Designs are not generally developed to solve a particular problem in the field of technology they do not ordinarily qualify as Patents. However Designs that are purely functional may qualify for a Patent. Such Designs, however, do not qualify for protection as Industrial Designs, as they are specifically excluded. WIPO states that Designs which are directed exclusively by function are therefore, the proper province of Patent Law and not Industrial Design Law.
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24 Vide Section 101 of US law
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25 Vide Section 50 of the Code of intellectual Property Act
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26 WIPO/ IP/CM/99/11 prepared by the International Bureau of WIPO, paragraph 20
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It is submitted, therefore, that in the case of Patents there is no question of overlapping rights.
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Trademark law in relation to Copyright, Patent and Industrial Design, would appear to be somewhat inferior in terms of the intellectual creativity involved. It operates primarily to distinguish the goods or services of one organisation from that of another.
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Distinctiveness is therefore a vital feature for Trademarks. As Industrial Designs are required to give a special appearance to a product of industry or handicraft, it was submitted earlier that a certain degree of distinctiveness is a requisite for an Industrial Design. Thus, it could be stated that it would be possible to register an Industrial Design as a Trademark if it is sufficiently distinctive.
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This view is qualified however by the following provision of Section 99(1), which deals with the admissibility of marks. Section 99(l)(a) provides that a mark, which consists of shapes or forms, imposed by the inherent nature of the goods or services or by their industrial function would not be registrable.
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It is, therefore, only in this context that concurrent protection could exist. Generally it could be stated that as the proximity between the functional aspect and the Design increases, the distinctiveness of the mark independent of the product or function diminishes. Therefore, the more functional a Design is, the less likely that it would succeed at qualifying as a Trademark. As our law does not grant protection to purely functional Designs it would therefore appear that Designs could obtain both Industrial Design protection and Trademark protections.
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4.0 Rationale and Conclusion
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It would appear from the above analysis that Industrial Design Law
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(1) comes within the purview of Copyright Law
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(2) is distinct from Patent Law
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(3) could coexist with Trademark Law.
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As Industrial Designs appeal to the aesthetic aspect of man, unlike Patent Law which involves the technological side to man, it could be stated that the position under the Code of Intellectual Property, is in consonance with the spirit of Intellectual Property Law. Obtaining Copyright protection after obtaining Industrial Design protection would not unfairly benefit the owner, as he would in any event be entitled to the protection of his work under Copyright. The additional benefit of Industrial Design protection is given to those creations that are commercially more lucrative than other copyrightable works as having a registered Design would make commercial transactions easier in the absence of a system of Copyright registration under the Sri Lankan law.
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those creations that are commercially more lucrative than other copyrightable works as having a registered Design would make commercial transactions easier in the absence of a system of Copyright registration under the Sri Lankan law.
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Trademark protection may be difficult to obtain as seen before. However, if obtained they exist for a very long time which could not be termed favourable. This problem could be rectified by a clause specifically prohibiting Industrial Designs from obtaining Trademark protection.
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Industrial Design law should therefore be viewed as a system by which certain additional rights are given to certain copyrightable matter in special circumstances, i.e. when such matter qualifies as an Industrial Design. This approach would help obtain a proper perspective of this sphere of Intellectual Property Law.
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