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LLM First Year Term Paper | Concept and Use of Industrial Designs in Nepal | Intellectual Property Rights Term Paper

LLM First Year Term Paper | Concept and Use of Industrial Designs in Nepal | Intellectual Property Rights Term Paper


A Term Paper on

Concept and Use of Industrial Designs in Nepal

 

 

 

 

 

 

 

 

Term Paper on the Subject of Intellectual Property Law

 

LLM 1st Year

 

Business and International Trade Law Group

 

 

 

 

March 3, 2019

… words

 

 

 

 

[your name here]

 

[campus name here]

…… University

 

Intellectual Property Law Term Paper | Nepal Law Campus

Table of Contents

Chapter 1. 1

1.1 Background. 1

1.2. Objectives. 2

1.3. Limitation. 2

1.4 Methodology. 2

Chapter 2. 3

2.1 Introduction. 3

2.2 Registered design. 4

2.3Unregistered Design. 4

2.4. Procedures for Obtaining a Design Right in Nepal 5

2.3. Role of international Instrument for Design Protection. 7

Chapter 3. 9

3.1 Analysis and conclusion. 9

Bibliography. 10

 

 

 


Chapter 1

1.1 Background

In today’s context the design of an article including the design of its packaging is important from commercial view of point. ‘Design’ means the form or shape of any material manufactured in any manner.[1]An industrial design right is an intellectual property right that protects the visual design of objects that are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three dimensional forms containing aesthetic value. An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

Under the Hague Agreement Concerning the International Deposit of Industrial Designs, a WIPO-administered treaty, a procedure for an international registration exists. An applicant can file for a single international deposit with WIPO or with the national office in a country party to the treaty. The design will then be protected in as many member countries of the treaty as desired. Design rights started in the United Kingdom in 1787 with the Designing and Printing of Linen Act and have expanded from there.The design may be three-dimensional based on the shape or surface of the object, or two-dimensional based on the object’s patterns, lines or colors. Novelty, originality and visual appeal are essential if an industrial design is to be patented, although these criteria can differ from one country to another. Its aesthetic features should not be imposed by the technical functions of the product.

 

Legally, “industrial design” is the title granted by an official authority, generally the Patent Office, to protect the aesthetic or ornamental aspect of an object. This protects solely the non-functional features of an industrial product and does not protect any technical features of the object to which it is applied. Industrial design rights are granted to the creator of designs to reward them for their effort and investment in manufacturing the product. These rights enable the owner to make articles to which the design is applied or in which the design is embodied.The holder of this legal title has the exclusive right to make, import or sell any objects to which the design is applied. They can authorize others to exploit the design and bring a legal action against anyone using the design without authorization. In general the period of protection granted is from 10 to 25 years. This is often divided into terms and an extension of the term requires renewal of the registration.[2]

 

1.2. Objectives

The main objectives of this paper are to know about the concept of industrial design and its registration process in Nepalese context.

1.3. Limitation

This paper is only limited to the concept industrial design and its registration process in Nepal and not other forms of intellectual property.

1.4 Methodology

This paper is prepared by using both primary and secondary resources

 

 

 

 

 

 

 

 

 

 

 

 

 

Chapter 2

2.1 Introduction

As the aesthetic appeal of a product can determine the consumer’s choice an industrial design adds commercial value to a product.[3]Industrial designs are what make a product attractive and appealing; hence, they add to the commercial value of a product and increase its marketability. When an industrial design is protected, this helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices. Protecting industrial designs helps economic development, by encouraging creativity in the industrial and manufacturing sectors and contributes to the expansion of commercial activities and the export of national products.[4]From ancient period, many designs were used which are consisting various features but the concept of protecting it came only in the context of industrial designs. The efforts of the state have been start from 18th century for the protection of industrial designs. In England, in 1797 first Act for the design protection was enacted and the textile designs have granted the first legal protection. Thereafter they have made several laws in 1839, 1842, 1883, 1907, 1949 and now the existing Act for design protection is Copyright, Designs and Patents Act 1988.[5]As well as Nepal, has enacted Nepal Patent Design and Trademark Law 1993 B.S. to protect the design. Whether there is no clarity about the functionality of design whether it can be register or not but the scope of design protection is so wider.[6] Such law has been repealed by present existing Patent Design and Trademark Act 2022 B.S.Design right does not subsist in parts of a design necessary to connect to another article, to surface decoration, to methods and principles of construction or to those parts of a design which are dependent on the appearance of another article, where that article and the article that design right applies to is an integral part of the second article. Design right also does not apply if a design is not original, and a design is defined as not being original if the object so designed is commonplace in the field when designed.[7]

There are two kinds of design. One is unregistered design and another is registered design.

2.2 Registered design

A Registered Design gives you total rights of ownership over the appearance of a product or just part of a product. Such design gets protection through registration. After completion of certain formalities only qualified design can be registered and it can be renewed thereafter. The term of the protection of design is different according to the law of every nation. In UK, the maximum term of protection of design is 25 years from the date of application, 15 years in Nepal and India. A Registered Design can be sold or licensed. Additionally it may be easier to stop people from copying design as the mere existence of the registration alone can act as a deterrent. If feel to Registered Design is infringed may challenge and the onus will be on the third party to prove they have not infringed rights.[8]

2.3Unregistered Design

It is not regulatory, it is automatic.A Design Right is an automatic right, (i.e.  Do not have to apply to protect it). Design Right protects the shape and configuration of an item alone, therefore only 3D items are covered.[9]The right of unregistered design doesn’t fall within convention obligations.[10] As well as unregistered design is protectable underthe copyright but only a limited category of designs are protected by copyright law and incopyright, registration is not compulsory. So the designer of the design can obtain the right automatically but it must be in common place in its particular field.[11]In UK, Designer can enjoy right within 15 years from the end of the calendar year in which, the design was first recorded.[12]For the last five years of this period a Design Right is subject to a License of Right. This means that anyone is entitled to a license to reproduce the design. They will however have to come to an agreement over what costs will be payable for this.Unregistered design rights are automatic and are treated in the similar manner as copyright. For this reason they may be registered with the UK Copyright Service in the same manner as copyright work in order to establish proof of the date and content of the work in case of any later dispute or legal claims.[13]There are different provisions according to the provisions of nation to nation.

2.4. Procedures for Obtaining a Design Right in Nepal

To get the protection of design or acquisition right of design, it should be registered in the concerned authority (herein after called Department of Industries or DOI).[14] For the registration of design in Nepal, DOI has followed whatever mentioning in existing law even there is not any distinct procedures manual for design registration. Although design is registered under the existing Patent, Design & Trademark Act 2022 & other international conventions/agreements, in which Nepal has membership. Regarding design, Nepal is only the party of Paris convention &TRIPs of WTO (World Trade Organization).

The requirements for filing an application are as follows:

  1. Name of designer

Applicant whether he is the originator or designer or he has received from employer in the course of employment period, should have to mention in application.

  1. Description of design along with four copies of such design, maps & drawing & particular of thereof.[15]

Filing an application

This is the first step to protect the design right. If any person wishes of having the design of any article manufactured or caused to be manufactured by him/her, he/she shall submit an application to Department of industries.[16] The application should be filling in the prescribed format and there should be description of design along with submission of four copies of such design, maps & drawings as well as prescribed fees.[17]

 

Substantive Examination

After completion of formality check, if it has fulfills the necessary documents prescribed by law, has start for substantive examination. During the examination, Department of industries  check their record whether there is existence of prior application, or registration of the same & Department of industries examine whether such design will hurt the prestige of individual or institution or adversely affect the public conduct or morality or undermines the national interest.[18] If one of above element exists in such application Department of industries has furnish the notice to applicant for further clarification or refusal of registration. Generally, if the proposed design has not been published or known in the particular field, which will be qualified for registration. There are some basic elements of design, which are not described in existing law of Nepal, in which bases they can determine whether such design is qualified for registration or not.

Notification of reasons for refusal of registration

If the examiner finds any reasons for refusal, DOI may furnish such notice to the applicant, if the design is already been registered in the name of another person for the same design, if the design is against with public moral or the national interest. If DOI have found above circumstances, they will reject the registration & if the registration is already made, may cancel. But before the cancellation, DOI will provide reasonable opportunity to applicant for defense.[19]

Written argument or amendment

There is not any clear wording about such matter, but it is the common practice in Nepal. After the notification of reasons for refusal, applicant may submit either a written argument against a notification of reasons for refusal or an amendment that would nullify the reasons for refusal.

Decision of registration

If the design has fulfilled all the criteria which are prescribed by law and conventions, DOI will grant the decision for registration of design. After granting thedecision for registration of such design, the applicant should have to pay prescribed fees andthereafter the registration certificate will be issued in the name of applicant.[20]

Registration (Registration fee payment)

After getting the decision of registration, applicant should have to pay prescribed registration fees thereafter only the design right shall be established.

Publication

It is require publishing the registration of design by DOI for notification to the general peoples.[21] If anyone has any objection about such design, he can sue against such design. This publication has also communicated the information to peoples for use and public benefit after its expiration.

Right over registered design

After payment for registration of design to DOI, the right of design has established and can enjoy it within prescribed time period. In this period, he can exclude others & have monopoly right. Under the existing law of Nepal, the registrant of design can enjoy 5 years from the date of registration and it shall renew for further two terms each period of 5 years.[22] He has exclusive right over such design like making, importing, selling, hiring or offering or exposing it for sale or hire and assignment, licensing etc.

2.3. Role of international Instrument for Design Protection

Paris Convention for Protection of Industrial Property 1883 This convention has various provisions regarding the protection of design in the membercountries; in Nepal recently the existing law of patent design and trademark act is amendment toinclude those provisions of conventions as below.

The member country is treated as same own national for the protection of design as well as other forms of IP. Among the member countries, no one shall be discriminatingfor the protection of design as in legal remedies any infringement of their rights, to enjoy theadvantages that their respective law grants. They shall have same protection but whatever the conditions and formalities imposed to nationals should have to fulfills. It is consider that recentamendment has repealed the section 23 of existing law to meet the national treatment concept inNepal. Consequently all the foreigners including member countries of Paris Convention shallhave to pay equal fees as national for registration and so on.

Right of Priority Claim: Any person who has duly filed an application for an industrial design in one of the countries of union, or his successor in title, shall enjoy for the purpose of filing inthe other countries, a right of priority during the period of six months from the date of filing of first application is fixed. Nepal law has including those provisions of right of priority orpriority claim in section 21(C).

TRIPs of WTO

TRIPs of WTO itself are not law but it is general guidelines and framework to make compatible law for the global trade. All the countries should have to make minimum standard of law relatingto IP because nowadays IP is the vehicle for industrialization and global trade. It is the mediumfor technology transfer & the means for economic development TRIPs has adopted the provisions of Paris Convention regarding the design as well as other forms of IP.[23]Besides that there is provision of MFN treatment in TRIPs. Least developingcountries have been given an extension until 1 July 2013 to make compatible law in IP.

 

 

 

 

 

Chapter 3

3.1 Analysis and conclusion

Nepalese design licensing provision in the Act creates multi effect in various applications. If a design is foreign, there are two effects: less possibility for foreign investment in joint venture and possibility of foreign direct investment. If a design is local one, it also has two effects: local goodwill in design cannot be given to foreign investor it is resulting in reduced joint venture and because local design owner cannot give up his design in lease to others, either to the second party or to the foreign investor; rather should sell it, local cannot exploit the design and goodwill in such design.In Nepal, neither have any procedural manual or guidelines for design protection. There is not any clear wording about such process or procedures in existing Act although the registration process is going on. Therefore only few numbers of designs has been registered since 7 decades. Similarly the exclusion subject matter of design is also not adequate. There are lacking of exclusions like method or principles of construction, functionality etc. even illegality, immorality, immaterial appearance has been adopted. So Nepalese registration procedure for design is so flexible & weak in the aspect of substantive examination.

In this way, Nepal should have to do more improvement in design protection as well as intellectual property law. The impact of development of industrialization and globalization, nowadays it is realized that every law should have compatible with international norms &character, it should not be beyond of international norms and practices

 

 

 

 

 

 

 

 

 

Bibliography

  • Cathering Colston, Principle of Intellectual Property 1998,
  • David Bainbridge, Intellectual Property, 5th Edition 2006,
  • Lionel Bently, Brad Sherman, Intellectual Property Law 2001,
  • Narayan, Intellectual Property Law 3rd Edition, 2006,
  • R. Cornish, Intellectual Property Law 1998,
  • Patent, Design and Trade Mark Act 2022
  • Business Law Journal

 

[1] Section 2 (b)of Patent Design & Trademark Act 2022

[2]http://www.esa.int/About_Us/Industry/Intellectual_Property_Rights/About_industrial_designs 2013-04-11

 

[3] Ibid

[4]http://www.wipo.int/designs/en/about_id.html 2013-04-14

[5]Dr. T. Ramakrishna (2003). Basic Principles and Acquisition of Intellectual Property Rights; (CIPRA) National Law School of India University, Banglore India. P 151

[6] Ibid

[7]http://en.wikipedia.org/wiki/Design_right2013-04-14

[8]http://www.ipo.gov.uk/d-basicfacts.pdf2013-04-14

[9]http://www.ipo.gov.uk/d-basicfacts.pdf 2013-04-14

[10]Catherine Colston (1998). Principles of Intellectual Property Law; Cavendish Publishing Limited, London,

Sydney, P- 293

[11] Ibid

[12] Ibid

[13]http://www.copyrightservice.co.uk/protect/p15_design_rights2013-04-14

[14]Section 12 of Patent Design & Trademark Act 2022

[15]Section 13 (1)of Patent Design & Trademark Act 2022

[16] Section 13 of Patent Design & Trademark Act 2022

 

[17]Section 13 (2) of Patent Design & Trademark Act 2022

[18]Section 14 proviso clause of Patent Design & Trademark Act 2022

[19]Section 14 (3) of Patent Design & Trademark Act 2022

[21]Section 21(A) of Patent Design & Trademark Act 2022

[22]Section 23 (B) (3) of Patent Design & Trademark Act 2022

[23]Article 2 (1) of TRIPs

Time Left to Apply



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