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This article is intended with covering the basic FAQs about Design registration in India. For the sake of better focusing, the format of questions and answers has been adopted.
Industrial Designs are protected by different laws in different countries, i.e. some countries choose to go for Patent Registration and some go for specialized systems. Unlike the USA which has chosen to protect the designs through Patents, India has chosen a sui generis system. In India, Design registration is covered under The Designs Act, 2000.
In India, functionality is protected under Patents and not Industrial Designs which are meant to protect external ornamental or aesthetic appearance such as patterns, color, lines, shape, or surface of the article.
- What is Design under the Design Act, 2000?
Section 2 (d) deals with this.
Design means only the features of shape, configuration, pattern or ornament or composition of lines or color or a combination thereof applied to any article whether 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, and does not include any trademark, as defined in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.
- What is Article under Design Act, 2000?
Section 2 (a) deals with this.
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”
- What are the benefits of Design Registration?
Registered Proprietor has the exclusive right to apply a registered design to the article in the class in which Design is registered. Rights obtained by Design Registration can be licensed and/or assigned. In case of infringement, damages can be claimed by the registered Proprietor.
- Who may apply for Design Registration?
Any person claiming to be the proprietor of any new or original design may apply for registration. A proprietor may be from India or from a Convention Country.
A proprietor may be:
- an author of design,
- a person who has acquired the design,
- a person for whom the design has been developed by the author, or
- a person on whom the design has devolved.
The application for registration of design can be filed by the applicant himself or through a professional person (i.e. patent agent, legal practitioner). However, for the applicants not residing in India, the address of an agent residing in India can be used as an address for service.
- Where to apply for Design Registration?
Applications can be filed in either the Design Office in Kolkata or the branch offices of the Patent office in Delhi, Mumbai, or Chennai. For e-filing, FAQs available at https://ipindiaonline.gov.in/epatentfiling/faqs/index.html can be referred to.
- Is it necessary to have a prototype article before applying for Design Registration?
No, it’s not mandatory to have a prototype. However, Design must be capable of being applied to an article by an Industrial Process.
- What is the correct time to apply for the Design Registration?
Application for Design Registration must be filed before making the design available to the Public as not novel Design cannot be given registration. It is also to be noted that Design Registration is granted to whoever files the application first.
- What are the types of Applications?
- Ordinary application: An ordinary application does not claim priority.
- Reciprocity application: In case the priority of a foreign application is to be claimed, it has to be done within six months of filing the foreign application. Such applications being filed in India are termed as reciprocal applications. This period of six months is not extendable.
- What is considered to be Date of Registration in Designs?
In the case of ordinary applications, the date of making the application for registration is the date of registration of the Design.
In the case of reciprocal applications, the date of filing the application in the convention country is the date of registration of the Design.
- Is there any period of pre-grant opposition for Design registration in India?
- What is the time allowed for putting an application in the condition of the grant?
In a Substantive examination, objections may be raised based on whether criteria of something being called as design as set out by definition is met or not, is Design new/original or not, is Design prejudicial to public order or morality, and is Design prejudicial to the security of India. The period allowed for removal of objections can not exceed six months from the date of filing of the application. However, said period of six months can be extended for a further period not exceeding three months provided a request in Form-18 is filed before the expiry of the initial six months. On consideration of the response of the applicant, if the Controller is of opinion that the requirements of Act and Rules have not been met, the fact is communicated to the applicant clearly mentioning that the application is liable to be refused for reasons to be detailed and fixing a date for the hearing. If the applicant fails to appear for the hearing without any request for adjournment, the application is refused. If written submissions are filed, while the opportunity to be heard is not availed by the applicant, no further opportunity to be heard is provided and the matter is decided based on the written submissions. If the applicant complies with all the requirements laid down under the Act and Rules, communicated in the form of a statement of objections, the application shall be registered forthwith.
- How to know whether any registration already exists?
Two different forms have to be used in two different situations.
When the registration number is known:
Requests can be made by any person in form 6 along with the fees and mentioning the registration number of the design for which information is required.
When the registration number is not known:
Requests can be made by any person in form 7 along with information in his possession. Based on such information, the controller causes a search to be made in the class indicated therein as much as possible. Where Form 7 is accompanied by a representation or specimen of the design, such representation or specimen is to be furnished in duplicate.
- What are the criteria for Design Registration?
A design should:
Be new or original registration
Not been disclosed to the public anywhere by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration.
Be significantly distinguishable from known designs or combinations of known designs.
Not comprise or contain scandalous or obscene matter.
Not be a mere mechanical contrivance.
Be applied to an article and should appeal to the eye.
Not be contrary to public order or morality.
Not be prejudicial to the security of India
- What is the term of Protection if Design is registered?
The copyright in a registered design may be extended by a period of five years, from the expiration of the original period of ten years. An application for extension of copyright shall be filed before the expiry of the original period of ten years. Registration of design ceases to be effective on the non-payment of an extension fee. However, lapsed designs may be restored provided an application for restoration in Form-4 with prescribed fees is filed within one year from the date of lapse stating the ground for such non-payment of extension fee for sufficient reasons. If the application for restoration is allowed the proprietor is required to pay the prescribed extension fee and requisite additional fee and finally the lapsed registration is restored.
- Is it possible to renew the term of the Design Registration?
No, there is no provision for renewing the term of the Design registration once a period of 15 years is over.
- Is Cancellation of registered Design Possible?
The registration of a design may be canceled at any time after the registration of the design.
Petition for cancellation has to be made in form 8
Following grounds can be used for the same:
That the design has been previously registered in India or
That it has been published in India or elsewhere prior to the date of registration or
The design is not new or original or
Design is not registrable or
It is not a design under Clause (d) of Section 2.
- Can the Refusal of Design Registration be appealed?
Yes, the jurisdiction lies with the High Court.
- Are the abandoned applications published? Can the same applicant apply for registration of the same Design again?
Abandoned applications are not published by the Design Office. Another application can be made for the same design if the Applicant has himself not made the Design available to the public.
- What are the remedies available in the case of piracy of Registered Design?
In case of piracy of registered Design, a suit for injunction and/or recovery of damages may be instituted against the accused in any court, not below the court of District Judge.
Section 22 of the Design Act 2000 provides the legal proceedings to be followed in case of a Piracy of Registered Design.
One of the below remedies can be sought against the accused:
- Paying to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt provided that the total sum recoverable in respect of any one design shall not exceed fifty thousand rupees; and
- Recovery of damages for any such contravention, and an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly