DESIGN REGISTRATION IN INDIA

DESIGN REGISTRATION IN INDIA

INTRODUCTION

Design is a type of Intellectual Property that can be understood as the creation of an original feature of any shape, pattern, ornamentation, configuration, or composition of shapes, lines, colours applied to any article in the form of two-dimensional, three-dimensional, or both.[1] The Design is a form of aesthetic aspect that is added to any article or shape of a product.

The Design Act, 2000 is applicable to any shape or composition of shapes which is an outcome manual, industrial, chemical or mechanical process or a combined process where a finished article is granted protection from possible infringement when it can be distinguished solely by the eyes.

Here, an Article can be referred to any object which is a result of manufactured goods, any substance, natural or artificial. Design Act is applicable to an article as well as a set of articles, where it is mostly intended to be sold together, where all the individual articles bear the same character or attribute.

ESSENTIAL FEATURES OF DESIGN UNDER THE DESIGN ACT, 2000

  • The design must be new and unique. It must be an original work of the owner, which is not published or available anywhere in the country.[2]
  • The Design must be related to a shape, pattern, configuration, ornament, or any combination of these.
  • The design must be an outcome of the industrial process; manual, chemical, mechanical, etc. But the method of processing, manufacturing, or creating is irrelevant to the Design Act.
  • The design must be visible to the eyes as a finished product and any article meant for keeping in a closed-form/ hidden state cannot be put for registration under Design Act, 2000.
  • A Design is completely an outcome of the industrial process and, it should not be misunderstood as a trademark, property mark, Copyright or patent legislation.
  • A design must be distinguishable and refrain from containing scandalous, obscene, or contrary to public order or morality.
  • Label, stamps, printouts, cards, pamphlets, tokens, etc are covered by the Design Act because the design must include shape, patterns, and 2-D or 3-D dimensions. A mere picture on a piece of paper or metal does not suffice the prerequisites.

 

REGISTRATION OF DESIGN UNDER THE DESIGN ACT, 2000

  1. AN APPLICATION FOR REGISTRATION
  1. The Application of Registration of Design has to be filed before the Office of the Controller General, or Patents, Designs, and Trademarks (CGPDTM) situated at Kolkata. This is affiliated to the division of Department of Industrial Policy & Promotion (DIPP) in the Ministry of Commerce and Industry.
  2. The Application can also be filed in the ‘Receiving Office’ at Chennai, Mumbai, New Delhi, and Kolkata where it is sent for Examination in the Patent Office of Kolkata.
  3. The application must be in accordance with Form 1, supported by prescribed fees.
  4. The application must mention the class of the article for which registration is sought. The class of article is with respect to the Locarno Classification.
  5. Application for Design Registration can be filed by any person who is the proprietor of a design/ owner of the design. Here, ‘Person’ includes:-
  • Individual Person
  • Artificial Person such as Partnership firm, Corporate entity, a legal entity
  1. DOCUMENTS REQUIRED FOR DESIGN REGISTRATION
  1. Documents describing full details of the Applicant (owner) like name, permanent address, address of the registered office, nationality, etc.
  1. 4 copies of Photograph of the Design, computer-generated image with different views from the front, back, sides, bottom, and top.[3]
  2. Original priority document as per Rule 15 of the Design Rules, 2001.
  3. A general power of authority or General Power of Attorney if filed through agent or advocates.
  4. A document stating a disclaimer of the novelty of the industrial process involved in respect of the design.
  5. Declaration
  6. Affidavit (must be in paragraphs)
  1. EXAMINATION OF DESIGN APPLICATION
  1. On the filing of Application, the Controller shall appoint an examiner who will conduct an examination of the design application under the Design Act, 2000.
  2. The examiner will conduct an examination where it will determine whether the design is novel and capable of registration.
  3. The registration is granted upon the satisfaction of the concerned department. The registration is granted upon examination of the design and overcoming objections, if any, raised against the registration of the design.
  4. The applicant needs to file a reply to the objection and the Applicant has to file a reply to the objection within one month otherwise it will be considered as withdrawn.
  1. CERTIFICATE OF REGISTRATION OF DESIGN
  1. Upon acceptance of registration of Design, the Controller shall grant a ‘Certification of Registration’ to the registered proprietor of the design
  1. REGISTRATION OF DESIGN
  1. The Patent Office will keep a register of designs where all the information of the registered designs and the proprietor are kept safe. It can be maintained in the form of offline as well as online systems like computers, floppy disks, etc.
  2. The design registration gives a monopoly to the proprietor over its product with which the design is associated.
  1. GROUNDS FOR CANCELLATION OF REGISTRATION
  1. If the design contains scandalous, obscene matter, or it is contrary to public order or morality.
  2. The design is not the original work of the owner or lacks novelty.
  3. The design can be refused registration if it is already registered in India.
  4. If the design is already published in India or in any other country before the date of registration.
  1. TIMELINE FOR REGISTRATION
  1. Once the application is filed before the registry, it is important to keep a track on the status of the application and stay alert for possible objection.
  2. On acceptance of the application, the design is registered for a period of ten years (10) which can be further extended for five years (5) on the application for extension. Application for an extension is to be filed before the registry upon payment of extension fees.[4]
  1. ENFORCEMENT OF LEGAL RIGHTS UNDER DESIGN ACT, 2000
  1. Once registered, the proprietor enjoys the exclusive right to exploit the benefits of design in the article within the class it is registered. Upon infringement, the registered proprietor can file a suit for design infringement against unauthorized use.
  1. PENALTY FOR PIRACY OF A REGISTERED DESIGN UNDER DESIGN ACT, 2000
  1. Piracy can be understood as an act of imitating any registered design without the consent of the registered owner and using it for the purpose of sale and purchase without any license or written agreement.
  2. Copying the design or imitating it with the knowledge of unauthorized use will attract penalty not exceeding Rs. 25,000 for every single infringement.[5] Where a sum of Rs. 50,000 can be recovered on one design as a matter of contract debt.
  3. The suit of design infringement should be filed in a court of law not blow the jurisdiction of the District Court.
 

[1] Section 2 (d) of the Design Act, 2000

[2] Section 19 of the Design Act, 2000

[3] Ipindiaonline.gov.in [online] Available at: https://ipindia.gov.in/writereaddata/images/pdf/design-registration.pdf  [Accessed 5 February 2021].

[4] Section 11 of the Design Act, 2000

[5] Section 22 of The Design Act, 2000

 

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