Procedure for obtaining Design Protection

Design Rights

As in the case of any other IP rights, design registration also confers on the proprietor a monopoly right by which he/she can, without his/her prior permission, legally exclude others from reproducing, manufacturing, selling, or dealing with the said registered design. The registration of a design is especially useful for entities where the form of the product has an aesthetic meaning and the entity wishes to have exclusivity over the novel and original design applied to the product(s) or article(s) of the product(s).

In addition to the above, the design sought for security must be either new or original, i.e. not made available to the public in India or anywhere else in the world by prior publishing, prior use or otherwise. The design should be substantially distinguishable from designs that are already licensed, pre-existing or disclosed to the public or a combination of designs. Moreover, any scandalous or obscene matter or any other matter should not be included in the design.

Essentials for Design Rights

1. The design should be new or original, not previously published or used before the date of the registration application in any country.

2. In applying a known shape or pattern to the new subject matter, the novelty can lie. Practical example: When applied to a cigarette holder, the known shape of "Qutub Minar" is the same as that reported. However, if no actual mental activity for conception is involved in the design for which the request is made, then registration will not be considered.

3. The design should be applied or applicable by any industrial method to any article. Artistic designs such as drawings, sculptures, and the like that are not produced in bulk by any industrial process are usually exempt from registration under the Act.

4. In the finished article, the features of the design should cater to and be judged solely by the eye. This means that the design must appear on the finished article for which it is intended and should be visible; hence, any design in the inside arrangement of a box, money purse or almirah may not be regarded as showing those articles in the open state, as those articles are usually placed in the closed state on the market.

5. The design should concern the form, arrangement, pattern or ornamentation characteristics added or applicable to an article. Thus, under the Act, designs of industrial plans, layouts, and facilities are not registered.

Requirements of Design Registration

Registrations for designs must comply with the following conditions:

• The concept must be new or original and should not be revealed to the public in any way whatsoever prior to the date of filing.

• Distinguishable from known designs must be

• Applicable to an article such as paper and eye appeal must be

• Does not contain scandalous or obscene content

• It is not just a technical operation.

• May not contravene public order or ethics

Instead of highlighting or pin-pointing some aspect of the depiction as a novel, the novelty of the concept should reside in the article taken as a whole. In addition to a declaration of novelty, the Indian Patent Office demands that disclaimers be made with respect to the words, letters, numbers or trademarks found in the representation sheet(s) and that any mechanical features, the theory of action or the functioning of the article be endorsed in all the representation sheets.

Duration of Registration and extension of Design Rights

The length of the design registration shall initially be 10 years from the date of registration, but in the case of applications where a priority claim has been granted, the duration shall be 10 years from the priority date. On the request made in Form-3, this initial registration period can be extended by a further period of 5 years followed by a fee of Rs. 2,000/- to the Controller before the expiry of that initial period of Copyright. An application for such an extension can be made by the design owner even as soon as the design is registered.

Cancellation of Registration of Design Rights

The registration of a design can be canceled at any time after the registration of the design with a fee of Rs. 1,500/- to the Controller of Designs on the request for cancellation in form 8, on the following grounds:

• That the model has previously been registered in India or

• That it has been released prior to the date of registration or elsewhere in India or elsewhere

• The architecture is not recent or original or

• Style is not registrable or is not registered

• Under Clause (d) of Section 2, it is not a design.

Impact of Indian Design Registration

• When a design is licensed, the design is patented by the owner of the registered design for a period of 10 years from the date of registration. It can be extended for a further period of five years from the expiry of the original period of 10 years by the application in the manner specified, i.e. by the filing of a renewal of registration on Form 3.

• Except by license or written permission of the registered owner, the use of the registered design is illegal by any person during the validity of the registration.

• By copying the registered design, a registered proprietor can sue for recovery of damages for any violation of design rights.

• A registered owner can carry out design assignments and transmissions and details of the registered design should be entered in the Register of Designs at the Patent Office, Kolkata.

• An individual entitled to copyright in a registered design by assignment, transfer or other action of law may register his title by filing an application with the Controller of Designs in the form prescribed.

• The showing of a design or of any article to which a design is applied shall not prevent the registration or invalidation of the registration of the design, provided that the exhibitor gives the Controller of Designs advance notice in the manner prescribed. Such an application for registration must be made within six months of the date on which the design or article was first displayed or a description of the design was written.

• In the case of registered designs, as in the case of patents, the provisions of the Patents Act 1970 with regard to certificates of the validity of a patent and remedial action in the case of groundless threats of action against infringement shall apply in the same way as in the case of patents.

BY -

Ankita Rathi