Design always fascinates and attract people to new things. Highly observed that the design of any product provides a general idea of the associated technology or use. In developing countries, competition in the business world increases, and any picture, shape, or design grabs people’s attention. Therefore, it is essential to be protected such intellectual property and keep your design safe from piracy.
The legal procedure required for the registration of Design in India.
For the registration of a design, first, we essential to understand the term “Design”.
According to Section 2(d), “Design” means the configuration, pattern, features of shape, ornament or composition of lines or colors applied to any article, whether in 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.
Further, the design does not include
- Any trademark as defined in Clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or
- Property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or
- Any artistic work as defined in Clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).
History and Origin: To learn the present situation under the Design act, we should know from where the term design came into existence and how it is changing from time to time. First, the designs were protected under the Patent and Designs Protection Act, 1872. Then in 1911, for the better protection of the Industrial Designs, the Patent and Designs act was enacted. In 1970, the Patent Act was enacted to deal with the matters of patent specifically. The legal system of the protection of industrial designs must be made more efficient to ensure adequate protection to registered designs. Therefore, the bill was passed in the parliament called Designs Bill to promote design activity to promote the design element in an article of production. Bill’s bill’s main aim is to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity while removing impediments to the unrestricted use of available designs. The Designs Act and Rules provide for filing of a Design Application in any of the four Patent Offices, i.e. Patent Office Delhi, Mumbai, Chennai or Kolkata.
The essential requirement for design registration:
Novelty and originality: The most important thing is required at the time of registration that a design must be new with no prior publication or use or in any other way, prior to the filing date or priority date of the design in India or any other country. Original means in relation to a design, originating from the author of the design and includes the cases, which though old in themselves yet are new in their application. The examiner can conduct a novelty search to examine whether it is new or not.
Public order and morality: A design must not breach the peace and harmony of the nation. It does not affect the morality of the nation can be applicable for the registration. Otherwise, an application for the registration of the design is not registrable.
Prohibition of registration of certain designs:
A design which,
(A) is not new or original; or
(B) Has been disclosed to the public anywhere in India or any other country 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; or
(C) is not significantly distinguishable from known designs or combination of known designs; or
(D) Comprises or contains scandalous or obscene matter shall not be registered.
Who can apply?
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 author has developed the design, or
- A person on whom the design has devolved.
Type of Applications that are filed under the Design Act:
The present system allows two types of designs application as Ordinary and Reciprocity applications. According to section 5 and section 44, the application for the particular design has been mentioned.
- Ordinary application means any person claiming to be the proprietor of any new or original design not previously published in any country and which is not contrary to public order or morality, registering the design under this Act is known as Ordinary application.
- Reciprocity application means the application for design registration filed with the Indian Patent Office, claiming priority from already filed design application(s) filed in a convention country or group of countries or inter-governmental organizations is called priority application. The priority design application must be filed within six months from the date of the earliest priority applicant, and the said time limit is not extendable.
Procedure for the registration:
Form-1: Application for registration of design:
- According to Sections 5 and 44, an application shall be filed in Form-1, along with the prescribed fees, stating the full name, address, nationality, article’s name, class number and address for service in India. Foreign applicants are also required to give an address for service in Indiwhiwhi, which could be their Agent’s address in India. In the case of foreign applicants, it is mandatory to give an address for service in India. Unless such an address is given, the Office shall not proceed with the application.
- The class to which the article belongs shall be mentioned correctly in Form-1. Under the Designs Rules, 2001, articles have been classified based on the Locarno Classification. It may be noted that for registering a design in more than one class, a separate application must be filed for each class.
- The application shall be signed either by the applicant or by his authorized agent/legal representative. Only a registered patent agent or a legal practitioner can be appointed as an authorized agent in India.
- In case the applicant has already registered a design in any other class of articles, the fact of such registration along with the registration number shall be mentioned in Form-1.
Locarno agreement is an agreement as per which the designs are registered under the Act. It classifies goods to register them, which helps in Design searches. It divides designs into different classes, which are mainly function-oriented.
Supporting documents that are also required to file the design application in India:
Form 21: Power of authority to agents:
(1) All applications and communications to the Controller under the design Act may be signed by, and all attendances upon the Controller may be made by or through a legal practitioner or by or through an agent whose name and address has been entered in the register of patent agents maintained under section 125 of the Patents Act, 1970 (39 of 1970).
(2) The Controller may, if he sees fit, require –
(a) any such agent to be resident in India;
(b) any person not residing in India either to employ an argent residing in India;
(c) the personal signature or presence of any applicant or other person.
Representation Sheets: Representations should be prepared as prescribed under Rule 12 (Statement of novelty), 13 (Additional copies of representation or specimens) and 14 (Representation) of the Designs Rules and should be submitted in duplicate.
Form 24: Claiming the status of a small entity or start-up (if the small entity or start-up status is claimed)
(a) It should be accompanied with evidence of registration in the case of Indian entities.
(b) It should be accompanied with an affidavit deposed by the applicant or authorised signatory as Rule 42 of Designs Rules in case of Foreign entities.
Certified copy of priority document: The proprietor is required to submit the original Priority document along with the authenticated English translated copy of the Priority document (if the original priority document is other than English) under Rule 15 of the Designs Rules. Note: To be filed in the reciprocity application under Section 44.
Assignment Document: Assignment in original (if the applicant of priority application in a convention country is different from Indian applicant).
The fee payable under the rules may either be paid in cash or through electronic means or may be sent by bank draft or cheque payable at par to the Controller of Designs and drawn on a scheduled Rule 5 bank located at the respective filing location.
Stamps and Indian Postal Orders are not accepted.
Where the fee is payable in respect of a document, the entire fee shall accompany the document.
Fee once paid in respect of any proceedings shall not ordinarily be refunded irrespective of whether the proceeding has taken place or not.
|For natural person(s) and/ or Startup(s) and/or Small entit(y)/(ies) and/or Small entit(y)/(ies)||Other(s), alone or with natural person(s) and/ or Startup(s) and/ or Small entit(y)/(ies)|
|Application for registration of design under sections 5 and 44||1000||4000|
RAJESH MASRANI v. TAHILIANI DESIGN PVT. LTD: Artistic work excluded from protection under the Designs Act.
Section 15(2) of the Copyright Act is applicable to the Copyright in any design capable of being registered. However, it has not been registered. The Copyright in the said design ceases to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process. Section 2(d) of the Designs Act, 2000 does not include any “artistic work” as defined in Clause (c) of Section 2 of the Copyright Act. Registration of the work is not compulsory, nor is a condition precedent for maintaining a suit for damages for copyright infringement.
Gammeter Vs Controller of Patents and Others: The design should be protected, and it was not merely an analogue. The test of novelty is the judge’s eye, who must place the two designs side by side whether the one for which novelty is claimed is new.
Conclusion: The Design Act, 2000 is to consolidate and amend the law relating to the protection of industrial designs. To give protection to the creator and give rights to use it. Under the Intellectual Property Rights, the protection is given because, in the business world, piracy and illegal activities are increasing. Therefore, it is necessary to protect your design. Though it is not mandatory in India, it gives rights, and it protects your designs.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.