The sole purpose behind the registration of an original industrial product design under the Designs Act is to protect their design and their esthetic views of the same. The proprietor or the owner of the industrial design can apply that design in the article or the class in which the industrial design has been registered.

Industrial product design plays a very important role in deciding customers’ purchasing behaviour due to the product’s distinctive appearance. Protecting the original industrial product designs from getting copied and the rights of the owner to utilise their design is a pre-dominant necessity. Thus, the predominant test of Registration and Examination is based on the provisions of the Designs Act, 2000 and the Designs Rules, 2001 as amended in 2008.

Examination of Industrial Product Designs

What is Design?

According to Section 5(1) Designs Act, 2000 r/w the Designs Rules, 2001, the Controller of Designs refers a design registration application to an Examiner of Designs for examination as to:

  1. whether the application and supporting documents meet the formal requirements,
  2. whether the design as applied to an article is registrable.

What are the requirements?

Here, the Examiner inspects the general requirements such as:

  1. The application’s correct format;
  2. Payment of stipulated fees;
  3. Details including name, address, and nationality of the applicant;
  4. Declaration of Proprietorship;
  5. Filing the Power of authority (if admissible).

In case of a Reciprocity application[1], following factors are taken care of:

  1. Filing of Application done within the stipulated time;
  2. Fulfilment of the Priority document in the prescribed period. However, the time is extendable by three months.

When the application fails to meet the requirements, the Examiner notifies the Controller, who sends the statement of objections to the said applicant. Later, the application is subjected to a substantive examination.

When the Design is in question

The applicant is provided with three months from the date of notification of the statement of objections to correct the flaws or respond to the objections raised by the Controller in the examination report. If the applicant fails, the application will be considered as ‘withdrawn‘. Moreover, the applicant has the right to oppose the objections but with reasonable explanations. Following that, the Controller will hold a hearing and decide on the matter.

The Substantial Examination is a thorough study, conducted to determine if the design in question is:

  1. Whether it falls under the purview of “Design[2]?
  2. Is it unique or original?[3]?
  3. injurious to public decency or order?[4]
  4. detrimental to national security?[5]

Test of “Originality

The criteria of “originality” is derived in Section 2(g), which besides just including uniqueness, also stretches to those designs which are old but are still unique and contemporary in the application. To determine the originality of the design under consideration, the examiner conducts a test using “novelty search[6] in the accessible databases. To determine whether the applied design is significantly different from previously registered, used, or published designs, a class-wise or article-wise search is undertaken. However, besides these statutory provisions, judicial discretion plays a very important role in determining uniqueness.

In Gammeter Vs Controller of Patents and Others[7], it was held that the design should be protected if it is not merely duplicated, and the judges will determine whether the one for which “uniqueness” is claimed is new by comparing the two designs side by side.

Hon’ble Supreme Court of India in Bharat Glass Tube Limited vs Gopal Glass Works Limited,[8] has held that the term ‘originality,’ as defined in Section 4, meant that either the design which was registered had never been published, or that it had been conceived for the first time and never been replicated by anyone. Although the proprietary right was purchased from a German firm, the design for glass reproduction was registered for the first time in India, making it a new and original design.

Registration & Publication

After an application is filed, it is usually published in the Patent Office Journal within a month. The date of filing an ordinary application is also the date of registration. The date of registration in the case of a reciprocity application is the date of applying to the Convention Country.[9] Finally, the Controller issues a certificate of registration to the design’s owner after registration.[10] The certificate is sent to the address for service by registered mail.

Conclusion: The copyright of a registered design is valid for ten years. On applying for an extension of copyright along with payment of the necessary fees, the copyright may be extended for 5 years from the initial design. It is renewed after ten years from the expiration of the original period of ten years.

References: 

[1] Section 15, Reciprocity application the registration of a design, Designs Rules, 2001.

[2] S. 2(d), The Designs Act, 2000.

[3] S. 2(g), The Designs Act, 2000.

[4] S. 5(1), The Designs Act, 2000.

[5] S. 46, The Designs Act, 2000.

[6] Section 4, 5, The Designs Act, 2000.

[7] AIR 1919 Calcutta 887.

[8] Civil Appeal No. 3185 of 2008 (Arising out of S.L.P. (C) No. 16321 of 2006).

[9]  S. 7, The Designs Act, 2000.

[10]  S. 9, The Designs Act, 2000.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

  • Title

    Shubhangi Gehlot is a 4th Year Law student from the Faculty of Law, Maharaja Sayajirao University of Baroda. She is ardent about legal research and writing. Intellectual Property Rights with an amalgamation of Media and Entertainment Law, Cyber and Technology Law and Human Rights are a few of her many key interest areas