Industrial design refers to a creative activity resulting into ornamental or formal appearance (shape and configuration) of a product and design right refers to a novel and original design that belongs to the proprietor of a registered Design.
Industrial Design is part of Intellectual Property and India has laid down in its Design Law (the Design Act, 2000) in conformity with the TRIPS agreement. The purpose of Design Law is to promote innovative activity in the industries by protecting the Design element of the owners of the Design. The Design Law takes care of the rapidly changing technology in the several fields.
A consumer generally relates to a design of a product when he buys the product. A superior design goes a long way ensuring a good response from the consumers. The owners of businesses therefore generally would like to register the design and protect their intellectual property in design.
We provide the following services:
- Search and Filing of applications in India and in other countries/regions
- Assignment and Licensing services
- Watching and renewal services
- Portfolio management services
- Retainership services
- Valuation of IPR including Designs
Procedure for Registration of Design in India
Filing an application for Registration of Design
The applicant / applicant’s advocate needs to file prescribed forms and fees and four to seven copies of representation of a Design depending upon the article to be registered.
Examination of an application
The Design office will examine a application and will send a report citing observations and objections to the registration of design to Design Office. The applicant thereafter must reply to the examination report.
Registration
The Patent office will issue the certificate of registration after the objections have removed and the application is accepted.
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Publication
The Patent Officer will notify in the Patent Office Journal, the facts relating to the registration. Forms and fees for the Registration of Design in India
Design Act click here
Design Rules’ 01: click here
Design amended Rules’ 08 click here
Design amended Rules’ 14click here
Basic Requirements:
Novelty: A design is capable of being registered only if it is novel, new or original. A design is stated to be new if it is not already published anywhere in the world or does not form part of the public domain.
Since as per the Act the Design is always in relation to an article and since the definition of a article includes an article or any part thereof capable of being made and sold separately, the requirement of a design to be registered must be in respect of an article capable being made and sold separately.
Requirements for filing Design Application
- Applicant: (Firm / Company / Individual) :
- Address, Tel. and Email:
- Full Name of the signatory with Father`s / Husband`s Name:
- Names and residential addresses of Proprietor / Partners (in case of company, address of registered office of the company)
- Photos: 5 sets from four or five different angles depending on the product
- Drawings of the Design
- Brief statement of novelty of the Design
The following is the procedure to be followed for obtaining a Patent in India:
- that the design has been previously registered in India;
- that it has been published in India or in any other country prior to the date of registration;
- that the design is not a new or original design;
- that the design is not register-able under this Act;
- it is not a design as defined under clause (d) of section 2.
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An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.
The Controller may, on the application of any person aggrieved by the non-insertion in or omission from the register of designs of any entry, or by any entry made in such register without sufficient cause, or by any entry wrongly remaining on such register, or by an error or defect in any entry in such register, make such order for making, expunging or varying such entry as he thinks fit and rectify the register accordingly.
As per section 22 of the Designs Act, during the existence of copyright in any design it shall not be lawful for any person
- for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied;
- to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof,
- knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
- that the design is not register-able under this Act;
- it is not a design as defined under clause (d) of section 2.
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If any person acts in contravention of this section, he shall be liable for every contravention-
- to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt,
- if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly: Provided that the total sum recoverable in respect of any one design under clause
- shall not exceed fifty thousand rupees: Provided further that no suit or any other proceeding for relief under this subsection shall be instituted in any court below the court of District Judge.
- In any suit or any other proceeding for relief under subsection (2), ever ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defense.
- Notwithstanding anything contained in the second proviso to sub-Section (2), where any ground or which the registration of a design may be cancelled under section 19 has been availed of as a ground of defense and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceedings shall be transferred by the Court in which the suit or such other proceeding is pending, to the High Court for decision.
- When the court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs
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What is an industrial design?
Industrial design is a composition of two-dimensional lines or colors, or any three dimensional shape that gives an industrial product, or a product of traditional crafts, a special appearance provided that this is not only for functional or technical purpose including textile designs. A design is what makes an article attractive and appealing. Hence, it adds to the commercial value of a product and increases its marketability.
What is the Procedure for registration of a Design in India?
Any person, who claims to be the owner of a new or original design that is not previously published in India, can apply for registration of design. The application can be made with the Indian Patent Office; an examination report may be issued. Within a stipulated period of six months from the date of filing of a design application a reply is required to be filed in response to the objections raised in the examination report, the response may be accepted or rejected by the controller. If rejected an opportunity for amending the application or submitting further replies is provide. Once the objection is complied with, the application is accepted and a certificate of registration is issued.
What is the term of protection for industrial designs?
The protection period of industrial designs is Ten years from the date of filing the application and can be renewed for another term of Five years.
Protecting an industrial design is also a reward for creativity and encourages economic development. It is protection against unauthorized copying or imitation of the design and can be relatively simple and inexpensive to develop.
When a design is protected, the owner i.e. the person or entity that has registered the design is assured an exclusive right against unauthorized copying or imitation of the design by third parties. This helps to ensure that the design of the products is exclusive to the owner and the customer can at once identify the design of the product as that of the owner.
What are the essential requirements for the registration of ‘design’ under the Designs Act, 2000?
- The novelty may reside in the application of a known shape or pattern to new subject matter. The design should be new or original, not previously published or used in any country before the date of application for registration.
- Designs of industrial plans, layouts and installations are not registrable under the Act.
- The design should be applied or applicable to any article by any industrial process
- Design must appear and should be visible on the finished article, for which it is meant.
- The design should not include any Trade Mark or property mark or artistic works as define under the Copyright Act, 1957.
Where and How to apply for Design Registration?
Any person interested may apply for a registration of Design by filing an application on the prescribed format along with the prescribed fees. An application for registration of Design can be filed at Kolkata it is a head office for handling the Design Application.
What are the rights conferred by registration?
Upon registration, the registered owner of the design gains the copyright in the design, he has the exclusive right to apply the design to any article in the class in which it is registered. Industrial design rights are granted to the creator of designs to reward them for their effort and investment in manufacturing the product. The holder of this legal title has the exclusive right to make, import or sell any objects to which the design is applied. They can authorize others to exploit the design and bring a legal action against anyone using the design without authorization.
An industrial design certificate is granted to more than one creator?
Yes, if the subject matter of protection is a joint work of several persons, they shall be equally entitled to the right, unless they have agreed.
What is a Register of Designs?
The Register of Designs is a document maintained by The Patent Office, Kolkata as required . It contains the design number, class number, date of filing, name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.
Wouldn’t an industrial design be protected as an “artistic work” under the Copyright Act?
If a design is registered under the Designs Act, it will not be granted protection under the Copyright Act, even though it is an original artistic work. In case the design is not registered under the Designs Act and it is an original artistic work, copyright protection under the Copyright Act will automatically subsist. However, copyright protection under the Copyright Act, will cease to exist as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the copyright owner. Therefore, it is highly recommended that industrial designs are registered under the Designs Act.
Design Infringement
Registered design can be infringed by the unauthorized manufacture for commercial use or the unauthorized sale or hire of articles in cooperating or embodying the registered design.
Legal action can only be taken against an infringer once the certificate of Registration has issued. Court proceedings are initiated in the High Court. Appeals are possible to the court of Appeal.
What is meant by classification of goods mentioned in the Third Schedule?
In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. This classification has been made on the basis of Articles on which the design is applied.
Practical Example: If the design is applied to a toothbrush it will be classified under class 04-02. Similarly if the design is applied to a calculator, it will be classified in class 18-01. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible, but period of registration will be valid only upto period of previous registration of same design.