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This Article explains the nuances of filing application for the purpose of the Restoration of a Design.
The objective of the Design Act, 2000, is to preserve a design, which an individual develops, that applies the same to a specific good; and is produced by an industrial process. To prevent infringement, the Act allows the restoration of a design in India. Its proprietor is lent with all the opportunities to protect their rights; by legalizing provisions concerning the restoration of the design.
The registration of design will expire on the non-payment of extension fee for an additional period of 5yrs; if the same is not expended before the end of the initial period of 10yrs.
Nonetheless, lapsed designs may be restored given that the application for restoration is submitted through Form 4; and the dame is filed within a year from the date of lapse.
It must note the ground for the non-payment of extension fee with adequate explanations. If the application for restoration is permitted; the owner is compelled to pay the mandatory extension fee and requisite additional fee.
The registered owner or their legal representative can apply for the restoration of lapsed design. If two or more individuals wield the registered design; then one or more of them without joining the others can apply for restoration. If the application is filed by any other individual claiming to be the owner of the registered design, then; the application must be supported by Form-11, for implicating a change in name or proprietorship in the Register of Designs.
The application proceeds solely after the change in name; or proprietorship are completed according to the provisions given in the Act.
However, Design wing will not determine any application for restoration; if the change has occurred after the expiry of the Registered Design. Wherein the registered proprietor neglects to register a change of a name before or after the cessation; they must initially apply for such a change in the Register of Design.
The application for restoration must continue only after the change has been represented in the Register of Designs.
The application for restoration is filed with the Controller through Form 4; as specified under Rule 24 of the Design Rules, 2001. The application must contain a statement ascertaining the factual events; that led to the negligence in payment of the fee for the Renewal or extension.
The application for restoration must encompass corroborative evidence for the delay in payment by the registered owner. The evidence must substantiate the claim of the registered owner. It must substantiate that the failure in payment was involuntary; and there has been no unnecessary delay in applying for restoration of lapsed design by the registered owner.
The Controller may expect some proof in support of the declaration made by the registered owner. Once the Controller is pleased that the negligence in payment was involuntary; the Controller can bestow an order for restoration of the registration of a lapsed design.
If the Controller thinks that there is a prima facie issue for not authorizing the application; the registered owner must be informed accordingly. Here, the registered owner may petition the Controller for a hearing on the issue within a month; from the date of receipt of such intimation. Unless the registered owner makes such a petition; the application for Restoration is refused or dismissed by the Controller.
The registered owner is claiming for a hearing within the period authorized. The Controller, if after the hearing is pleased that the failure for payment for the renewal or extension of copyright is involuntary; and there was no excessive delay in making the application for restoration, the application is authorized by the Controller. The information that a registered design is restored is announced in the Official Journal by the Controller.
According to Rule 25 of the Design Rules, after the application for Restoration is permitted by the Controller, the registered owner is mandated to pay the pending fees for renewal or extension of copyright of a registered Design.
This fee is payable within a month from the date of the order of restoration by the Controller to the registered owner, permitting the owner for the restoration of lapsed design. The Controller is similarly mandated to announce in the Official Gazette their decision on the application.
To proceed with an application for the restoration of a lapsed design under Form 4, the applicant or its representative must pay the prescribed fee depending on their nature.
Wherein the applicant is a natural person the fee payable is INR 1000. However, where the applicant is other than a natural person the fee payable for a small entity is INR 2000 and for others except small entity is INR 4000.
The process of restoring a lapsed design is rather easy and quick under the Indian Design Act. Since the Controller is given the discretion to determine whether the registered proprietor made the delay in payment for the renewal or extension of copyright involuntarily, the legislative proceedings are reduced considerably. The restoration application is only initiated by the registered proprietor with a valid reason for non-payment, and the rest is left to the Controller.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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