Claim against similar Applications of Design Registration

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This article describes the instances of Raising claim as an Applicant or Joint Applicant against Similar Applications of Design Registration; under Section 8(1) and 5 of the Act.

Introduction

As per the Design Act of 2000, a proprietor who wishes to get a design registered; that is unique and does not conflict with any law, can apply to get the design registered. However, wherein a design is applied for by multiple applicants or is assigned to additional claimants; the same can pursue their rights under the Design Act through Form 2.

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SIMILAR APPLICATIONS FOR DESIGN REGISTRATION

The Designs Act, 2000

Section 8(1):

Under the Design Act where a claimant can prove that they hold rights to a design under any assignment; or an agreement in writing with the original applicant of the design, they can claim such right through Form 2.

If the Controller concurs that such a claim is legitimate and has been made in the required manner; by operation of law, they may, as per the provisions of section 8(1); direct that the application shall continue in the name of the claimant or claimants and the applicant.

Section 8(5):

If any conflict occurs between Joint Applicants for registration of a design on how the application must proceed; the Controller may, upon application allow all parties to be heard.

Subsequently, the Controller asks for the application to continue in the name of one or more of the parties independently; or for overseeing how it should be continued with, or for both those reasons, as the case may need.

Substitution of Applicant or Joint Claiming:

Under the Design Act, the name of an applicant can be altered; or a joint claim can be made for an applied design through Form 2 if certain prerequisites are fulfilled.

The claim for substitution or alteration is given rise to before the design is registered. The rights of the claimant are established only by way of an assignment; or a written agreement made by the applicant or by operation of law.

Further, the design in question must be specified in the assignment or agreement. Such could be specified by reference to the application number for registration; and the rights of the claimant must be finally defined by a Court.

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The Application under Form 2

A petition for substitution or alteration of the applicant of a registered design must be filed in Form 2; along with the mandatory fee.

If the requirements under the Design Act are fulfilled and the Controller is content that; after registration, the claimant is authorized to any claim interests in the design. The Controller may authorize that the application shall progress either in the names of the ‘claimant’; or ‘claimants and the applicant’ or the ‘other joint applicants’, as the case may be.

Though, in the case of joint applicants; the Controller does not authorize such recommendations without the approval of the other joint applicants. Wherein, the joint applicants die before the registration of the design; a petition is given rise to for substitution by the survivors of the applicant or claimant.

The Controller may authorize that the application shall continue in the name of the survivors independently. However, no such recommendation is announced without the approval of the legal representative of the deceased.

Details Required under Form 2:

The Form must include the, Name; Address; and Nationality of the claimant; whether they are an applicant or joint applicants.

It must provide the name of the applicant in whose favor the initial design registration was filed; along with the name; address; and nationality of the applicants who claim to be entitled to the rights of the design.

To claim such entitlement, the claimant must provide documents indicate how their assertion is legitimate.

The claimant must state the nature of the document on the Form and affix the same to it at the end; with the document giving its date, the parties thereof, and proof of claim.

Lastly, the Form is signed by the Claimant and the applicant or their authorized agent. The signature of the applicant indicates their consent to the request outlined in Form 2.

Fee:

To proceed with a claim as an applicant or a joint applicant under Form; the claimant must pay the prescribed fee depending on their nature. Wherein the claimant is a natural person the fee payable is INR 500. However, where the applicant is other than a natural person the fee payable for a small entity is INR 1000 and for others except small entity is INR 2000.

Conclusion

Since designs protect the aesthetic value of a commodity; such an Intellectual Property doesn’t need to be created by a single entity. Thus, such provisions must be made wherein multiple applicants can lay claim to the design before it is conclusively registered. Such joint applicants and claimants are given reasonable rights to use and employ the registered design for the 10yr registration period.

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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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