Innovative products with new shapes, looks, ornamental features & patterns require design protection to prevent copying. Design has been one of the most interesting aspects of protection of Intellectual Property Rights. Often design can be alternatively used with drawings or shape. The physical features of a product such as shape, pattern, configuration, the composition of colours, or colours, in two or more dimensions can be referred to as the design of the product. This design when allowed to undergo an industrial process which leads to the creation of the final product that aesthetically appeals to the eye is known as the design of the product. A design is not inclusive of anything that is mere mechanical in nature. It is also not inclusive of any trademark or any artistic work.
All the Intellectual Property Rights confer upon the holder of such right, an exclusive set of rights. The registration of a design in the same way confers upon the owner of the right, the exclusive right to apply that design to any article in the class in which the design has been registered. When the owner of the design or the original proprietor of the design registers such design, she is entitled to the rights conferred by the Intellectual Property Law i.e. in this case The Designs Act of 2000. She can file a suit for infringement if any other individual copies or engages in malpractices.
In addition to taking legal actions against infringement, the proprietor can also sell, license, assign his design as a legal property for consideration or royalty. The registration of the design typically lasts for 10 years and can be renewed for a period of 5 years. If the fees for the registration is not paid in advance then the right to further extend the protection for the period of 5 years will cease to exist. If the proprietor due to unavoidable circumstances could not file for the extension of registration period, the lapsed design can be restored within an year from the date of cessation in the prescribed manner.
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All the Intellectual Property Rights confer upon the holder of such right, an exclusive set of rights. The registration of a design in the same way confers upon the owner of the right, the exclusive right to apply that design to any article in the class in which the design has been registered. When the owner of the design or the original proprietor of the design registers such design, she is entitled to the rights conferred by the Intellectual Property Law i.e. in this case The Designs Act of 2000. She can file a suit for infringement if any other individual copies or engages in malpractices.
In addition to taking legal actions against infringement, the proprietor can also sell, license, assign his design as a legal property for consideration or royalty. The registration of the design typically lasts for 10 years and can be renewed for a period of 5 years. If the fees for the registration is not paid in advance then the right to further extend the protection for the period of 5 years will cease to exist. If the proprietor due to unavoidable circumstances could not file for the extension of registration period, the lapsed design can be restored within an year from the date of cessation in the prescribed manner.
There are certain essential elements of a design. An applicant must be aware of these criteria for her application to be successfully registered. A design can be registered if it is original or new in its nature. It should be undisclosed to the public either through publication or tangible use in any other way prior to the filing date of the registration. It should also be differentiated from other designs available in the market or it should not be a combination of designs. It should essentially not be scandalous or obscene in nature. The design should also not be a mere mechanical contrivance. It should be such that it is feasible to be applied in the article. It should appeal to the eye i.e. when a person looks at the design, he should be attracted towards it. It should necessarily not be against the public order or against public morality and most importantly it should not be against the security of India.
There are certain things that cannot be registered as a design in India such as any design that is artistic in nature or literary in the form such as books, calendars, forms and other documents etc. cannot be registered as a design. The design should not be a mere principle or mode of construction of an article. It should not be in the shape of a building or structure or should not constitute mere change in the size of the article. It should not be a representation of a country’s flag, emblems or signs and it should not be a layout design of an integrated circuit.
The Designs Act in India specifies essential requirements for registration of design. It is not necessary for the proprietor of the design to be present for the filing of the design application. Legal Representatives or the assignee can apply separately or jointly for the registration of the design. The term person is inclusive of the firm, partnership, small entity or a body corporate. A design registration application may also be filed by a representative of the proprietor, i.e. the agent. If the application is filed through an agent then a power of attorney has to be filed with the application.
The design application once prepared should be submitted to the Indian Patent Office. The Indian Patent office also comprises the Design wing and can be approached for the information on whether a particular design has been previously registered or not in a prescribed format as mentioned under the Form 6 along with the prescribed fees (only applicable if the registration number is known). The application for the design registration can be either prepared by the applicant or with the help of professionals such as Patent Attorneys. If the application is being filed in duplicate then form no 7 is to be filed along with the prescribed fees. Form no 7 can also be filed to know whether the design has been previously registered to the Design wing of the Indian Patent Office.
If an applicant is looking to obtain a priority over an overseas application, then he/she can also file the application with a priority date. Any person who has filed for the registration of design can file for the registration of the design citing a priority date in India. This priority date mentioned in the application will be considered as the date of filing in India. However, the application should be submitted or made before the Office within 6 months from the date of the earliest application for the registration in other countries. A design application may also be cancelled. Any person interested in the cancellation of registration of design can file a petition to the Controller seeking the cancellation of a registered design at any time after the registration of the design. The controller will entertain such an application if it is based on the following grounds:
After the application for registration of design has been filed with the Controller, there is a fixed amount of period in which the objection to the application can be filed. To remove the objections raised, once the examination has been completed, the applicant gets a period of six months extendable for further 3 months on the request made under the form F-18. Prescribed fees have to be submitted along with the form F-18 before the expiry of the stipulated period of six months.
An applicant who fails to file for extension of period, his application shall be deemed to be abandoned by the Controller. All the information provided by the applicant at the time of registration of the design, such information is stored in a register with the Patent Office. Such information stored in the register becomes the prima facie evidence about the information entered therein. Any person can inspect such information after submission of the prescribed fees and on submitting an application with the Controller. An applicant must submit the application in the procedure mentioned under the Designs Act.
Registration of a design can be obtained only after the application for registration has been filed and examined. Any person who wants to register his design can submit the following documents with the Designs Wing of the Patents Office with the head office or the branch offices. If the applicant is submitting his application at the branch office, the application will be sent to the head office by the branch office itself for the purpose of prosecuting and processing the application. The applicant shall file F-1 with the details of the application along with the prescribed fees. The application shall contain the full name and address, nationality, name of the article, class number and address for service in India. It should be signed by the applicant or the agent. If the applicant is a small entity, then Form 24 along with the documentary evidence will have to be submitted with Form 1 and representations.
The representations of the article, drawings, photographs, tracings or any other representations including computer graphics should illustrate precisely the features of such design from different views. The applicant must also file a statement of novelty of the design and disclaimer if any in respect of trademark, mechanical action, work, letter, numerals should be endorsed on each representation sheet which should be duly signed and dated. If the application has to be filed through an agent or a person except the proprietor of the design, then a power of attorney should also be filed along with the other necessary documents. If the application has to be filed internationally, then priority documents should also be claimed under Section 44 of the Designs Act, 2000. Once these criteria are fulfilled and the application is filed before the appropriate forum, each application will undergo examination.
During the examination, the objections or defects are noticed in the application and are communicated to the applicant or his agent. There is a specific time period within which removal of objections can be done i.e. 6 months. If the applicant wants more time then he/she can file for the extension of the time period for the removal of objections before the expiry of the period of 6 months.
Once such a request is filed before the Controller, he may grant an extension of three months. If such a request for extension of time period is not made and the objections are not removed then the application is deemed to be abandoned by the office. Whereas on the other hand If the applicant has removed the objections and the application is accepted, it will be notified in the Patent Office Journal. If the application is refused by the Controller then a hearing will be provided to the applicant. It is post hearing that the Controller will decide if the application is to be accepted or not. The decision of the Controller will be communicated to the applicant in writing stating seasons for the same. If the applicant feels that the decision of the Controller is causing grave injustice then the applicant may also file an appeal to the High Court. An appeal should be made within a time frame of three months post the decision of the Controller.
While stating the claims of the designs in the design application, A statement of novelty shall be made by the applicant. Such statements must conform that the novelty exists in certain parts of the design and elaborate upon it. A disclaimer shall state that the applicant is not making any claim with respect to any mechanical or mechanism of any article or it is not using any Trade mark, word, letters or numerals in the article. Where the trade marks, numerals etc are of no significance to the design they should not be mentioned in the claims as well. Another important document to be filed with the application is the Representation Sheet. This sheet should be filed diligently considering the laws of Design registration in place. This representation sheet is meant to represent the article for which the design registration is sought and it may contain more than 1 page. It shall be exactly similar to drawings, photographs, tracings of the design.
The controller may require a specimen of the article at the time of examination in certain cases. To enable the digitization process, one of the representation sheets shall not be covered with the tracing paper. It is to be filed in A4 size of the paper and only on one side of the paper. A clear representation of the article should be made on the representation sheet depicting all the arrangements in which the design has been applied to the article. If there is an appearance of any name in the representation sheet, then the consent of such person is required in writing and is required to be submitted. Non-compliance with such submissions may result in objections by the office and cause unnecessary delay in the registration process.
In case the name of the person is hypothetical, it should be mentioned specifically. A statement of novelty and disclaimer should be endorsed on each and every representation sheet. The Representation should show the complete pattern including the length and width of the pattern and the repeating pattern as well. The name of the applicant should be mentioned in the top left corner of the representation sheet along with the total number of sheets and sheet number in Arabic numerals on the right hand corner of the representation sheet. The representation sheet should be signed and dated by the applicant. Representation sheet is meant to be aesthetic in nature and hence no descriptive matter or matter denoting the components by reference letters should be included. The relevant parameter in the representation sheet is the shape and not the size of the article. Therefore, there should be no mention of the size. The use of background of the article, Trademarks, words, letters, numerals which are not the essence of the design should not be mentioned in the representation sheet.
A design is classified into classes for the purpose of registration. This classification is valid internationally as it was created during the Locarno Agreement. In India, such classification was introduced post India became signatory to the Locarno Agreement, the changes were brought through the Design Rules 2001 and as in (Amendment Rules 2008. The classes of the designs are further divided into subclasses as well. The name of the article in the design application should be such that it is prevalent in the industry and should correspond to the article in the application. The fulfilment of all the necessary requirements and details in the application will lead to the acceptance by the Controller. If any of the details are incomplete or left blank then the application is bound to receive objections and if unresolved might also lead to rejection of the application. Therefore, one has to do proper due-diligence before submitting the design application before the Indian Patent Office. It is always advised to take the help of a professional or an IP expert for the drafting and filing of the design application.
A design patent implies protection granted for the aesthetic looks or visual aspects of a product. In the United States, this protection is granted as design patent under the patent law, whereas in India, similar protection is granted under the industrial design registration as per the provisions of the Designs Act in India.
The Designs Act, 2000 (the Act) was incorporated to protect and guard the primary design of an article to recognize the innovator for the research and labor they employed to develop that original industrial design. These industrial designs of the innovator, subject to the articles are applied by a particular industrial process or means.
As per the latest provisions of the Designs Act in India, the Locarno classification has been endorsed wherein the subject matter of design is the priority. Under the previous provisions, the classification was made based on the material which has been used to make that material. A concept of “absolute novelty” has been introduced whereby a ‘novelty’ would now be judged based on the prior publication of an article not only in India but also in other countries. This position was ambiguous under the previous law.
A Design registration has been brought within the domain of the public records right from the date it is physically placed on the Register. Any citizen can inspect the records and retrieve a certified copy of this entry. In a prior Act, the confidential period of 2 years before registration restricted the inspection or taking of the certified copy of any entry.
A Design registration would be valid for 10 years (from the date of registration which is also the date of application) renewable for a further period of 5 years. Previous regulations allowed the validation period of 5 years to extend further for 2 terms of 5 year each. Also, a design registration can be restored within a year from its last date of expiry. The previous law had no regulation concerning restoration after the expiration of the Design registration.
The primary objective of the design law in India is to protect new or original designs from getting copied which causes loss to the proprietor. The important purpose of a design registration is to see that the creator, originator, or artisan of any design is not deprived of his reward for creating that design by others duplicating it for their products. The Design Act of 2000 is an Act to consolidate and amend the law relating to the protection of designs.
For innovators, both the design patent and the utility patent provide a high range of advantages. With a view to protect the innovative features of an invention, the utility patent protection is advisable. Specifically, these innovative features can include hardware as well as software related aspects that improve the functionality of the overall product. In comparison, the design patent or industrial design registration protects the visual or aesthetic looks of the product. Whenever innovators think about how to design patent, the first focus should be on the outer looks of a product and then to conduct a design patent search with assistance of an experienced design registration lawyer.
There exist various examples to explain the importance of design patent registration with the USPTO or an industrial design registration with the Indian Patent Office. A common design patent example is the unique visual aspect of footwear by Crocs. The company has been a party to design patent infringement lawsuits in the footwear industry. Companies initiate design patent infringement proceedings as a lot of resources are spent as design patent cost to create visually aesthetic and valuable product portfolios including products that look unique. The process of dealing with a qualified patent attorney comes with an important factor of deciding the cost for design patent as a part of business strategy.
Innovators who plan to launch unique products in market often ask this question that what is design patent and how can a design patent help their startup. As explained above, protection on the visual aspects of an innovation is granted under the scope of design patents or industrial designs. As per the Designs Act in India, the essential requirements for registration of industrial design primarily include novelty and originality. A design can be considered for registration only if its visual characteristics are unique. For combining previously registered designs the combination must produce new visuals. Also, the design must not be contrary to the order and morality, and the design must be capable of being registered under the Design Act, 2000. It must not be outlawed by the Government of India or any institution so approved. The design must be capable of registering under Section 5 of this act. The design which can cause a breach of peace and may hurt the sentiments of the people may not be allowed to obtain registration.
Applicants usually opt for a design patent search to ensure that the proposed design falls under the criteria of eligibility to obtain design patent registration. Innovators refer to the results of design patent searches to answer their question of how to get design patent as the search results provide an overview of existing designs that are similar. Based on the same, the unique design can get protection for an appropriate design patent term. The contents of a design patent application or an application for registration of industrial design should follow the design patent requirements as specified in the law. The main requirements for design patent include filing of various representations with multiple views of the article, like, top view, side view, front view, rear view, and the isometric view.
The best way to file a design patent or to obtain industrial design registration is to ensure that all the documents are filed as per the provisions of the law. In various countries including India, the registration of industrial design is governed by a dedicated law as compared to the USA, wherein the same is covered under the patent law. Based on the contents of the primary application for registration of industrial design, applicants also obtain international industrial design registration, either through the provisions of Hague System for the International Registration of Industrial Designs, or by filing individual applications across different jurisdictions. Essentially, by following this process the applicants are able to obtain industrial design registration in China, industrial design registration in Malaysia, and industrial design registration abroad across several countries. Across multiple countries or jurisdictions, the industrial design registration criteria remain primarily common that requires novel and unique aspects as a main requirement. Generally, applicants who focus on global business markets plan to obtain industrial design registration in india and abroad with a view to secure maximum rights. As discussed above, the industrial design registration in USA is equivalent of obtaining design patent rights in the US market. To conclude, it can be said that the industrial design registration process provides a mechanism for the applicants to obtain industrial design registration in India after duly following the industrial design registration requirements as specified in the law. Such rights can also be classified as an industrial design patent.
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.
A design is considered new when it is not known to the public in India; or any other nation before the filing date or priority date of the application. It is new if it is considerably discernible from recognized designs or a combination of designs. Thus, an important step in design registration in India is the process of publication of the design. Here, wherein the applicant wishes to present the design in an exhibition before its final registration; they have the option to do so through Section 21.
In design registration since the design is registered as a Copyright; the same can be protected under the Copyright Act, 1957 or the Design Act, 2000, but not under both. Simultaneously, the registered proprietor of a copyrighted design has the right to assign their rights by way of assignment; under Section 30 of the Design Act and Rules 32 to 35 of the Design Rules, 2001. Such third-party rights are only applicable; as long as the assignment is executed in compliance with the Act and the Rules.
Under Rule 33 of the Design Rules, 2001 once a design is registered; and subsequently the rights to the same are assigned. An application of ownership is submitted to the Controller. This application is rendered for the registration of title in the name of the new proprietor. Further, under Rule 37 an assignment agreement has to be submitted in its original limitation. This agreement is required to be written; and all the interests of the parties are illustrated in the form of the instrument comprising all terms and conditions. Any violation of the same will make the agreement void. After the performance of all the practices and their registration under the register of designs; the assignment of rights is enforced from that date.
For a Design Application, an applicant is required to document any partial; or complete transfer in title of the design to the Design Office. If this transition is not documented with the Controller the Office; the Court may not acknowledge the same to be evidence of ownership to copyright at a subsequent stage. For this, an application for registration of ownership must mandatorily be documented; within 6 months from the date of the assignment agreement, mortgage, or license. This duration can be extended by a maximum of 6 months.
Once application is received all parties are notified of the same. These parties then gets the rights to file opposition. to the rectification application within 3 months from the date of publication of the application through Form 19 under the Act. The opponent is required to provide their written statement and all the evidence within 14 days of giving the notice of the opposition.
The application for rectification of register of designs can be initiated by any person aggrieved by a non-insertion or omission of entry in the register, an entry made without reasonable cause, an entry mistakenly left behind on the register or a mistake or defect in any entry. Under section 31 of the Act, the rectification application must be submitted along with the prescribed fees to the Controller, who in turn decides the proceedings.
