Design Registration in India

Understanding Design Protection Strategy

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.

Industrial Design Protection

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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Industrial Design Protection

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.

Understanding Design Protection Strategy by design patent attorney

Essential Elements of Design

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.

   

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Requirements for Registration of Design

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:

 

    • That such a design has been previously registered in India
    • That such a design has been published in India or any other country prior to the date of registration
    • If the design applied for registration is not original or new in nature
    • The design applied for registration is not registrable under the Designs Act
    • If the design meant for registration does not qualify the essentials of a design itself as mentioned under section 2(d) of the Designs Act, 2000.

Examination of Design Application

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.

Classification of Industrial Designs

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.

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