Overview of Design Registration
Various industrial designs are registered and protected through the process of Design Registration in India. The entire procedure of the Design Registration is governed under the Designs Act-2000 and the corresponding Designs Rules-2001.
‘Design’ refers to the unique aspects of shape, figure, blueprints or decorations or composition of lines or hues or combination thereof given to an article, which may be 2 dimensional or 3 dimensional or in both formats, by any manufacturing procedure or mode. The process involved in creation of the design may be manual, mechanical, automated or chemical, separate or all-inclusive, by which the finished article appeal to and can be identified solely by the eye. However, this does not contain any mode or a standard or construction or anything which is in material a mere mechanical device. Besides, it does not include any registered trademark, as defined in Section 2(v) of the Trade and Merchandise Marks Act, 1958, as well as a property mark or an artistic work as defined under the Section 2(c) of the Copyright Act, 1957.
The Purpose of obtaining the design registration under the Designs Act is to safeguard a novel or an innovative design so created which is to be applied to a specific article under manufacturing process through an Industrial Process or mode. At times, we see that the buying behaviour of the customers towards some articles for consumption is inclined not only by their actual product quality but also by the design of their appearance, e.g., a mobile phone or goggles. The main objective of obtaining a design Registration is to make sure that the particular artisan, creator, craftsman, engineer or the designer of that design having unique appearance is not deprived and deceived of his bonafide reward by some copycats, who might tend to use his design to their goods.
Design Registration
Why need a Design registration?
A unique industrial design points towards the conceptionof new and innovative features of a product, which are easily identified by the distinctive shape, formation, patterns, beautification and combination of such shapes or shades applied. Anexceptional design in its completed stage appeals to the eye at first sight. It projects a very positive influence over the customers in themarket. Here are some of the key reasons why a business entity needs a Design Registration:
- To get effectual and well-situated legal shield for safeguard of unique designs in India from being imitated or misused.
- To promote and develop creativity and originality.
- It is a mandatorycompliance for all the companies located in the WTO Member nations who have signed the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement.
Law Applicable for Design Registration
The registration and protection of industrial designs in India is administered by the Designs Act, 2000 and corresponding Designs Rules, 2001 which came into force on 11th May 2001 repealing the earlier Act of 1911.
The Design Rules, 2001 was further amended by Designs (Amendment) Rules 2008 and Designs (Amendment) Rules 2014.
Benefits of having Design Registration
Here are some evident benefits of having a design registered under the Design Act 2000
- Legal Shield Against Design Plagiarism
The Design Registration process restricts other entities to copy, reproduce, sell or distributetheir products bearing an identical design to the original one.
- Extended Validity
A Design registration certificate is valid for a period of 10 years. After the expiry of this validity period, the validity can be further extended up to 5 years more.
- Gives A Unique Selling Point
There is no doubt that the design registration gives a business owner a Unique Selling Point. This means that with a registered design, the products of a business entity get a unique characterand appearance from that of itsrivals.
- Saves The Creativity
The products with registered designs are globally unique, which means they are not formerly published in any of the WTO member nations and are also not used by anyone in India before.
- Induces Client Response
Another important benefit of registering a design is that it just appeals to the general customers and is judged solely by the eye.
- Induces Innovation
As uniqueness is the key criteria for Design registration, the product has to be alluring and unique enough from others, this promotes innovation and gives ultimate boost to healthy competition.
Types of Applications for Design Registration
There are 2 types of Design Application:
- Ordinary Application
An ordinary application does not claim priority.
- Reciprocity Application
A reciprocity application claims priority of an application filed previously in a convention country. Such an application shall be filed in India within 6 months from the date of filing in the convention country. The period of 6 months is not extendable.
Whom to submit the application?
An application for registration of a Design shall be addressed to- The Controller of Designs, The Patent Office, CP-2, Sector-V, Salt Lake, Kolkata – 700091.
Key Points
Key points to remember while filing Design Registration Application:
- Properly filled up application form and appropriately prepared representation are crucial for efficient processing of a Design Registration Application. These days it has been noticed that 90% of the applications are subject to objection on formality check stage. Only a few applications are objected on significant reasons such as originality and uniqueness. Otherwise they are objected due to incorrect filing. Hence, it's important to carefully file the application.
- Extensions are often appealed by the agents or legal practitioners for filing reply to such formal objections, which causes further delay of 4-5 months more. Hence, it is advised that the documents required to the Design Applications must be prepared very carefully. This will significantly decrease the turnaround time taken for the Design registration application process.
- The Designs Wing of the Patent Office is committed to grant registration to the properly filed Design application. This complies with the significant criteria forgetting registration, in just 1 month from the date of filing application. This measure is introduced from April 2011 onwards.
Complete process for the Design Registration
The complete process of Design Registration is explained below –
I. Examination
The application for registration of a design is refereed by the Controller of Designs to an Examiner of Designs for conducting examination as to:
- Whether the application and the documents satisfy the formal requirements, and
- Whether such design as applied to an article is registrable, under the provisions of the Designs Act, 2000 and Designs Rules, 2001.
II. Formality Check
The Examiner determines whether:
- Application is in prescribed format?
- Prescribed fee has been paid?
- Name, address, and nationality of the applicant is mentioned?
- Address for service is given in the application form?
- Declaration of proprietorship is given in the application form?
- Representation sheet is in a manner as prescribed in Rule 14?
- Power of authority, if applicable, is filed?
III. Substantive Examination
Substantive examination is carried out to ascertain whether the proposed design is:
- Desirable design under the Act?
- New or original?
- Prejudicial to public order or morality?
- Prejudicial to the security of India?
IV. Consideration Of Report Of Examiner
The Controller shall consider the report of Examiner on eligibility for registration of a design as applied to an article and if it is eligible for registration, the same shall be registered forthwith. The registration certificate shall be issued and sent to the applicant at the earliest.
- If upon consideration of the report, the Controller is of the opinion that there are objection(s) adverse to the applicant or the application requires some amendment(s), a statement of objections shall be communicated to the applicant.
- If the applicant fails to comply with the objections or fails to apply for a hearing within three months from the date of communication of statement of objections, the application shall be deemed to be withdrawn.
- Period for removal of objections shall not exceed 6 months from the date of filing of the application. However, this period can be extended by further 3 months by filing a request in Form-18 within the 6 months' period.
If the applicant complies with all the requirements laid down under the Act and Rules, communicated in the form of statement of objections, the application shall be granted design registration.
V. Design Registration & Publication
Once an application is registered, it is published in the Patent Office Journal ordinarily within one month.
The registration number is same as the application number. Normally, the date of registration of an ordinary application is the date of filing of the application.
VI. Register Of Designs
All the registered designs are entered in the Register of Designs maintained at Patent Office, Kolkata. The register is available to public for inspection purpose. However, an e-register is also available on the IPI official portal.
Documents required for Design Registration Application
- Form 1 in the prescribed format (as in Schedule-II of the Designs Rules)
- Representations should be prepared as prescribed under Rule 12, 13and 14 of The Designs Rules and should be submitted in duplicate.
- Form-21(Power of authority/General Power of authority) in original (if filed through patent agent/advocates) (as in Schedule-II)
- If the applicant files copy of General Power of authority (GPA), it should be endorsed with the design application number, with which the original GPA has been filed.
- Form-24 in prescribed format (if small entity status is claimed) (as in Schedule-II)
- It should be accompanied with evidence of registration under MSME Act, 2006 in case of Indian entities.
- This should be accompanied with affidavit deposed by the applicant or authorised signatory as Rule 42 of Designs Rules in case of foreign entities.
- Original Priority document under Rule 15 of The Designs Rules.
- Authenticated English translated copy of the Priority document (if original priority document is other than English)
- Assignment in original (if the applicant of priority application in convention country is different from Indian applicant).
Brief explanation of key documents required
Design Application
An application shall be filed in Form-1, along with the prescribed fees, stating the full name, address, nationality, name of the article, class number and address for service in India.
- Foreign applicants are also required to give an address for service in India, which could be the address of their Agent in India. In case of foreign applicants, it is mandatory to give an address for service in India.
- Unless, such an address is given, the Office shall not proceed with the application.
- The class to which the article belongs shall be mentioned correctly in Form-1. Under the Designs Rules, 2001, articles have been classified in the Third Schedule based on Locarno Classification. It may be noted that for registering a design in more than one class, a separate application is required to be filed for each class.
- The application shall be signed either by the applicant or by his authorized agent/legal representative. In India, only a registered patent agent or a legal practitioner can be appointed as an authorised agent.
- In case, the applicant has already registered a design in any other class of articles, the fact of such registration along with the registration number shall be mentioned in Form-1.
II. Representation of Design
Two copies of representation of the design shall be submitted. Detailed requirements of representation are described in 02.05.02.05
III. Power Of Attorney
A Design Application may be filed personally by an applicant or through a patent agent/legal practitioner. If the application is filed through a patent agent/legal practitioner, a power of authority shall be submitted, along with the application. General Power of Attorney is also acceptable.
IV. Priority Document
A reciprocity application shall be accompanied by a copy of the design application filed in the Convention Country. Such copy shall be duly certified by the Official Chief or Head of the Organization in which it was filed.
If the priority document was not filed with the application, the same may be filed within an extended period of three months. Extension may be sought by filing Form-18 along with the prescribed fee.
Government fee for Design Registration procedure
|
S. No. |
Function |
Form No. |
Govt. Fee (In ₹) |
|
1. |
On application for registration of design under sections 5 and 44 |
1 |
1000.00
|
|
2. |
On claim under section 8(1) to proceed as an applicant or joint applicant. |
2 |
500.00
|
|
3. |
On application for restoration of lapsed design under section 12(2). |
4 |
1000.00
|
|
4. |
On request for information of design when registration no. given under Section 18. |
6 |
500.00
|
|
5. |
On request for information of design when registration no. not given. |
7 |
1000.00
|
|
6. |
Application for registration of a document in Register 10 of Design under section 30(3), in respect of one design.
For each additional design |
10 |
500.00
200.00 |
|
7. |
Application for entry of notification of a document in the Register of Design under section 30 and rule 37, with respect to one design
For each additional design |
13 |
500.00
200.00 |
|
8. |
On request for correction of clerical error under section 29. |
14 |
500.00
|
|
9. |
On request for certificate under section 26 and rule 41 |
15 |
500.00
|
|
10. |
On application for extension of time for filing priority document under rule 15 |
18 |
200.00 |
|
11. |
On notice of opposition under rule 40 |
19 |
100.00 |
|
12. |
Notice of intention to attend hearing under rules |
20 |
500.00
|
|
13. |
On request to alter name or address or address for Service in the Register of Design under rule 31 |
22 |
200.00 |
|
14. |
On request for entries of two addresses in the Register of Design |
23 |
200.00 |
|
15. |
On petition under rule 46 for amendment of any document |
|
500.00
|
|
16. |
On petition under rule 47 for enlargement of time. |
|
500.00
|
Validity of Design Registration
The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date. This initial period of registration may be extended by further period of 5 years on an application made in Form-3 accompanied by prescribed fees to the Controller before the expiry of the said initial period of ten years. The proprietor of a design may make application for such extension even as soon as the design is registered.
What do we offer?
Our Package for the Design registration includes the following functions-
- Filing the Application
- Providing Report of Examination
- Controller Response
- Design Publishing
- Design Registration
Frequently Asked Questions
As per the Designs Act 2000 the term "article" refers to any article of manufacture and any substance, whether artificial, or partially artificial and partially original. This also includes all components of that article capable of being finished and sold separate to each other.
The main intent behind obtaining the Design registration under the Designs Act is to safeguard new or innovative designs that created for application on a particular article, which is to be manufactured by an Industrial Process or mode, from being copied. Sometimes the buying of articles for consumption is affected not only by their practical quality but by their outer look too. The significant purpose behind design Registration is to make sure that the artisan, inventor designer of a design having artistic look is not dispossessed of his bona fide prize by any other who are imitating his design to their own goods.
As per the Designs Act 2000 the term ‘Design’ refers only the characteristics of shape, configuration, patterns or adornments or the work of art including lines or hues or a blend thereof applied to any article. A design can be either 2 dimensional or 3 dimensional or in both types, by any industrial process or means, whether labor-intensive, automatic or chemical-based, separate or joint, which in the completed article attract and are recognized solely by the naked eye, but does not consist of any method or principle or manufacturing or anything which is in substance a simple mechanical device. This does not take account of any trade mark, as defined in section 2(v) of the Trade and Merchandise Marks Act 1958, a property mark or a creative work as defined under Section 2(c) of the Copyright Act 1957.
Soon after submitting application for design registration in orderly format, it is accepted and the design is registered. Thereafter, a certificate of the design registration shall be issued to the applicant. However, a different request should be made by the applicant to the Controller of Designs for obtaining of a certified copy of that certificate for the purpose of legal proceeding, along with mandatory government fee.
The Register of Designs is a basically a document maintained by The Patent Office, Kolkata. It is a legal requirement. This register encloses the design number, its class number, date of filing (in India) and reciprocity date (if any), name and address of the Proprietor and other relevant matters that would influence the validity of proprietorship of the design and it is open for public assessment on the imbursement of the prescribed authoritative fee & excerpt from the designs register shall also be obtained on the request along with the prescribed government fee.
No, the above mentioned objects are not eligible for Design registration. The reason is that once the supposed Design i.e., adornment is erased only a piece of paper, metal or like material remains and the particularly the article referred will not exist. Article must have its own presence free of the Designs applied on it. [Design in respect of the label was held not eligible for Design registration, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. Hence, the Design as applied to an article should be considered integral with the article itself.
The date of registration except in case of priority document shall be the actual date of filing the design application. In case of the design registration of the priority document, the date of design registration shall be the date of making the application in the reciprocal nation.
No, even if the design is registered, but it’s the copyright has expired, cannot be re-registered under Designs Act 2000.
The validity of the design registration is initially 10 years from the date of registration. However, in case the claim to priority has been permitted, the validity if the design shall be 10 years from the priority date. The initial period of design registration can be extended further by 5 more years through an application made in Form-3 adjunct to the prescribed government fee to the Controller of designs before the expiry of the earlier initial period of 10 years. The proprietor of the design shall make the application for such expansion the moment the design gets registered.
The registration of a proposed design confers upon the registered proprietor’s ‘Copyright’ in respect of the design for the period of his registration. Here ‘Copyright’ means the special right to apply a design to his article falling under the class in which it has been registered.
Piracy of a design refers to the application of a design or its cheap imitation to any article belonging to the same class of the articles where the proposed design was registered, for the purpose of the sale or importation of such articles without the written consent of the registered proprietor. Publishing such articles or revealing the terms for the sale with information of the illicit application of the design to them also comes under the definition of design piracy.
If anyone tends to contravene the copyright of a registered design, s/he is liable for every such offence to pay a sum of INR 25,000/- to the registered proprietor, which is subject to a maximum penalty of INR 50,000/-. This shall be recoverable as the contract debt with regard to any one design. The registered proprietor has the power to bring the suit for the recovery of the trade damages caused by any such breach and for a ban against repetition of the same offence. The total sum recoverable shall not exceed INR 50,000/-as the contract debt as stated under Section 22(2)(a). The suit for violation recovery of damage etc should not be filed in any other court below the District Court Judge.
