Requirements and Procedure for Registration of Design in India

Abstract

A design is simply a creative and artistic or outward appearance applied to an article. The term “article” is well defined under the Designs Act 2000, meaning any article of manufacture and any substance, artificial or partly artificial and partly natural which includes any part of an article capable of being made and sold separately. It can be a creation of a new shape, configuration, surface, pattern, or composition.The rules of this Act came into force on 11 May 2001 repealing the earlier Act of 1911. A massive amount and resources are spent on a good design which can bring huge success to an organization. Quite naturally, it becomes vital to protect this intellectual property by way of registration under “The Designs Act, 2000”. The registration process is undertaken by Office of the Controller General of Patents, Designs & Trademarks.[1]

Criteria of Registrability

  • The Design must be new and original
  • It should not be published in the country
  • The Design must not be contrary to public order or morality
  • The Design must not attract the provision of section 4 of Designs Act, 2000
  • It must be distinguishable from any other design or combination
  • It must not contain scandalous or obscene matter
  • It must not be disclosed to the public in any part of the world by publication in a tangible before the date of filing
  • The Designs incorporating official symbols, maps, stamps, building, medal etc. cannot be registered under this Act

It is necessary that the design must relate to the shape, configuration, pattern, and ornamentation applied to an article. It must be noted that the design applied to an article must be by an industrial process. The design of an article is found on the finished good and often witnessed by eyes. Thus, any article found inside an almirah cannot be regarded as a design.

Design of Set is Registrable

Under Rule 2(e) of Design Rules 2001, set means several articles of the same general character which are ordinarily sold together or intended to be used together.[2] All these sets are bearing the same design, with or without modification, not sufficient to modification not sufficient to alter the character or substantially to affect the identity thereof.

Who Can Apply for Design?

A design can be filed by a person (individual, firm, or any legal entity) claiming to be the proprietor of the new or original design, which is not published in any country prior to the filing of the design. An agent provided with Power of Attorney can also file for registration on behalf of the Owner. An application can also be filed by a working professional.

10 Steps for Filing Design Application

1. Searching out for any prior registration of the same design

The designs office can assist in finding out whether any design has been previously registered or not. For this matter, if the registration number is known, Form No-6 is filed along with a nominal fee of Rs. 500. In case you don’t know the number of a similar design, Form No- 7 is filed along with the prescribed fess of Rs. 1000.

2. Preparing a representation of a design

An application shall be filed with full name, address, name of the article on which design has been applied. It means the exact representation of the design in terms of shape, drawings, photographs, tracings generally through computer graphics.  In case of foreign applicants, they are required to give an address for services in India.

3. Class of Design

Designs should be categorized in separate classes for a smoother registration process. India has adopted Locarno Classification which contains 32 classes and numerous sub-classes[3] which are internationally accepted based on the function of the design.

4. Statement of Novelty

The Statement of novelty is given below the representation sheet, below the photograph or the drawings. This shall enable speedier examination of the design and registration process. Below the above-mentionedsheet, you are supposed to insert this line

“The Novelty resides in the (Name) article marked as A in the illustrated sheet”

5. Disclaimer

Further, if the design of the article is confused with a trademark, then a disclaimer must be added thereto, that shall convey that under this registration, no claim of use is made to any trademark.

Also, Specify power of attorney (if any)

6. Claiming a priority date

If the application for registration of a design is made in convention countries or countries which are members of the inter-governmental organizations, then in that scenario, you can claim a priority date in India. This shall be the date of filing the application in any such country (provided application must be made within 6 months in India).

7. Fees to be paid

Application is to be accompanied by the required fee through cheque or draft payable at Kolkata or in cash. The Application fee for the registration of design is Rs. 1000/- and Rs.2000/- for renewal.

8. Initial Processing of Application

At this stage, you are allotted a registration number when an application is filed with all related documents and fees attached therewith. The application can be filed either at the Design office, Kolkata or any of its branches in Delhi, Mumbai or Chennai. Some of the information needed is as follows;

  1. Name and Address of the Applicant/Owner
  2. Legal Status of the applicant (natural person, company)
  3. Description of the article to be filed with identification of class
  4. Official fee
  5. Representation sheet (Drawing)
  6. Claim of Novelty

A Substantive examination is conducted by the examination officer and the report is presented within 2 months.

9. Complying with objections if any

If there are any objections, then the applicant is given an opportunity to amend those objections by filing a written response. If the examination officer is not satisfied with the written reply then an opportunity of hearing is given. If the applicant still fails, the design is declared non registrable. All this is done within 6 months from the date of filing.[4]

10. Registration and Publication

If all requirements are met, the application is registered and published in the patent’s office and a certificate of registration is issued which shall be valid for a period of 10 years. Design can also be renewed for another 5 years. All this process is usually completed within 8-12 months which is quite appreciable as compared to other Intellectual Property Rights in India.

Flow Chart of Filing Design Application

Conclusion

The Designs Act, 2000 lays down the registration process and all other requirements to be fulfilled for applying for an application in Indian territory. One of the most important reasons to protect design is that the Jewelry, shoes are other articles needs protection as they are dynamic and ever-changing.  The Object behind the creation of this Act is to regulate the design registering process by industrial means. This Act shall continue to be the vital part in regulating designs as sometimes purchase of articles in influenced not by their practical efficiency but by the way they look. To safeguard the interest of the stakeholders, the purpose of design registration becomes mandatory.  Section 9 of the act requires to establish an office for the purpose of this Act. The register of Design in India is maintained by the Patent Office, Kolkata. Owing to rapid digitalization, design application can also be filed online by duly filing form-1.

References:

1. Manoj K Singh, ‘India: An overview of design Protection in India’ (mondaq, 20 December 2018) <https://www.mondaq.com/india/trademark/766748/an-overview-of-design-protection-in-india> accessed on 1 June 2020

2. Seth Associates, ‘Design Registration in India’ <http://www.sethassociates.com/registration-of-designs-in-india.html> accessed on 1 June 2020

3. Khurana & Khurana Advocates & IP Attorneys, ‘Design Portfolio’ <https://www.khuranaandkhurana.com/ip-protection-and-portfolio-management/design-portfolio/> accessed on 2 June 2020

4. Copyright Office, ‘Government of India’ <http://copyright.gov.in/> accessed on 4 June 2020

5. Ministry of Government of India, ‘Frequently Asked questions’ <http://www.ipindia.nic.in/faq-designs.htm> accessed on 5 June 2020

6. Ministry of Commerce and Industry, ‘Designs’ <http://www.ipindia.nic.in/designs.htm> accessed on 6 June 2020

7. Government of India, ‘Design Registration in India’  <http://www.ipindia.nic.in/writereaddata/images/pdf/design-registration.pdf> accessed on 5 June 2020


[1]Ministry of commerce and Industry, ‘Designs’ http://www.ipindia.nic.in/designs.htm>accessed on 5 June 2020

[2]Government of India, ‘Design Registration in India’<http://www.ipindia.nic.in/writereaddata/images/pdf/design-registration.pdf> accessed on 5 June 2020

[3]‘Industrial Design Registration Process in India’(Intepat, 29 June 2016)  <https://www.intepat.com/blog/design/industrial-design-registration-process-india/#:~:text=Submit%20a%20duly%20filled%20in,it%20must%20state%20the%20view.> accessed on 6 June 2016

[4] N. Mahabir, ‘India: How to register a design’, (15 January 2018) <http://www.ipindia.nic.in/writereaddata/images/pdf/ten-steps-to-design-application.pdf> accessed on 6 June 2020

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