Designs: basic requirements, procedure

• Creation of a novel and original outer appearance (shape, configuration and

pattern or ornamentation) of an article can be protected through a registered
design that recognizes and protects the exclusive rights of the registered
proprietor in the design. He can then apply the design to the article in the class in
which the design has been registered. This form of IP protection, albeit narrow in
scope, is rendered very attractive, because it is swift, procedurally simple and
cheap to obtain.
•
The purpose of the design registration is to see that the artisan/creator/originator
of the design having aesthetic look is not deprived of his bonafide reward of
applying it to his goods. Once the design is registered it gives the legal right to
take action against the infringer and stop piracy of the design.
• Who can register a design?
• A proprietor or the legal representative or the assignee can apply separately or
jointly for the registration of a design.
 Essential requirements for registration

• A design should:
• Be new and original
• Not have been disclosed to the public in a publication in
tangible form or by use or in any other manner prior to the
filing date, or where applicable, the priority date of the
application for registration
• Be significantly distinguishable from a known design or a
combination of known designs
• Not comprise or contain scandalous or obscene matter
• Be applied to an article and should appeal to the eye
• Not be contrary to public order or morality
• Types of Design Applications
• Ordinary Application
• A first application made for a design without claiming priority
from any application is called an ordinary application.
• Convention Application
• By virtue of the Paris convention, an application filed that
claims a priority based on a convention
application(s), is called a convention application. To get a
convention status, an applicant should file the application in
an Indian Design Office within 6 months from the date of
first filing in the convention country
• Design Registration Process/Procedures
• Design registration in India gives the owner, a monopoly on his or her
product, i.e. the right for a limited period to stop others from making,
using or selling the product without their permission and is additional to
any design right or copyright protection that may exist automatically in the
design.
• ‘Article’ under the Designs Act, 2000
• Under the Designs Act, 2000 the “article” means any article of manufacture
and any substance, artificial, or partly artificial and partly natural and
includes any part of an article capable of being made and sold separately.
• ‘Set of article’ under the Designs Act 2000
• If a group of articles meets the following requirements then that group of
articles may be regarded as a set of articles under the Designs Act, 2000:
Ordinarily on sale or intended to be used together.
• All having common design even though articles are different (same class).
Same general character. Generally, an article having the same design and
sold in different sizes is not considered as a set of articles. Practical
example: “Tea set”, “Pen set”, “Knife set” etc.
• Essential requirements for the registration of ‘Design’ under the
Designs Act, 2000 are:
• The design should be new or original, not previously published
or used in any country before the date of application for
registration. The novelty may reside in the application of a
known shape or pattern to new Subject matter. Practical
example: The known shape of “Kutub Minar” when applied to
a cigarette holder the same is registrable.
• However, if the design for which application is made does not
involve any real mental activity for conception, then
registration may not be considered.
The design should relate to features of shape, configuration,
pattern or ornamentation applied or applicable to an article.
Thus, designs of industrial plans, layouts, and installations are
not registerable under the Act.
• Applying for Registration of Design
• The application for registration of design can be filed by the applicant
himself/herself or through a professional person ( i.e. patent agent,
legal practitioner). However, for the applicants not being residents of
India, an agent residing in India has to be employed.
• Place of applying for Registration of Design
• Any person who desires to register a design shall submit the
following documents to the Controller of Designs, The Patent Office
at Kolkata, or at any of its branch offices at New Delhi, Mumbai and
Chennai. For address and contact numbers, click here
• Duration of the Registration of a Design and its extension
• The duration of the registration of a design is initially ten years from
the date of registration but in uses where the claim to priority has
been allowed, the duration is ten years from the priority date. This
initial period of registration may be extended by a further period of 5
years on an application made in Form-3 accompanied by a fee of Rs.
2,000/- to the Controller before the expiry of the said initial period of
Copyright. The proprietor of a design may make an application for
such an extension even as soon as the design is registered.
• Cancellation of Registration of a Design
• The registration of a design may be canceled
at any time after the registration of the design,
on a petition for cancellation in form 8, with a
fee of Rs. 1,500/- to the Controller of Designs,
on the following grounds:
That the design has been previously registered
in India orThat it has been published in India
or elsewhere prior to the date of registration
or The design is not new or original or Design
is not registrable or It is not a design under
Clause (d) of Section 2.
• Restoration of the lapsed design due to non-payment of extension
fee within a prescribed time
• Registration of design will cease to be effective on non-payment of
extension fee for a further term of five years if the same is not paid
before the expiry of the original period of 10 years. However, a new
provision has been incorporated in the Act so that lapsed designs
may be restored, provided the following conditions are satisfied:
• Application for restoration in Form-4 with a fee of Rs. 1,000/- is
filed within one year from the date of lapse stating the ground for
such non-payment of extension fee with sufficient reasons. If the
application for restoration is allowed, the proprietor is required to
pay the extension fee of Rs: 2,000/- and an additional fee of Rs.
1,000/- and finally the lapsed registration is restored.
• Piracy of a Design
• Piracy of a design means the application of a
design or its imitation to any article
belonging to a class of articles in which the
design has been registered for the purpose of
sale or importation of such articles without
the written consent of the registered
proprietor. Publishing such articles or
exposing them for sale with knowledge of
the unauthorized application of the design to
them also involves piracy of the design.
• Penalty for the piracy of a Registered Design
• If anyone contravenes the copyright in a design for
every contravention he/she is liable to pay a sum not
exceeding Rs. 25,000/- to the registered proprietor
subject to a maximum of Rs. 50,000/- recoverable as
contract debt in respect of any one design.
• The registered proprietor may bring a suit for the
recovery of the damages for any such contravention
and for an injunction against repetition of the same.
Total sum recoverable shall not exceed Rs. 50,000/-
as contract debt as stated in Section 22 (2) (a). The
suit for infringement, recovery of damage should not
be filed in any court below the court of District
Judge.