Design infringement
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This article has been written by Poonam Joshi, pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.

Introduction 

Before applying for registration of the Indian industrial design, due diligence should be done with regard to the documents to be submitted. This would be of great support for the efficient prosecution of a Design Application and to avoid any unnecessary delay in getting the application registered. Once all the substantive criteria of filing of application are met, the application can get registered in one months time.  

To apply for Industrial design, one should keep in mind what type of application is to be filed, whether Ordinary or Reciprocity application. Ordinary application priority cannot be claimed. Whereas, in the Reciprocity application one can claim priority, provided such application is filed in India within six months from the date of the application filed in the convention country.

The process of application 

The application can be filed by any person from India. The person applying for an application could be an author of the design, a person who has acquired the design, a person for whom the design has been developed by the author or a person on whom the design has been transferred.  

The application can be filed at any of the four Patent Offices located in Mumbai, Delhi, Kolkata and Chennai. These applications are transmitted to Patent Office, Kolkata for further processing and prosecution. 

An application for filing Industrial design shall be filed in  Form-1, along with the prescribed fees with other prescribed details as per Rules duly signed by the applicant of his legal representative. Only a legal practitioner or a registered patent agent can be appointed as an authorised agent in India. Further, if the design is already registered in another class the information in this regard should be mentioned in the application. 

The application can be either filed by the applicant or through a patent agent/legal practitioner by attaching the power of attorney along with the application and two copies of representation of the design as per section 11 r.w.r 14 to avoid unnecessary delay.  The representation sheet should be the exact representation of the article for which registration is sought covering all the details. For filing  Reciprocity application of the design filed in the Convention Country is required to be submitted at the time of filing the application or within an extended period of three months in Form-18  by paying the requisite fee. 

The registration application should consist of an appropriate class of designs of articles. There might be situations where the design for an article has multiple utilities, the application may be made with a description of an article in any one or more of the utilities. For instance, in the case of a design of a nail cutter cum knife, the applicant can apply in the class relating to nail cutter, knife or nail cutter knife by filing two separate applications in two classes. 

The application should consist of proper addresses. If there is any change in address a fresh application in Form 1 is to be filed along with the prescribed fee payable before a design is registered. Whereas, for change in address of registered design an application in Form-22 with the prescribed fee shall be filed. 

Processing of application

Once the application is received by the concerned office date and serial number is accorded to the application. The serial number so accorded becomes a registered number if registration is granted. Further, if the representation sheet forming part of the application is not in accordance with the prescribed guidelines then such applications are not accepted. 

The documents once received by the Kolkata Patent Office the same along with the documents attached are uploaded to the server making them part of official records. 

Examination

The Controller of Designs sends the application to an Examiner of Designs for conducting an examination to examine whether documents forming part of the application satisfy the basic requirements and to examine whether the design as applied to an article is capable of being registered as per the provisions of law. 

Thereafter, the  Examiner after examining the basic requirements that the application is in prescribed format or not, the prescribed fee has been paid or not, representation sheet is as per the guidelines prescribed and other details as prescribed under the provisions of law. 

In the case of the reciprocity application the examiner sees if the application was filed within the prescribed time or not, the priority documents were filed at the time of filing or not. 

If any deficiency is found by the Examiner he shall send a report of the deficiency to the Controller, who communicates the statement of objections to the applicant. Such an application shall proceed for substantive examination only after compliance of the objections. The applicant will be provided with three months from the date of communication of the statement of objections or respond to the objections, failing which the application shall be treated as withdrawn. 

If the applicant wishes to contest the objections, he may respond to the objections clearly indicating the reasons in detail. Thereafter, the Controller shall give a hearing and after listening to the applicant’s contention a speaking order shall be passed. 

Further,  if the basic documentation is proper, a Substantive examination is carried out to determine whether the design under consideration is ‘design‘ under the Act or not. Whether the design is new or original, whether it is prejudicial to public order or morality and most important whether it is prejudicial to the security of India. 

The Examiner further satisfies the novelty criteria by conducting search class-wise or article wise to ascertain whether the design for which the application is made is significantly different from the previously registered, used or published designs. 

If it is found that the design is not new, the Examiner mentions these facts along with the citations in his report to the Controller. If the applicant has registered the design in any other class of articles, prior to the application under consideration, the fact shall be mentioned in Form-1. 

Upon examination, if it is found that the applied design is already registered by another person in respect of some other article, the design under consideration may be registered only if the applicant becomes a registered proprietor of the already registered design. 

The Examiner further examines if the applied design vis-à-vis the security of India and if there is an objection, the same is reported to the Controller. 

Consideration of the report of Examiner

On receiving the report of the Examiner on the registrability of a design the Controller shall grant registration and registration certificate shall be issued and sent to the applicant at the earliest by the Controller. If the Controller is of the opinion that there are some objections or the application requires some amendments then such objections shall be communicated to the applicant either through post or through e-communication.  

The applicant shall file e reply to the objections raised within three months from the date of communication of the objection or else the application shall be deemed to have been withdrawn. On receiving a reply the Controller, if finds that the reply does not meet the requirements as per the provisions of the law, he shall provide an opportunity of hearing and on hearing, if the Controller finds that the requirements of the law are met with the application of the applicant, then it will be accepted and registration shall be granted. However, if the reply to objections raised is filed but the opportunity to be heard remains unattended, under circumstances no further opportunity of being heard shall be provided and the matter shall be decided on the basis of the reply filed by the applicant. 

Registration & publication

Once the registration is granted, the same shall be published in the Patent Office Journal within one month. The date of registration shall be the date of application in the case of ordinary application, whereas, in the case of reciprocity application, the date of registration shall be the date of filing of an application in the Convention Country. The registered design shall be entered into the Register of Designs maintained at Patent Office, Kolkata

Certificate of Registration

Once the registration is granted the Controller shall issue a certificate of registration to the applicant of the design. The certificate is sent by registered post to the address for service. And no hand delivery of the certificate of registration is allowed. 

Validity term and design renewal fees

The design once registered shall have a validity of 10 years from the registration date. This term of 10 years can further be extended for another five years by filing an application for extension along with the required renewal fee before the expiration of the 10-year term.

Duration of the registration procedure

The entire process of registration takes around 6 to 7 months depending upon the diligence of the applicant.

Conclusion 

From the procedure discussed above it could be seen that while filing an application extra care is required with regard to documentation and classification. If due diligence is taken care of, the registration process is very smooth. 


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