This article is written by Pranjali Nanadikar, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Aatima Bhatia (Associate, LawSikho) and Ruchika Mohapatra (Associate, LawSikho).
Table of Contents
Introduction
Are you a start-up/business owner whose product or article has a unique and creative design and wants to promote your brand? Are you the owner of a particular design that has industrial applicability but no idea how to register it and gain maximum revenue out of it? This article will take you through the exact steps which you need to take to register your design under the Design Act, 2000.
The Design Act, 2000, was made effective from May 11, 2001, and the Designs Rules, 2001 govern the registration of designs in India. According to the Act, the design registration protects the features of shape, pattern, ornamentation or composition of lines or colours that are applied to the articles. Since a design registration tries to protect only the design’s visual appeal, it does not include any scope or feature that is a mode of construction or a mere mechanical device or any artistic work that is covered under the Copyright Act or any trademark included under the Trademarks Act.
Importance of registration of designs
Often we come across products and articles which are recognizable simply by looking at their designs. Unique designs attract the attention of people and people tend to recognize the product primarily through its form, shape or structure. “Design” means features of shape, pattern, configuration, ornament or composition of colours or lines which is applied in three dimensional or two dimensional or in both the forms using any of the processes whether manual, chemical, mechanical, separate or combined which in the finished article appeal to or judged wholly by the eye.
Industrial design essentially is the uniqueness of an article which makes it stylish, appealing and attractive, making it stand out and facilitating its potential in any industry as well as increasing the commercial value of that product or article. There are so many valid reasons to protect designs under the Design Act, 2000. First of all, industrial design protection favours fair competition in the industry by encouraging creativity, originality and novelty. The design of a particular product increases its marketability as well as its commercial value. When a design is registered, it becomes exclusive to the owner and the consumer can easily identify that the product belongs to a particular brand. Registered designs can be sold in the market or can be used for paying liabilities as it becomes a business asset.
The most important benefit and basic purpose of a registered design are if anyone infringes your design, you can file a case or suit upon the infringer for the loss to your sales as well as damage to your goodwill in the market. When a design is registered it gives its owner the exclusive right against unauthorized copying or imitation of the design by third parties. Another benefit is that an owner can license the design or sell the design if he is in need of money or if he has limited production capacity.
The design registration applications must be filed with the Office of the Controller General of Patents, Designs and Trademarks at Kolkata under the Department of Industrial Policy and Promotion in the Ministry of Commerce and Industry. This office conducts an investigation and grants the registration if the application meets all formal and substantive requirements specified in the Designs Act.
Basic requirements of design registration
In order for the design to be registered and protected under the Design Act, 2000, it needs to fulfil the following essential elements.
Novelty aspect
Novelty means newness. If a product’s design has a novelty aspect then only it can be registered. A combination of registered designs can also be considered, only if that combination produces new visuals.
No prior publication of design and the design must be unique
The design should be unique in nature and should not be disclosed to the public anywhere in India or somewhere else in the world by way of use or prior publication or in any other way.
Making application of design to an article
The design should be applied to the article itself. Without an article, registration of a design is not possible.
Design should not be contrary to public order, morality or security of India
The design should not be prohibited by the Government or any authorized institution. It must be capable of registration under section 5 of the Design Act, 2000. The design which is against public morality or against the sentiments of people may not be allowed to get registered.
Documents required for design registration
Following are the documents required to register a document in India:
- Name and detail address of the applicant
- Nature/legal status of the applicant i.e. whether the applicant is a natural person or company etc.
- For start-ups, the applicant should provide a certificate of registration.
- The applicant is also required to file the description of the ‘article’ along with the identification of the class as per the classification.
- Minimum 4 images/drawings of the article from every angle is to be filed along with the application.
Steps involved in design registration under the Design Act, 2000
Prior art work
The applicant will conduct a search and find out whether any similar design has been previously registered or not. There are various databases paid as well as unpaid to help the applicant for search such as–IP India’s online public design search platform and WIPO’S Global design database. If the applicant is unable to find the number of a similar design, then Form no – 7 is filed along with Rs.1000.
Representation and classification of designs
The applicant needs to recognize the exact class of design from the Locarno classification based on the function of the article. And a representation/diagram should be prepared on white A4 size white paper and must indicate the details of the design and applicant clearly. If the applicant does not prepare it in A4 size then the portal won’t accept it and can delay the application. Applicant’s details would be the name, address, and name of the article on which design has been applied. If the applicant is a foreigner, then he/she shall require to give an address for services in India.
Statement of novelty
Statement of Novelty is the most important point of an application. It will be stated below the representation sheet. This will enable a speedier examination of the design and registration process. According to the given below statement of novelty, the applicant can draft this statement:-
“ The novelty resides in the shape and configuration of the ‘XYZ design’ as illustrated.”
Disclaimer
Often the design of the article is confused with a trademark. Thus, disclaimer becomes essential to convey that under this registration, no claim of use is made to any trademark. Also, it is essential to specify if there are any powers of attorney. Following is the sample draft of the disclaimer:-
“No claim is made by virtue of this registration to any right to the exclusive use of the words, letters, nor of trademarks appearing in the representation.”
Claim a priority date
If the application is made in conventional countries or countries in which are members of the intergovernmental organizations, then in that case, the applicant 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.)
Payment of fees
Payment of fees can be done by cheque or draft payable at Kolkata head office or in cash. The application fee for registration is Rs. 1000 and Rs. 2000 for renewal.
Other initial processing of application
At this stage, an applicant has 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. Then a substantive examination is conducted by the examination officer and the report is presented within 2 months.
Facing objections
If an applicant receives any formal 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 for a hearing will be given. If the applicant still fails, the design is declared non-registrable. All this is done within 6 months from the date of filing.
Final stage of registration and publication
If all stages are cleared by the applicant, then the application will be registered and published in the patent’s office and a certificate of registration will be issued. Registration of design will be valid for a period of 10 years and can be renewed for another 5 years. All this process will be completed within 8 to 12 months.
Graphical representation of entire registration process of design application
Conclusion
Preserving originality is the essence of Intellectual Property rights. In India, it is not compulsory to register an industrial design under Design Act, 2000 for usage. But for the better commercial value of the product, gaining new customers, promotion of the brand in the whole world, it becomes extremely essential. Some articles or products are very dynamic and ever-changing in nature and they deserve to get legal protection for their owner. Thus, the object behind the creation of this Act is to regulate the design registering process by industrial means.
But in 2021 also, people tend to ignore the importance of registration of intellectual properties as it is not compulsory in India to register them. Mostly, small and medium business enterprises are unaware of how they can gain more commercial value for their product and promote their brand by registering their Industrial Designs. For successful registration of various IPs, people should hire an attorney who has good knowledge of IP as it might help them avoid IP infringement cases.
References
- https://blog.ipleaders.in/need-know-industrial-design/
- https://lawcutor.com/2020/06/21/requirements-and-procedure-for-registration-of-design-in-india/
- https://www.bananaip.com/ip-news-center/basics-of-industrial-designs/
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