The Designs Act 2000 defines designs to mean the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, whether in two or three dimensional, or in both forms, by any industrial process or means, whether manual or mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction.
The design may consist of three-dimensional features, such as the shape of an article, or two-dimensional features, such as patterns, lines or color. Industrial designs are applied to a wide variety of products of industry and handicrafts such as technical and medical instruments, watches, jewelry, houseware, electrical appliances, vehicles, architectural structures, textile designs, leisure goods and other luxury items. To be protected under most national laws, an industrial design must appeal to the eye. This means that an industrial design is primarily of an aesthetic nature, and does not protect any technical features of the article to which it is applied.
The owner of a protected industrial design is granted the right to prevent unauthorized copying or imitation of the design by others. This includes the right of making, offering, importing, exporting or selling any product in which the design is incorporated or to which it is applied. He may also license or authorize others to use the design on mutually agreed terms. The owner may also sell the right to the industrial design to someone else. The term of protection under industrial design laws is generally ten years, with the possibility of further periods of renewal up to, in most cases, 15 years.
Protecting an Industrial Design
- Helps to ensure a fair return on investment;
- Improves the competitiveness of a business against copying and imitating the design by competitors;
- Helps to increase the commercial value of a company, as successful industrial designs constitute business assets;
- Encourages creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts
- Opinion on whether a design is suitable for registration
- Filing and prosecution of a design application
- Infringement searches
- Investigating the validity of registrations
- Filing and Opposing
- Technical support for licensing and litigation
- Negotiating and settling registered design disputes
- Organising renewals, watch, technical drawing, translation and related services
- Enforcing design registration rights against an infringer
Novelty of Designs
Novelty and originality of a design are the essential factors of Design Registration with the Indian Patent office. A design is capable of being registered only if it is novel (new) or original under section 4 of Indian Designs Act.
A design must be new and it shall neither claimed earlier by any application for design in India nor used in anywhere in the world. The design is required to distinguish from the known designs or combination of designs already available in the public domain. A design must also be original, which means that it has to do more than simply imitate what already exists. A design that simulates a well-known object—for example, a paperweight replica of the Empire State Building—is not considered to be original. The design must be the result of “industry, effort, genius, or expense.
Novelty is a basic and fundamental requirement to obtain a design registration in India, termed here as industrial designs. This factor separates a design that has existed before against a design that is wholly new or original and has not yet been viewed by the public before. The novelty requirement also ensures that before any monopoly is claimed by the applicant, the design is considered new or original.
For determining the novelty of design patents, there can be roughly three standards: absolute novelty standard, relative novelty standard and blended novelty standard.
Absolute novelty standard, also called global novelty standard or worldwide novelty standard, means that the design under patent application must not be identical or similar to prior designs in the world. The merit of this standard is it guarantees that the patented design is a new design. Its disadvantage lies in the fact that it is hard to exhaust all prior designs when examining whether a design under patent application possesses novelty. Currently most countries have not adopted the absolute novelty standard.
Relative novelty standard, also referred to as regional novelty standard, does not require that the design to be patented must not be identical with or similar to the prior designs of the whole world. Instead, it imposes such requirements for a certain region. Here “certain region” usually means a certain sovereign territory, such as a sovereign country or region. The advantage of this standard is that it brings convenience to patent-granting authorities in their novelty examination. The disadvantage is it cannot guarantee that the design to be patented is a new design worldwide, which may stimulate an applicant to file an application on a design that possesses novelty at home but has been publicly disclosed globally and consequently impair the rights and interests of foreign right holders and constitute patent barriers to free trade.
The blended novelty standard is a granting standard composed of absolute novelty and relative novelty. The primary way to destroy the novelty of a design under patent application is through public disclosure and public use. According to blended novelty standard, for publicly disclosed designs, the absolute novelty standard will apply; while for publicly used designs, the relative novelty standard will prevail. The blended novelty standard has its benefits in that it avoids in part the shortcomings of the other two standards. For example, it overcomes the heavy cost of absolute novelty standard and the over localized features of relative novelty standard. Likewise, blended novelty standard also partly inherits the deficiencies of the other two standards.
FREQUENTLY ASKED QUESTIONS & ANSWERS
Q.1 What is meant by Intellectual Property ?
Ans. Intellectual Property is the Property, which has been created by exercise of Intellectual Faculty. It is the result of persons Intellectual Activities. Thus Intellectual Property refers to creation of mind such as inventions, designs for industrial articles, literary, artistic work, symbols which are ultimately used in commerce. Intellectual Property rights allow the creators or owners to have the benefits from their works when these are exploited commercially. These rights are statutory rights governed in accordance with the provisions of corresponding legislations. Intellectual Property rights reward creativity & human endeavor which fuel the progress of humankind. The intellectual property is classified into seven categories i.e . (1) Patent (2) Industrial Design (3) Trade Marks (4) Copyright (5) Geographical Indications (6) Lay out designs of integrated circuits (7) Protection of undisclosed information/Trade Secret according to TRIPs agreements.
Q.2. What is meant by ‘Design’ under the Designs Act, 2000 ?
Ans. ‘Design’ means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle or construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.
3. What is meant by an article under the Designs Act, 2000 ?
Ans. 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;
Q.4. What is the object of registration of Designs?
Ans. Object of the Designs Act to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.
Q.5. What are the essential requirements for the registration of ‘design’ under the Designs Act, 2000?
Ans. (1) 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.
(2) 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 registrable under the Act.
(3) The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act.
(4) The features of the design in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state.
(5) Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device, would not be registrable design. For instance a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect there of is required to be inserted on its representation, provided there are other registrable features in the design.
(6) The design should not include any Trade Mark or property mark or artistic works as define under the Copyright Act, 1957.
Q.6. Can stamps. Labels, tokens, cards, be considered an article for the purpose of registration of Design?
Ans: No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to an article should be integral with the article itself.
Q.7. When does the Applicant for Registration of Design get the registration certificate?
Ans: When an application for registration of a Design is in order, it is accepted and registered and then a certificate of registration is issued to the applicant.
However, a separate request should be made to the Controller for obtaining a certified copy of the certificate for legal proceeding with requisite fee.
Q.8. What is a Register of Designs?
Ans: The Register of Designs is a document maintained by The Patent Office, Kolkata as a statutory requirement. It contains the design number, class number, date of filing (in this country) and reciprocity date (if any), name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.
Q.9. What is the effect of registration of design?
Ans. The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.
Q.10. What is the duration of the registration of a design? Can it be extended?
Ans. 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 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 application for such extension even as soon as the design is registered.
Q.11. What is the date of registration?
Ans. The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.
Q.12. Is it possible to re-register a design in respect of which Copyright has expired?
Ans. No. A registered design, the copyright of which has expired cannot be re-registered.
Q.13. How one can ascertain whether registration subsists in respect of any design?
Ans. For ascertaining whether registration subsists in respect of a design, a request should be made to the Patent Office, Kolkata. If the serial number of the registered design is known, the request should be made on Form 6, otherwise on Form 7, together with fee of Rs. 500/- or Rs. 1,000/- respectively. Each such request should be confined to information in respect of a single design.
Q.14. What is piracy of a Design?
Ans. Piracy of a design means the application of a design or its imitation to any article belonging to 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 terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.
Q.15. What is the penalty for the piracy of a registered Design?
Ans. If anyone contravenes the copyright in a design he is liable for every offence 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 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 etc should not be filed in any court below the court of District Judge.
Q.16. Is marking of an article compulsory in the cases of article to which a registered design has been applied?
Ans. Yes, it would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or unless the registered proprietor show that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.
17. Can the Registration of a Design be cancelled ?
Ans. The registration of a design may be cancelled at any time after the registration of 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 or
- That it has been published in India or elsewhere prior to 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.
18. Is it mandatory to make the article by industrial process or means before making an application for registration of design ?
Ans. No, design means a conception or suggestion or idea of a shape or pattern which can be applied to an article or intended to be applied by industrial process or means. Example- a new shape which can be applied to a pen thus capable of producing a new appearance of a pen on the visual appearance. It is not mandatory to produce the pen first and then make an application.
19. Why is it important for filing the application for registration of design at the earliest possible ?
Ans. First-to-file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates only first application will be considered for registration of design.
20. Can the same applicant make an application for the same design again, if the prior application has been abandoned ?
Ans. Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.
21. How to get information on registration of design ?
Ans. After registration of designs the most relevant view(s) of the article along with other bibliographic data will be available in the official gazette, which is being published on every Saturday. However, such provision cannot be implemented at this stage due to insufficient infrastructure.
22. Whether it is possible to transfer the right of ownership ?
Ans. Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc. An application in form-10, with a fee of Rs. 500/- in respect of one design and Rs. 200/- for each additional design, for registration of the transfer documents is required to be made by the beneficiary to the Controllerwithin six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarized copy of the instrument to be registered is required to be enclosed with the application.
23. What is meant by priority claim ?
Ans. India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states, latter application will be regarded as if it had been filed on the same day as the first application.
24. How it is possible to restore the lapse design due to non-payment of extension fee within prescribed time ?
Ans. a registration of design will cease to be effective on non-payment of extension fee for further term of five years if the same is not paid before the expiry of original period of 10 years. However, 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 fee of Rs. 1,000/- is filed within one year from the date of lapsed 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.
25. Can the name, address of proprietor or address for service be altered in the register of design ?
Ans. Name of the registered proprietor, address or address for service can be altered in the register of designs provided this alteration is not made by way of change of ownership through conveyance i.e. deed of assignment, transmission, licence agreement or by any operation of law, for which reference may be made to the answer against Q. 21. Application in form-22 with a fee of Rs. 200/- should be filed to the Controller of Designs with all necessary documents in support of the application as required.
26. Are the registered designs open for public inspection ?
Ans. Yes, registered designs are open for public inspection only after publication in the official gazette on payment of prescribed fee of Rs. 500/- on a request in Form-5.
27. Can the application for registration of design be filed by the applicant himself only or through a professional person ?
Ans. The application for registration of design can be filed by the applicant himself or through a professional person (i.e. patent agent, legal practitioner). However, for the applicants not resident of India an agent residing in India has to be employed.
28. How does a registration of design stop other people from exploiting ?
Ans. Once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it may please be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000.
The Patent Office does not become involved with any issue relating to enforcement of right accured by registration, similarly The Patent Office does not involve itself with any issue relating to exploitation or commercialization of the registered design.
29. What are the important criteria for determining a “set of article” ?
Ans. 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.
Q.30. What is an artistic work which are not subject matter of registration ?
Ans. An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration which reads as follows:
“Artistic works” means: –
- A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality.
- An work of architecture and
- Any other work of artistic craftsmanship.
31. What is meant by classification of goods mentioned in the Third Schedule ?
Ans. In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. This classification has been made on the basis of Articles on which the design is applied.
Practical Example: If the design is applied to a toothbrush it will be classified under class 04-02. Similarly if the design is applied to a calculator, it will be classified in class 18-01. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible, but period of registration will be valid only upto period of previous registration of same design.
32. What is meant by Property mark as per the Indian Penal Code (Sec. 479) ?
Ans. A mark used for denoting that movable property belongs to a particular person is called a property mark. It means that marking any movable property or goods, or any case, package or receptacle containing goods; or using any case, package or receptacle, with any mark thereon.
Practical example: The mark used by the Indian Railway on their goods may be termed as a Property Mark for the purpose of easy identification of the owner.
Design Registration Booklet:
Design Amendment Rules 2014:
Ten Steps to Design Registration: