Design protection pertains to the aesthetic features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in 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 of construction or anything which is in substance a mere mechanical device, and does not include any trade marks applied to an article. [Sec 2(d)]
Registrable Designs
Not all designs are necessarily registrable. The Design office may refuse registration to a design on various grounds including the lack of originality and novelty in a design, disclosure to the public prior to the application, its inability to distinguish itself from known designs or combination of known designs, it comprising obscene or scandalous matter. [Sec 4]
Absolute Novelty
Indian Design law requires that the design not be made public anywhere in the world, until after an application for design protection has been filed. However, as India is a signatory to International Convention for the Protection of Industrial Property, it is possible for the applicant to file an application in his home country and then file in India within six months of the original filing. Deferring in India for up to six months allows the applicant to make the design available to the public within this period. This deferred filing deadline could allow the applicant the opportunity to test the market for its product before it incurs the substantial costs associated with filing design applications in India.
Registration
Design is a statutory right and An unregistered design may not be enforceable under common law in an action for passing off. Registration of a design is a mandatory requirement.
Application Process
In order to prepare a design application we need to know several details as given below
The full name, state of incorporation and the registered office address of the applicant. Any “proprietor” of a design may be named as applicant. Where the author creates the design as an individual in his or her own right, he or she is the first proprietor. Where the author has created the design for another person for good and valuable consideration, that other person is the first proprietor. Therefore, when the author creates the design pursuant to normal duties as an employee, the first proprietor is the employer, and when the author has been commissioned to create the design, the first proprietor is the person retaining his or her services.
The details of the design. We would require clear graphic representation of the proposed design including various views like a top view, bottom view, side view etc. The claim of novelty must be specified. An application for an Industrial Design Registration includes a written description of the novel ornamental features of the design and drawings (or black and white photographs) of appropriate size and format.
An accurate description of the specific goods in respect of which design protection is required.
In case the Applicant is claiming priority, then details of the home application along with a certified copy of the convention application must be provided.
We will require a Power of Attorney in our favour so as to enable us to act on the Applicant’s behalf. A sample Power of Attorney is available on our website
Post Application Process
After an application for the registration of Design is filed, an Examiner at the Indian Design Office reviews the application and searches for similar designs, checks the novelty, originality claims and issues an examination report directing the Applicant to comply by making necessary amendments and/or present arguments to distinguish over them.
Registration Process
Once the Applicant files the formal response to the examination report and the Examiner is satisfied, a certificate of registration is issued automatically.
Term of Registration
If an application for registration of a design mark does not run into difficulty at the examination stage, registration is obtained and the registration is given for a period of ten years, subject to the design being cancelled on various ground. The registration is renewable for one further term of five years.
Articles that are protected by Design Registrations, or associated packaging or labels should be marked with a “D” in a circle followed by the name of the proprietor to advise the public that the design is protected.
Removal/cancellation of a registered design
A registered design can be cancelled on various grounds including that the Design has been prior published, prior registered, lacks novelty and originality or that it is not registerable under the present design law. [Sec 19]
Infringement/Piracy of a registered design
The Designs Act defines piracy of a registered design as
Section 22.
During the existence of copyright in any design it shall not be lawful for any
For the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied, or
To import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof, or
Knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
Remedies
If a registered design is infringed, an owner or licensee may be entitled to relief by way of injunction, damages, punitive damages to the extent of upto Rs 50,000 (US$ 1100) and to disposal of any infringing items bearing the design.
The Designs Act does not provide for a remedy under the criminal law
