Design Registration in India: Patenting a Design
Design means only the features of shape, configuration, pattern or ornament or composition of lines or color or combination thereof applied to any article whether it’s form is 2 or 3 dimensional or both by any industrial process, mechanical or chemical, manual which in the appealed article is judged by the eye but does not include any principle of construction or anything which is a mere mechanical device without any trade mark. It is defined under clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958 and property mark on artistic works is defined under Section 2(c) of the Copyright Act, 1957.
DESIGNS ARE PROTECTED BY TWO LEGAL RIGHTS IN INDIA:
- Registered designs right
- Artistic copyright
Design monopoly grant the owner monopoly over his creation. It right aims at restricting anyone from copying or selling the product after the agreement without one’s permit. The design is endowed with copyright protection.
- Designs Act, 2000
- Designs Rules, 2001
ARTICLE' UNDER THE DESIGNS ACT, 2000
Under the designs act 2000, the article accounts to article of manufacture, artificial, partly natural or artificial along with include any part which is capable to be sold and being made.
SET OF ARTICLES' UNDER 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:
- Intended to be used together or ordinarily
- Different articles with identical designs
- Identical general character. Articles with same design and sold in different sizes can’t be identified as a set of articles. For example: tea set, crockery set etc.
REGISTRATION REQUIREMENTS FOR 'DESIGN' UNDER THE DESIGNS ACT, 2000
- The design should be fresh and not have been used or published in any country before the application for registration. The novelty of the known shape should be there. If the design fails to involve any mental activity for conception, the registration may not be paid heed in such condition.
- The design should relate to configuration, shape, pattern applicable to an article. Thus, the layouts and designs of the industrial pattern are not included and registerable in the Act.
- The design should be applicable to any article by the industrial process. Usually, designs of artistic nature like, sculptures, painting and the like which are not produced in bulk by industrial process are not included in the registration under the Act.
- The features of the article are analyzed closely by the eye. The design must be visible as the finished article for which it is meant: Any design in the inside arrangement almirah or money may be not be considered to be shown in open state as they are generally viewed in closed state in the market.
- Any mode or principle of construction or operation or anything which is in substance a mere mechanical device, would not be registerable design. For example, a key having its novelty only in the shape of its corrugation or bend at the portion which is intended to engage with levers inside the lock associated with, can’t be considered as design for registration under the Act.
- However, when any design suggests any mode or: principle of construction or mechanical or other action of a mechanism, a well-connected disclaimer is required to be inserted on its representation as a symbol of respect. On the condition of the other features provided in the design.
- The design should not include any Trade Mark or property mark or artistic works as defined under the Copyright Act, 1957.
APPLYING FOR DESIGN REGISTRATION
Anyone can file the application for registration be it the applicant himself or a professional person. However, for the applicants not being residents of India, an agent residing in India has to be employed.
PLACE OF APPLYING FOR DESIGN REGISTRATION
For registration of the design, the person shall submit the documents to the Controller of Designs. The Patent Office at Kolkata, or at any of its branch offices at Mumbai, Chennai and New Delhi.
DURATION AND EXTENTION OF REGISTRATION OF DESIGN
The registration is valid for 10 years from the date of registration. In case of allowance of the priority, the duration is 10 years from the priority date. The initial period of registration may be increased by 5 years on an application made in Form 3 which applied charge of Rs.2000 to the Controller before the expiry of the Copyright period. The proprietor may submit application for the same after the registration of the design also.
CANCELLATION OF REGISTRATION OF A DESIGN
One can cancel the registration of a design anytime after its registration. With a petition for cancellation in form 8 and a fee of Rs. 1500 to the Controller of designs. This can be filed on the following grounds.
- Design has been registered in India previously
- Publishing of the design in any country prior to its registration date
- The design is not original
- The design lacks qualities for registration
- It does not comply with Clause(d) of Section 2
RESTORATION OF THE LAPSED DESIGN DUE TO NON-PAYMENT OF EXTENSION FEE WITHIN THE SPECIFIED TIME
In case of non- payment of the extension fee for the period of 5 years and in case of non-payment for the original time period of 10 years, the design will be considered as ineffective.
- Application for restoration in form-4 is required to be filed within a year with fee of 1000/- from the lapse date stating practical reasons for the non-payment of extension fee.
- If the application is allowed for restoration, the proprietor is required to pay the 2000/- of extension fee with an additional fee of 1000/- and in this way the lapsed registration is finally restored.
PIRACY OF A DESIGN
It states that the application of a design or an imitation to any article belonging to the particular class of articles in which design has been registered for the sale purpose and import of the articles without the written consent of the registered proprietor. Publishing or exposing the articles for sale with knowledge of unauthorized design application, also comes under piracy.
PENALTY FOR THE PIRACY OF A REGISTERED DESIGN
If anyone breach the copyright in a design for every violation, he/she is liable to pay a sum not exceeding Rs 25000- to the registered proprietor to 50,000-/ to maximum recoverable as contract debt in any one design. The Proprietor may bring the suit for the damage recovery for any such contravention and for injunction against repetition of the same. The recoverable sum should not exceed 50,000 as contract debt stated in Section 22(2)(a). The Infringement suit and damage recovery should not be filed or mentioned in any court below the District court.
What Rajput Jain & Associates Offers
Our services include the following:
- Filing and prosecuting the applications for design registration
- Option of Infringement and validity
- Litigation: Appeals, rectification, opposition, civil suits for infringement
- Licensing and Assignment