Our team has the first-hand experience in dealing with non-contentious and contentious design matters. Our Attorneys regularly advise to the world-renowned Luxury Fashion and Jewellery Brands; Fixtures and Furniture Brands; Medical Devices / Instrument Brands; Stationary Product Brands; Mechanical Equipment Producing Brands; Medium and Small Scale Industries and Individual Designers as well.
Our team has extensive experience in handling pre and post-registration procedures and have successfully obtained registrations for a wide variety of proprietors.
We also assist our clients in procuring Design rights in India and other jurisdictions such as SAARC, ASEAN, Europe, USA, Japan, and South Korea.
What Does Design Mean?
As per the provisions of the Designs Act, 2000, a Design means:
- feature of shape, configuration and pattern, ornamentation or composition of lines or colours applied to an article by industrial process, which in the finished form appeals to and is judged solely by the eye;
- two or three dimensional or in both forms;
- capable of being produced by industrial process.
However, a Design does not include:
- mode or principle of construction of the article on which Design is applied;
- Trademark or property mark;
- artistic works.
Which designs are prohibited from registration?
The following Designs are not registrable in India:
- not new or original;
- not significantly distinguishable from known Designs or combination of know Designs;
- contains scandalous or obscene matter.
What is a new or novel design?
A Design is considered to be new:
- when it has not been disclosed to the public anywhere in India or in any other country by publication or by use or in any other way, prior to the date of earliest priority or date of filing;
- when it is significantly distinguishable from known Designs or combination of known Designs.
When a design is considered original?
An original Design means:
- originating from the author of Design;
- Designs which are old in time but are new in their application. For example, a car is for driving and commuting. A bag created in a Design of a car, which is used for carrying stuff, can be considered as original.
Who can apply for a design application in India?
An application for registration of a Design can be filed by any person claiming to be a proprietor of a new or original Design applied on an article. The proprietor could be:
- an author of the Design;
- an exclusive assignee of the Design;
- original proprietor of the Design jointly with another person to whom rights have been transferred.
What kind of representations of Design applied on the article can be submitted for registration?
The representations of the article should be in one format which can be drawings, photographs or computer graphics. It is advisable to include a perspective view, front view, back view, right side view, left side view, top view and bottom view of the article on which the Design is applied along with the application for Design registration.
Where can an application for design be filed in india?
An application for registration of Design can be filed at any branch of the Indian Patent Office.
However, further processing and prosecution of the Design Application takes place at Kolkata Branch of the Indian Patent Office.
What are various types of design applications?
There are two types of Design applications:
- Ordinary Application: When an application for registration of a Design is filed with the Indian Patent Office, without claiming any priority, such applications are called as Ordinary Applications;
- Reciprocity Application: When an application for Design registration is filed with the Indian Patent Office, claiming priority from already filed Design application(s) filed in a convention country or group of countries or inter-governmental organizations is called Reciprocity Application. The Reciprocity Application is required to be filed within 6 months from the date of earliest priority application. The said time limit is not extendable.
Is it mandatory to submit original certified copy of the priority application?
In case of priority applications, it is mandatory for the Applicant to furnish the original certified copy of the priority document along with the application within extended time limit of 3 months from the date of filing of the application. A separate request is required to be filed for seeking extension of time limit.
Further, verified English translation of the priority document is required to be furnished if it is in language other than English.
Is it necessary to file request for examination of design application?
The Design applications are directly taken for examination by the Patent Office. Therefore, any separate request for examination is not required to be filed.
Is copyright in the design enforceable in countries outside india?
Like other IP Rights, Copyright in Design is territorial in nature i.e. enforceable in countries where Design is registered.
What is the term of a design registration?
Copyright in Design subsists for 10 years from the date of registration. This period can be extended for another 5 years upon a request for extension of Copyright filed by the registered proprietor before the expiry of the original period of 10 years.
How long does it take to get a design registered?
The process of Design registration normally takes around 6 to 9 months. However, it may get extended under certain circumstances. It is pertinent to note that Design registration is considered to be the quickest IP right a proprietor gets, among all other such rights.
Who can file request or petition for cancellation of a registered design and on what grounds can such cancellation be filed?
Any person interested may file a petition for cancellation of a registered Design on the prescribed Form. The petition for cancellation of registered Design can be filed on the following grounds:
- Design has been previously registered in India;
- it has been published in India or in any other country prior to the date of its registration;
- Design is not new or original;
- Design is not registrable under the Designs Act 2000;
- it is not a Design as defined under the Designs Act 2000.
Can a ceased/lapsed design be restored?
An application for restoration of Design can be filed within 12 months from the date on which a registered Design ceased to have effect due to non-payment of fees for extension of Copyright (or renewal fee) with the Indian Patent Office.
What are the grounds of rectification of the register of designs?
Any person aggrieved on the following grounds may file a request for rectification of register of Designs:
- non-insertion or omission of any entry;
- entry made without sufficient cause;
- entry wrongly remaining on the register;
- error or defect in any entry.
What are the requirements before delivery on sale of the article to which a registered design is applied?
As per the requirements of the Indian Designs Act 2000, the proprietor has to mark REGISTRED, REGD., RD or Registration No. on the article for which Design is registered before delivery on sale.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
