The Federal Government of Pakistan has adopted new regulations for Designs Rules, 2023 which published in the Official Gazette Part-II on March 11, 20231 2and came into force immediately thereafter.
The salient features of the new Designs Rules under the Registered Designs Ordinance, 2000 are as under:

  • FEE

The fee for applications and registrations under the Ordinance has been raised as per the 2023 Rules, and the updated fees are specified in the First Schedule of these Rules.

  • FORMS

New forms, including the Application Form and Power of Authority Form, have been introduced. The new form3 requires only the applicant's or an authorized officer's signature, and notarization or legalization is no longer necessary.

  • CLASSIFICATION OF ARTICLES

A new classification system, equivalent to the Locarno Classification, has been introduced for design registrations. The third schedule of the Rules categorizes articles into 32 classes based on this system.4

  • REPRESENTATION OF DESIGN TO BE FURNISHED

Representations of the design shall be furnished in the form of-

  1. drawings; or
  2. photographs; or
  3. three-dimensional modeling; or
  4. combination of any of the above; or
  5. any other visual representation of design.

Design representation can be in color or black and white. If requested by the Registrar, a specimen of the design must be provided along with the representations. The design can be shown in one view that fully reveals it or through multiple views. For articles with movable parts, these parts should be depicted consistently in all dimensions.

The representation should not contain lines or descriptive text, except for dimension labels. If shadows are necessary to highlight novel features, they should be light and non-obstructive.

The Registrar may request additional views to fully depict the product incorporating the design. However, new views showing novel elements not derived from the original view are not required. When the design applies to a set of articles, each representation should display all intended arrangements for the articles in that set.

  • EXAMINATION OF APPLICATION

The Rules, 2023 provides timelines for the prosecution of a Design application as follows:

  • The application will be examined within two months receiving of the application.
  • The examination report shall be sent to the applicant or his authorized agent in writing or by electronic means who shall file a reply to the report within two months from the date of official communication of the report. A period for the removal of the objection may be extended for a further period not exceeding six months from the date of the first examination report made upon requesting in a prescribed manner along with payment of the prescribed fee.
  • CERTIFICATE OF REGISTRATION

The certificate of registration shall be granted upon the filing of a request on the prescribed form and payment of the prescribed fee where the decision of the Registrar is in favor of the design.

Any request by the registered proprietor for an additional or duplicate copy of the certificate of registration shall be made in a prescribed manner along with the prescribed fee.

  • PUBLICATION OF DESIGN

After the issuance of a certificate of registration, the Registrar publishes the Design in the patents journal and in the official Gazette, on a weekly basis, with the following details. namely:

  1. date of filing of design application;
  2. date of registration;
  3. priority date, if any, accorded under a claim to a right to priority and the name of the country or territory concerned;
  4. name and address of the registered owner;
  5. the article in respect of which the design is registered including its classification number;
  6. registration number;
  7. representation of the design; and
  8. such other information as the Registrar deems appropriate;

The Registrar may select one or more views of the representation of the design for the publication, which in his opinion would depict the design best.

  • EXTENSION OF TIME FOR PAYMENT OF RENEWAL FEE

A design can be restored if its validity lapses due to unpaid extension fees. The owner or their representative, and in jointly-owned cases, can apply for restoration with the Registrar's permission within six months of lapse. The application requires payment of unpaid fees and a statement explaining the delay, verified accordingly. Additional evidence may be requested by the Registrar if necessary.

  • CANCELLATION OF REGISTRATION OF DESIGN (Opposition)

Cancellation of a registered design involves:

Submitting an application to the Registrar with prescribed fees, including:

  • Statement of grounds
  • Supporting evidence
  • Nature of the applicant's interest

If the registered proprietor opposes, they must provide a counter-statement within one month.

Failure to submit a counter-statement on time may be taken as not opposing the cancellation application.

In the counter-statement, the registered proprietor must:

  • Present concise facts relied upon.
  • Specify which allegations in the statement of grounds are denied.
  • Indicate which allegations cannot be admitted or denied but need proof from the applicant.
  • The state admitted allegations, verified by a statement of truth.

Both parties can submit supporting evidence with the Registrar's permission, shared simultaneously. After evidence is complete or within one month of the counter-statement, the Registrar schedules a hearing with at least ten days' notice.

In proceedings before the Registrar:

  • Evidence is considered filed only when received by the Registrar and shared with all parties.

Parties must notify the Registrar if they want to attend the hearing.

After hearing parties or if no one attends, the Registrar decides and communicates the decision. Both parties can request grounds for the decision in a prescribed manner.

  • APPEALS

An aggrieved party can appeal the Registrar's decision within ninety days of receiving it to the relevant High Court. The date of receiving the Registrar's decision marks the start of the appeal period, and the reasons for the appeal must be provided.

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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.