In India, different industrial designs are registered and safeguarded via the design registration process. The Designs Act of 2000 and the associated Designs Rules of 2001 govern the full process of design registration.
The term “design” refers to the distinctive features of a shape, figure, layout, ornamentation, composition of lines or colours, or combination thereof, added to a product by any manufacturing process or method, whether it be 2 dimensional, 3 dimensional, or both. The design creation process can be manual, mechanical, mechanised, chemical, separate, or all-encompassing, but it must appeal to the eye in order for the finished product to be recognised.
But there are no modes, standards, constructions, or other things here that are merely mechanical in nature. A registered brand, as defined in Section 2(v) of the Trade and Merchandise Marks Act, 1958, a property mark, or an artistic work, as defined in Section 2(c) of the Copyright Act, 1957, are also excluded from this definition.
The goal of registering a design under the Designs Act is to protect a newly produced, innovative design that will be applied to a particular object during the manufacturing process using an industrial method or mode. Sometimes, as with a phone or a pair of goggles, we observe that consumers’ purchasing decisions about certain consumable items are influenced not just by the quality of the products themselves but also by the way they look.The main goal of acquiring a registration for a design is to ensure that the specific artisan, inventor, craftsman, engineer, or designer of that design with unique appearance is not robbed and defrauded of his legitimate reward by some copycats who would tend to exploit his design to their items.
Why is registering a design necessary?
A product’s new and inventive features can be recognised by their distinctive shape, formation, patterns, beautifying, and mix of colours when they are applied. This is what is coined or initialled by usage “unique industrial design.” An amazing design catches eye right away when it is finished. It has a highly favourable impact on the market’s customers. A company or an entity requires design registration for a various reasons, some of this have been listed below:
- to get an active and strategically placed shield which is legal and legally viable to protect original creations of a company or such other legal entity in India from being misappropriated or copied.
- to grow and also foster creativity, uniqueness and individuality.
- All entities or enterprises which is having its headquarters in WTO Member countries that have ratified the Aspects related to Trade-Relations of Intellectual Property Rights (TRIPS) Agreement are required to adhere.
Law that applies to the registration of designs
The Designs Act, 2000 and accompanying Designs Rules, 2001, which went into effect on May 11, 2001, and which repealed the previous Act of 1911, are responsible for regulating the registration and protection of industrial designs in India.
The Design Rules, 2001 was again or additionally amended by Designs (Amendment) Rules 2008 and Designs (Amendment) Rules 2014.
Advantages of design registration
Here are some plain pros or benefits of registering a design under the Design Act 2000.
Legal Protection Against Copying of Designs
By registering their designs, entities can avoid or stop others from reproducing, copying, selling, or even distributing goods with the same design which they have created.
A certificate of registration of design is good for almost a period of ten years. Once this said period of time has passed, the validity taken up can be renewed for an additional period which can be a maximum of five years.
Gives a Differentiating Advantage
The design registration without any question or doubt gives aentrepreneur or entity a differentiator. This basically portrays that with a registered design, a business entity’s products acquire a character which is distinctive along with the same different in appearance also from those of its competitors.
The goods with registered designs are wholly original, which indicates that neither they have ever been utilised in India nor have they been previously published in any WTO member country.
Obtains Client Reaction
Additionally, an important pros of registering a design would be that it only appeals to the general public and is only evaluated in visual terms.
Since originality or uniqueness is one of the main points and also a requirementfor registering a design, the product must be distinctive and enticing from competitors in order to appreciate innovation and along with competition which is healthy.
Types of Design Registration Applications
Two categories of design applications exist:
A regular application cannot assert priority.
An application for reciprocity asserts priority over one that was previously submitted in a convention country. Within six months of the date the application was filed in the convention nation, the application must be filed in India. The six-month timeframe cannot be extended.
Who should make the application to?
The formshould be applied for by being sent to the following address:
The Controller of Designs, The Patent Office, CP-2, Sector-V, Salt Lake, Kolkata – 700091 is where a design registration application should be sent.
Major Points to be noted down:
Important Considerations When Submitting a Design Registration Application:
For a Design Registration Application to be processed quickly, the application form must be properly completed and the representation must be ready. 90% of applications are now reportedly liable to rejection during the formality check stage. Only a small number of submissions are rejected for important factors like originality and uniqueness. If not, they are challenged for improper filing. Consequently, it’s crucial to thoroughly submit the application.
For the purpose of filing a response to such formal objections, extensions are frequently challenged by agents or attorneys, which results in an additional delay of 4-5 months. As a result, it is essential that the documents needed for Design Applications be prepared with great care. The turnaround time for the Design registration application procedure will be greatly shortened as a result.
The Patent Office’s Designs Wing is dedicated to registering all properly submitted Design applications. In just one month from the date of application filing, this satisfies the important criteria, excluding registration. The implementation of this measure began in April 2011.
Complete design registration procedure
The following details the entire design registration process:
The Controller of Designs refers the application for registration of a design to an Examiner of Designs for an examination of:
The application and supporting documentation must meet formal standards, and the design must be registrable in accordance with the Designs Act, 2000, and Designs Rules, 2001.
2. Formality Check
The Examiner determines whether:
- Application is in prescribed format?
- Prescribed fee has been paid?
- Name, address, along with the nationality of the applicant is mentioned?
- Address for providing of the service is specified in the application form?
- Whether the proprietorship declaration is provided in the application form?
- Representation sheet is in a manner as prescribed in Rule 14?
- Power of authority, if applicable, is filed?
3. Substantive Examination
Substantive examination is carried out to ascertain whether the proposed design is:
- Desirable design under the Act?
- New or original?
- Prejudicial to public order or morality?
- Prejudicial to the security of India?
4. Examiner Report Consideration
If a design that has been applied to an article is qualified for registration, the Controller will take the Examiner’s report into consideration, and the design will then be registered right away. The registration certificate must be produced as soon as possible and submitted to the applicant.
A statement of objections must be given to the applicant if the Controller believes, after considering the report, that there are objections against the applicant or that the application needs to be amended.
The application will be presumed withdrawn if the applicant does not respond to the objections or requests a hearing within three months of the date the objections were communicated.
The time frame for removing objections cannot go beyond six months from the application’s filing date. However, if a request is submitted in Form-18 during the 6-month window, this term may be extended by an additional 3-months.
The application will be granted design registration if the applicant complies with all the conditions outlined in the Act and Rules and submitted in the form of a statement of objections.
5. Registration & Publication of Designs
Usually within a month of registration, an application is published in the Patent Office Journal.
The registration number and the application number are identical. Ordinarily, the date of filing for an ordinary application serves as the date of registration.
The Register of Designs kept by the Patent Office in Kolkata contains entries for all registered designs. The public is welcome to view the registry for purposes of inspection. However, the IPI official portal also offers an e-register option.
Documents required to submit an application for registration of design
- Form 1 in the format required (as in Schedule-II of the Designs Rules)
- The Designs Rules’12, 13, & also 14 should be trailed while preparing representations, and they should be submitted in matching.
- Original Form 21 which is Power of Authority/General Power of Authority if acquiesced by aattorney or a patent agent as in Schedule-II
- While filing a duplicate of a general power of authority (GPA), the applicant must include the design application number that was used to file the original GPA.
- Form 24 in the suitable format, if a claim of small entity status is made as in Schedule-II
- In the case of Indian entities, it must be accompanied by documentation of registration under the MSME Act, 2006.
- In the case of foreign entities, this must be supported by an affidavit sworn by the applicant or an authorised signatory in accordance with Rule 42 of the Designs Rules.
- Original Priority document which is as per The Designs Rules no. 15.
English translation of the Priority document that has been authenticated (if original priority document is other than English)attribution in the original (if the applicant of priority application in convention country is different from Indian applicant).
Detailed explanations of the necessary Design Application documents
A Form-1 application must be submitted with the required fees and include the following information:
- The applicant’s
- full name,
- name of the piece,
- class number, and
- also address for providing service within India.
Foreign applicants must also provide a service address in India, which may be their agent’s address there. It is required of international applicants to provide a service address in India.
The Office will not move forward with the application unless such an address is provided.
The correct mention of the article’s class in Form-1 is required. Articles have been categorised in the Third Schedule of the Designs Rules, 2001 based on Locarno Classification. It should be noted that separate applications must be submitted for each class in order to register a design in more than one category.
The applicant or his/her authorised agent/legal representative must sign the application. Only a registered patent agent or a licenced attorney may be chosen to serve as an authorised agent in India.
If the applicant has already registered a design for any other category of products, Form 1 must state this information along with the registration number.
Representation Of Design
Twin copies of representation of the design shall be provided. Detailed necessities of representation are detailed and specified in 02.05.02.05
Power Of Attorney
A Design Application may be filed individually by an applicant or through a legal practitioner orpatent agent. If the application is filed through legal practitioner or patent agent, a power of authority shall be submitted, together with the application. General Power of Attorney can also be considered acceptable.
The design representation must be submitted in two copies. In 02.05.02.05, the representational criteria are defined in detail.
Power of Attorney, third
An applicant may submit a design application either directly or through a patent agent or other professional. A power of authority must be included with the application if it is submitted through a patent agent or legal practitioner. It’s also acceptable to use a general power of attorney.
A copy of the design application submitted in the Convention Country must be submitted with the reciprocity application. The Official Chief or Head of the Organization in which it was filed must properly certify such a copy.
The priority document may be filed within an additional three months if it was not submitted with the application. You can request an extension by submitting Form 18 together with the required fee.
Registration of a design is valid
A design’s registration is valid for 10 years from the date of registration at first, but if a claim to priority has been recognised, the registration period is extended to ten years from the priority date. If an application in Form 3 is submitted to the Controller before the initial period of ten years has expired along with the required fees, this period of registration may be extended by an additional five years. Even after a design has been registered, its owner may still apply for such an extension.