What is a Design?

Design is basically the feature of the shape, configuration, pattern, and ornamentation, combination of colors in 2D, 3D or both on an article or good.

Overview

The objective of the Design law in India is to strike a balance between protection of registered designs and promotion of design activity. Design protection is granted to new or original designs which appeal to the eye. Registration of designs confers significant commercial advantage on the owner. Application for registration of a design must be filed before any commercialization or public display of the article. Prior public display or commercialization can disentitle the owner. Design registration takes relatively less time to obtain compared to other forms of intellectual property. The term of protection for a design is 10 years which can be further renewed for a period of 5 years. India is a signatory to the Paris Convention for the protection of Industrial Property and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). The Firm provides comprehensive services including Prosecution, Enforcement and Advisory services. We handle design prosecution covering everything from industrial products, handicrafts, technical and medical instruments, watches and jewelry, houseware, electrical appliances, automotive products, etc. A registered design owner can file a civil lawsuit for injunction to restrain infringement of a registered design. Criminal remedies are not provided under the law.

What is not included in a Design?

A design cannot be

1. Merely a mechanical device.

2. A trademark under 2(l)(v) of Trade and Merchendise Act.

3. A property under Section 479 of IPC

4. An artistic work under 2(c) of the Copyright Act.

How is Design Different from other Intellectual properties?

COPYRIGHT

Copyright basically describes the right of an artist or a creator over its artistic or literary work.

TRADEMARK

Trademark is interchangeably used with the term brand. It is a word, device, sound, shape or anything that can distinguish one’s goods or services from another.

DESIGN

Design is the ornamental or the aesthetic aspect of a good which can be in the shape, surface or the patterns, lines or color or its combination on the good.

PATENT

Patent is the right provided over the invention of a process or a product to the inventor.

Why Is Design Registration Important?

Design registration is necessary for many reasons, some of which are as follows:

1. To obtain an effective and strategically placed legal shield to protect original creations from being copied or misappropriated.

2. To recognize the rights of the creator over the design which foster and grow creativity in the trade.

3. To have an exclusive right over the use of design and restrain others from using it for commercial gains.

Is Design Registration Mandatory?

it is advised to register your designs because by doing so there is an additional safeguard to the originality, novelty and uniqueness of the article for at least 10 years.

Law Applicable for Design Registration

The Designs Act, 2000 and accompanying Designs Rules, 2001, which came into effect on May 11, 2001, and which abolished the previous Act of 1911, are responsible for regulating the registration and protection of industrial designs in India. The Designs (Amendment) Rules of 2008 and 2014 made additional changes to the Design Rules of 2001.

Types of Applications for Design Registration

Two categories of design applications exist:

1. Ordinary application: It is a regular application which is made on a regular claim of novelty and originality and does not have any priority claim.

2. Reciprocity Application: Reciprocity application asserts priority over an earlier application submitted in a convention nation of India. The provisions for such an Application is given under Section 44 of the Design Act. An application under this provision must be submitted in India within six months of the date it was submitted in the convention nation.

Prior use in design?

There is no concept of prior use in design and first-to-file gets superior right. It is also important to remember that a Design should be applied for registration first and then it should be taken into actual use.

Essential Requirements for Design

A Design should:
Be new or original.
Not be available to the public or published prior to the filing date or the priority date as claimed.
Be distinguishable from designs already available.
Not be a mosaic of designs.
Who Can File the Design Application?

1. Any Person including Individual, Firms, Partnerships, Small Entities, and Corporate Bodies on their own or through their legal representative or an agent can file the application for design registration.

The Design (Amendment) Rules, 2014, introduced categories of Applicant for determining the Application fees:

2. Natural person

3. Other than a natural person which includes: small entities and other than small entities.

Documents Required for Design Application

1. The application for the design registration as per Form-1.

2. Representation sheet of the design including statement of novelty and disclaimer.

3. General Power of Attorney

4. Form 24 if the Applicant is an MSME.

Details to be mentioned in the Design Application

1. The class and sub class of the article to which the design relates is to be specified.

2. The name of the article on which design is applied is also to be mentioned.

3. In the representation sheet, all the views of the design along with the statement of novelty and disclaimer have to be mentioned. Four copies of the representation sheets have to be sent to the Office.

4. All the documents have to be signed either by the Applicant himself (except NRI) or by their legal representative.

Fee Structure for Design Application
Application
For Natural Person
Other than Natural person
Small Entity
Other than Small Entity

Design Search for novelty(if the application No. of the prior design is known) by submitting Form 6


500/-

1000/-

2000/-

Design Search for novelty (if the Application Number isn’t known)by submitting Form 7


1000/-

2000/-

4000/-


Design Application Fees


1000/-

2000/-

4000/-

Examination of Design Application

The Controller after examining the Application if finds certain errors or objections sends the examination report to the Applicant which is to be responded to within 3 months from the date of Application not exceeding more than 6 months otherwise the application is considered to be withdrawn.

How Much Time Does It Take To Register A Design?

A design registration takes up to one year for registration. A design once accepted by the Controller after examination is published in the Journal and the Certificate is issued.

Validity Of Online Design Registration

When the registration certificate is issued it is initially for a 10-year period from the registration date or from the priority date. By submitting an application in the required format to the Controller and paying the fees before the expiry of the design registration it may be extended for an additional 5 years. A restoration request for a lapsed design due to non-payment of the fee for extension is also sent to the Controller within a year of the date the extension was due, along with the required form and fee.

Cancellation Of Design Registration

The Registration of a Design may be contested on various grounds such as:

1. The design is previously registered by someone else.

2. Has a prior publication in or outside India.

3. It is not novel or original.

4. Doesn’t meet the requirement of section 2(d) of the Act or is not registerable under the Act.

Any person who is aggrieved by a design due to any of the abovementioned grounds can file a cancellation application/ petition to the Controller.

Is It Possible To Transfer The Ownership Of Design Registration?

Yes, the right may be transferred by agreement, assignment or licensing.

For more information on Design Registration in India please write to us at: info@markshield.in

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