Designs are used in various distinct productions and across various business or commerce, such as handicrafts, jewelry, garments, medical devices, and engineering appliances. Works of art, such as paintings and sculptures, also have designs in the sense that the artists have decided how they will look like and have used paint and brushes or a hammer and chisel to express their artistic intent. Therefore, designs include intellectual creativity and can be considered as a type of intellectual property.
A design when applied to an article may make a product attractive and appealing, thereby adding to the commercial value of the article and increasing its marketability. Since designs may be exploited commercially, therefore, there is always a threat of imitation and copying. Accordingly, a protection of designs by law is required.
Designs in India are protected under the Design Act, 2000. Object of the Designs Act is to protect new or original designs so created to be applied or applicable to particular article to be manufactured by industrial process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of the Act is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bona fide reward by others applying it to their goods. Further, the purpose of the act is to provide remedies in case such a violation takes place.
One has to register the design under the Act to claim remedy against imitation and un-authorized copying of the designs. However, it should be noted that a design is registered under the Design Act, 2000 only when it fulfils certain criteria defined under the Act. For example, the design has to be new or original to be registered under the Act.
A successful registration of design may act as an indispensible legal and strategic business tool. Firstly, it provides exclusive rights to prevent others from copying the design on articles, for which protection has been registered. This may give a strategic monopoly to you for the article. Secondly, design registrations for your articles may act as a very good marketing tool for differentiating your articles from the articles existing in market. Lastly, the design registration provides you the right to approach any court seeking injunction or damages against any violation of your copyright on designs.
Process of Design Registration –
1. Who grants design registration and under which Act?
The Controller General of Patents, Designs and Trade Marks grants registration of a design under the Designs Act, 2000. Any person can make an application to him who claims to be the proprietor of any new or original design.
2. What an applicant needs to do for submitting for design application?
An application in a format as per Form-1 under sections 5 or 44 of the Designs Act, 2000 is submitted at the Patent Office. The application is accompanied by 5 copies of the design that is required to be registered. Along with the application, a prescribed fee has to be paid to the patent office for the registration process.
3. What happens after submitting a design application?
The controller before registration of the design refers the application for examination by an examiner, who examines your application and prepares an examination report, which he sends to the controller. The controller may allow or refuse to register any design presented to him for registration based on the examination report. The grounds of refusal could be:
- Design is not new or original
- It has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date
- It is not significantly distinguishable from known designs or combination of known designs
- Comprises or contains scandalous or obscene matter shall not be registered
In case a design is refused based on the examination report a legal advice is necessary. A refusal may be challenged by responding to the grounds of objections in the examination reports. In case, the controller is still not satisfied, an appeal under section 5 sub-section 4 may be made to the High Court.
4. Can a registered design be cancelled?
A registered design may also be cancelled under section 19 of the Act if proper application is made by a person interested before the Controller that—
- The design has been previously registered in India, or
- The design has been published in India or in any other country prior to the date of registration, or
- The design is not a new or original design or that the design is not registerable under this Act, or
- The design is not a design according to the definition of design under the act.
5. What is the duration of registration of a design? Can it be extended?
The duration of registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date.
This initial period of registration may be extended by further period of 5 years on an application made in Form No.3 to the Controller before the expiry of the said initial period of Copyright. The proprietor of a design may make application for such extension as soon as the design is registered.
6. International protection of designs—
India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states; latter application will be regarded as if it had been filed on the same day as the first application. There is no registration authority that gives you a worldwide protection of your design.
7. Cost for obtaining Design protection—
Minimum Government fee
A sum of INR 1000/- is the prescribed fee along for making an application for registration of one single design.
Typical professionals may charge anywhere between INR 8,000/- to INR 25,000/- for registration of one single design.
Issues in Design Registration
There are few potential roadblocks for registration of designs. Firstly, your design may fail registration if the application of design is not made in a prescribed manner, in compliance with the procedures prescribed in the Design Act, 2000. This highlights the importance of having a specialist professional who knows how design registration works on your side.
Secondly, your design may fail registration because of the objections raised by the controller in the examination report. The controller may refuse registration on one or more of the grounds as described in section 3.3. The first and foremost thing that can be done to avoid this roadblock that is to ensure that the design is new or original before filing the design application. This can be done by conducting a thorough search in design databases. An expert in design matter usually conducts the search in PAID DATABASES, and other freely available databases. Accordingly, a thoroughly conducted search can go a long way in understanding the register-ability of your design, and saving the future official and professional costs.
Usually, objections of the controller may be traversed by vehemently arguing against such refusal in the Response to the examination reports, especially challenging the applicability of the sections of the Act in your case. This further highlights the importance of having good professional help at your disposal. A good professional may easily counter such objections based on his prior experiences and knowledge about the Design Act and procedures established under the Act.
Thirdly, the design may face hurdles from third party oppositions. Since design registration provides monopoly to the use of design, third parties always want to raise objections on the granted design registration. Accordingly, they may make petitions for revoking your design registration with the controller. A design once registered is usually difficult to be revoked. However, you may face such hurdles during the course of your design registration. Again, considering the complexity of the matter, a professional assistance to solve such problem may serve many purposes. Usually, a well prepared design application goes a long way in negating future problems with respect to cancellation.