What is Design Registration?
‘Design’ pertains to the distinctive aspects of shape, figure, blueprints or decorations or structure of lines or shades or a combination thereof given to any 2 or 3-dimensional (or in both formats) article by any manufacturing process or mode. The process of creating the design may be manual, mechanical, automated, or chemical, separate, or all-inclusive, by which the finished article appeal to and can be recognized solely by the eye.
The procedure of Design Registration in India, governed under the Designs Act-2000 and the corresponding Designs Rules-2001, facilitates the registration and protection of various industrial designs. However, this excludes any mode or a standard or construction or anything which is in the material a mere mechanical device, any registered trademark, as defined in Section 2(v) of the Trade and Merchandise Marks Act, 1958, as well as a property mark or artistic work as defined under the Section 2(c) of the Copyright Act, 1957.
Why is Design Registration essential?
The purpose is to safeguard a unique industrial design that points towards the formation of novel and innovative features of a product, easily identified by the distinctive shape, structure, patterns, beautification, and combination of such shapes or hues. A business entity in India can obtain an effective and well-situated legal shield to safeguard unique designs from being imitated or misused to encourage and develop creativity and originality.
Further, it is a mandatory compliance for all the companies located in the WTO Member nations who have signed the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement.
Who can apply for registration?
Any individual claiming to be the proprietor or an agent appointed on behalf of the proprietor may apply for the registration of a new or original design that has not been previously published in any country and is not contrary to public order or morality.
What Laws are pertinent for Design Registration?
In India, The Designs Act, 2000 and corresponding Designs Rules, 2001, further amended by Designs (Amendment) Rules 2008 and 2014, administer the registration and protection of industrial designs.
What are the aids of Design Registration?
Legal Protection from Design Imitation
The process of design registration restricts other entities/individuals from copying, reproducing, selling, or distributing their products bearing an identical design to the original product by way of providing a legal shield.
Unique Selling Point
With a registered design, the products of a business entity get a distinguished character and appearance from its competitor’s designs.
Extension of Validity
A Design registration certificate is valid for a period of 10 years, and on expiry, the validity can be further extended up to an additional 5 years.
As uniqueness is the key criteria for Design registration, the product must be alluring and unique enough from others; this promotes innovation and gives the ultimate boost to healthy competition.
The products with registered designs are globally unique, which means they are not formally published in any of the WTO member nations and are also not used by anyone in India before.
What are the Types of Applications for Design Registration?
An ordinary application does not claim priority.
A reciprocity application claims the priority of an application filed previously in a convention country. Such an application shall be filed in India within 6 months from the date of filing in the convention country and the period of 6 months is not extendable.
What Documents are required for the Design Registration Application?
- Form 1 in the prescribed format (as in Schedule-II of the Designs Rules)
- Representations prepared as prescribed under Rule 12, 13, and 14 of The Designs Rules and further should be submitted in duplicate
- Form-21(Power of authority/General Power of authority) in original (if filed through patent agent/advocates) (as in Schedule-II)
- If the applicant files a copy of the General Power of authority (GPA), it should be endorsed with the design application number with which the original GPA has been filed
- If small entity status is claimed, Form-24 in the prescribed format (as in Schedule-II)
- Accompanied with evidence of registration under MSME Act, 2006 in case of Indian entities
- Above to be accompanied with an affidavit deposed by the applicant or authorized signatory as Rule 42 of Designs Rules in case of foreign entities.
- Original Priority Document under Rule 15 of the Designs Rules
- Authenticated English translated copy of the Priority document (if the original priority document is in a language other than English)
- Assignment in original (if the applicant of priority application in a convention country is different from Indian applicant)
- The application shall be addressed to- The Controller of Designs, The Patent Office, CP-2, Sector-V, Salt Lake, Kolkata – 700091
Which Key Points should be considered While Filing Design Registration Application?
An aptly filled-up application form and appropriately prepared representation are critical for efficient processing of a Design Registration Application as it has been noted that 90% of the applications are subject to objection during the formality check stage due to incorrect filing.
A delay of 4-5 months is usually noted when extensions are often appealed by the agents or legal practitioners for filing replies to such formal objections Therefore, it is advised that the documents required to the Design Applications must be prepared very carefully to decrease the turnaround time taken by the Designs Wing of the Patent Office in granting.
Classification of Government fee for Design Registration:
|S. No.||Process||Form No.||Fee (In INR)|
|1.||On application for registration of the design under sections 5 and 44||1||1000.00|
|2.||On a claim under section 8(1) to proceed as an applicant or joint applicant.||2||500.00|
|3.||On application for restoration of lapsed design under section 12(2).||4||1000.00|
|4.||On request for information of design when registration No. given under Section 18.||6||500.00|
|5.||On request for information of design when registration no. not given.||7||1000.00|
|6.||Application for registration of a document in Register 10 of Design under section 30(3), in respect of one design.
For each additional design
|7.||Application for entry of notification of a document in the Register of Design under section 30 and rule 37, with respect to one design
For each additional design
|8.||On request for correction of clerical error under section 29.||14||500.00|
|9.||On request for a certificate under section 26 and rule 41||15||500.00|
|10.||On application for extension of time for filing priority document under rule 15||18||200.00|
|11.||On notice of opposition under rule 40||19||100.00|
|12.||Notice of intention to attend hearing under rules||20||500.00|
|13.||On request to alter name or address or address for Service in the Register of Design under rule 31||22||200.00|
|14.||On request for entries of two addresses in the Register of Design||23||200.00|
|15.||On petition under rule 46 for amendment of any document||500.00|
|16.||On petition under rule 47 for enlargement of time.||500.00|
Validity of Design Registration
The initial ten-year validity period of registration may be extended further for a period of 5 years by way of an application made in Form-3 accompanied by prescribed fees to the Controller before the expiry of the said initial period of ten years.
What do we offer?
- Filing the Application
- Providing Report of Examination
- Controller Response
- Design Publishing
- Design Registration
1. Inspection of Application
The application is referred by the Controller of Designs to an Examiner of Designs for conducting an examination to determine whether the application and the documents satisfy the formal requirements and whether such design as applied to an article/product can be registered under the provisions of the Designs Act, 2000 and Designs Rules, 2001
2. Formality Check
The Examiner determines whether:
- Submission of Application in the prescribed format
- Payment of prescribed fee
- The application contains the name, address, and nationality of the applicant
- The application contains the address for service
- The application contains the Declaration of proprietorship
- The representation sheet is as prescribed in Rule 14
- Power of authority, if applicable, has been 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. Report of the Examiner
The Controller considers the Examiner’s report regarding eligibility for registration of a design as applied to an article and if the same is eligible for registration it is registered forthwith. Further, the registration certificate is then issued and sent to the applicant at the earliest.
If upon consideration, the Controller is of the opinion that there is objection(s) adverse to the applicant or the application requires some amendment(s), a statement of objections shall be communicated to the applicant.
If the applicant fails to comply with the objections or fails to apply for a hearing within three months from the date of communication of the statement of objections, the application shall be deemed to be withdrawn.
The period for removal of objections shall not exceed 6 months from the date of filing of the application however, this period can be extended by further 3 months by filing a request in Form-18 within a period of 6 months.
If the applicant complies with all the requirements laid down under the Act and Rules, as mentioned in the form of a statement of objections, the application shall be granted design registration.
5. Registration & Publication
On successfully registering the application, it is published in the Patent Office Journal typically within one month wherein the registration number coincides with the application number.
6. Register of Designs
Register of Designs maintains the repository of all the registered designs at the Patent Office, Kolkata. The register is available to the general public for inspection purposes along an e-register is also available on the IPO official portal.
- Name(s), age, and address (es) and nationality (ies) of the Applicant/s whether they are partners or directors of the firm/company
- Name of the article to which the design is to be applied
- A brief statement of the novelty one claims for his design
- Name, address, designation, and nationality of the person who signs the General Power of Attorney, name, address, and nationality of the Applicant, if the Applicant is not a natural person, the legal status, and the place of incorporation
- Class of the article embodying the design
1. What does the term ‘article’ include as per the Designs Act 2000?
According to the Designs Act 2000, the term “article” refers to any article of manufacture and any substance, whether artificial or partially artificial and partially original. It is also inclusive of all components of that article capable of being finished and sold separately from each other.
2. What is the definition of the term ‘Design’ as per the Designs Act 2000?
The term ‘Design’ as per the Designs Act 2000 refers only to the characteristics of shape, configuration, patterns or adornments or the work of art including lines or hues or a blend thereof, applicable to any article.
A design can be either 2 dimensional or 3 dimensional or a combination of both, by any industrial process or mode, whether labor-intensive, automatic, or chemical-based, separate, or joint, which in the completed article attract and are recognized solely by the naked eye but does not consist of any method or principle/manufacturing or anything which is in substance a simple mechanical device.
Further, this is exclusive of any trademark, as defined in section 2(v) of the Trade and Merchandise Marks Act 1958, a property mark or a creative work as defined under Section 2(c) of the Copyright Act 1957.
3. What is the purpose of Design registration?
The main objective behind obtaining Design registration under the Designs Act is the ability to safeguard new or innovative designs created for application on a particular article for the purpose of being manufactured by an Industrial Process or mode, from being duplicated.
In many instances, the purchase of articles for consumption is affected not only by their practical quality but also by their outer appearance Further, the purpose behind design Registration is to ascertain that the artisan, inventor, or creator of a design having artistic look is not dispossessed of his bona fide prize by any other who are imitating his design to their own goods.
4. What is meant by the Register of Designs?
The Register of Designs is a document legally required to be maintained by The Patent Office, Kolkata the register encloses the design number, its class number, date of filing (in India) and reciprocity date (if any), name and address of the Proprietor and other relevant information that would influence the validity of proprietorship of the design. Further, it is open for public assessment on the imbursement of the prescribed authoritative fee & an excerpt from the designs register shall also be obtained on request along with the prescribed government fee.
5. Can I get Design registration for my postage stamps, sticker labels, tokens, and business cards which are to be considered for an article?
No, the above-mentioned objects are not eligible for Design registration as once the supposed Design i.e., adornment is erased, only a piece of paper, metal, or like material remains, and particularly the article referred will not exist. The article must have its own presence free of the Designs applied to it. [Design in respect of the label was held not eligible for Design registration, by an Order on civil original case No. 9-D of 1963, Punjab, and High Court]. Hence, the Design as applied to an article should be considered integral with the article itself.
6. What shall be the date of design registration?
The date of registration barring the case of priority document shall be the actual date of filing the design application. In case of the design registration of the priority document, the date of design registration shall be the date of making the application in the reciprocal nation.
7. When should I expect the arrival of the Design Registration certificate after applying for the design registration?
Upon submission of the application for design registration in orderly format and its acceptance, the design shall be registered shortly, and a certificate of the design registration shall be issued to the applicant. However, a different request should be made by the applicant to the Controller of Designs for obtaining a certified copy of the certificate for the purpose of a legal proceeding, along with a mandatory government fee.
8. What is the validity of the design registration? Can it be further extended?
The validity of the design registration is initially 10 years from the date of registration. However, in case the claim to priority has been permitted, the validity of the design shall be 10 years from the priority date. The initial period of design registration can be extended further by 5 more years through an application made in Form-3 adjunct to the prescribed government fee to the Controller of designs before the expiry of the earlier initial period of 10 years. The proprietor of the design shall make the application for such expansion the moment the design gets registered.
9. Can I get my design re-registered concerning which the Copyright has expired?
No, the design cannot be re-registered under the Designs Act 2000 if its copyright has expired even if the design is registered.
10. What will be the effect of registering the design?
The registration of a proposed design confers upon the registered proprietor’s ‘Copyright’ in respect of the design for the period of his registration. Here ‘Copyright’ means the special right to apply a design to his article falling under the class in which it has been registered.
11. What do you mean by Design piracy?
Piracy of a design refers to the application of a design or its cheap imitation to any article belonging to the same class of the articles where the proposed design was registered, for the purpose of sale or importation of such articles without the written consent of the registered proprietor.
Publishing such articles or revealing the terms of sale with information of the illicit application of the design to them also comes under the definition of design piracy.
12. What is the penalty for Design piracy of a registered design?
If an individual/entity tends to contravene the copyright of a registered design, s/he is liable for every such offense to pay a sum of INR 25,000 to the registered proprietor, subject to a maximum penalty of INR 50,000.
The penalty shall be recoverable as contract debt regarding any one design. The registered proprietor has the power to bring the suit for the recovery of the trade damages caused by any such breach and for a ban against the repetition of the same offense. The total sum recoverable shall not exceed INR 50,000 as the contract debt as stated under Section 22(2)(a). Further, the suit for violation recovery of damage, etc. should not be filed in any other court below the District Court Judge.