Industrial Design
Law
A good design can
influence consumers to buy the product whether this product was
shoes, clothes, or cars. To develop your industry it is essential
to understand the importance of intellectual property. The
registration of an industrial design helps maintain competitiveness
and protect your new designs from being copied as well as increases
your investment in designing new products. By registering an
industrial design, the owner of the registered design will have the
exclusive rights to exclude others from making, using, distributing
or selling his/her design. Thereby, the owner can give license to
other parties to use the design according to agreement contract, or
sell his registered design to anyone.
We at
Marks & Rights provide
services in preparing and filing design applications for
registration, including preparation of drawings that conforms to the
requirements of Designs Office. We also provide services for
conducting design search, paying annuities, preparing and filing
written argument and appeals, combating infringement of design
rights and litigation.
Click here to request more information regarding Industrial Design Law
Frequently Asked Questions
This FAQ contains the following questions and answers:
1. What is meant by 'Design' under the
Designs Act, 2000?
2. What is meant by an article under the
Designs Act, 2000?
3. What is the object of registration of
Designs?
4. What are the essential requirements for
the registration of 'design' under the
Designs Act, 2000?
5. Can stamps. Labels, tokens, cards, be
considered an article for the purpose of
registration of Design?
6. When does the Applicant for Registration
of Design get the registration
certificate?
7. What is a Register of Designs?
8. What is the effect of registration of
design?
9. What is the duration of the registration
of a design? Can it be extended?
10. What is the date of registration?
11. Is it possible to re-register a design in respect
of which Copyright has expired?
12. How one can ascertain whether registration
subsists in respect of any design?
13. What is piracy of a Design?
14. What is the penalty for the piracy of a registered
Design?
15. Is marking of an article compulsory in the cases
of article to which a registered
design has been applied?
16. Can the Registration of a Design be
cancelled ?
17. Is it mandatory to make the article by
industrial process or means before
making an application
for registration of design ?
18. Why is it important for filing the
application for registration of design at the
earliest possible ?
19. Can the same applicant make an application
for the same design again, if the
prior application has been
abandoned ?
20. How to get information on registration of design ?
21. Whether it is possible to transfer the right of
ownership ?
22. What is meant by priority claim ?
23. How it is possible to restore the lapse design due
to non-payment of extension
fee within prescribed
time ?
24. Can the name, address of proprietor or address for
service be altered in the
register of design?
25. Are the registered designs open for public
inspection ?
26. Can the application for registration of design be
filed by the applicant himself
only or through a
professional person ?
27. How does a registration of design stop other
people from exploiting ?
28. What are the important criteria for determining a
"set of article" ?
29. What is an artistic work which are not subject
matter of registration ?
30. What is meant by classification of goods mentioned
in the Third Schedule ?
31. What is meant by Property mark as per the Indian
Penal Code (Sec. 479) ?
1. What is meant by 'Design' under the Designs Act,
2000?
'Design' means only the features of shape, configuration, pattern or
ornament or composition of lines or colour or combination thereof
applied to any article whether two dimensional or three dimensional
or in both forms, by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye, but
does not include any mode or principle or construction or any thing
which is in substance a mere mechanical device, and does not include
any trade mark, as define in clause (v) of sub-section of Section 2
of the Trade and Merchandise Marks Act, 1958, property mark or
artistic works as defined under Section 2(c) of the Copyright Act,
1957.
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2. What is meant by an article under the Designs Act,
2000?
Under the Designs Act, 2000 the "article" means any article of
manufacture and any substance, artificial, or partly artificial and
partly natural; and includes any part of an article capable of being
made and sold separately.
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3. What is the object of registration of Designs?
Object of the Designs Act 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
design Registration is to see that the artisan, creator, originator
of a design having aesthetic look is not deprived of his bonafide
reward by others applying it to their goods.
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4. What are the essential requirements for the
registration of 'design' under the Designs Act, 2000?
(1) The design should be new or original, not previously published
or used in any country before the date of application for
registration. The novelty may reside in the application of a known
shape or pattern to new subject matter.
Practical example: The known shape of "Kutub Minar" when applied to
a cigarette holder the same is registrable. However, if the design
for which application is made does not involve any real mental
activity for conception, then registration may not be considered.
(2) The design should relate to features of shape, configuration,
pattern or ornamentation applied or applicable to an article. Thus,
designs of industrial plans, layouts and installations are not
registrable under the Act. (3) The design should be applied or
applicable to any article by any industrial process. Normally,
designs of artistic nature like painting, sculptures and the like
which are not produced in bulk by any industrial process are
excluded from registration under the Act. (4) The features of the
design in the finished article should appeal to and are judged
solely by the eye. This implies that the design must appear and
should be visible on the finished article, for which it is meant.
Thus, any design in the inside arrangement of a box, money purse or
almirah may not be considered for showing such articles in the open
state, as those articles are generally put in the market in the
closed state. (5) Any mode or principle of construction or operation
or any thing which is in substance a mere mechanical device, would
not be registrable design. For instance a key having its novelty
only in the shape of its corrugation or bend at the portion intended
to engage with levers inside the lock associated with, cannot be
registered as a design under the Act. However, when any design
suggests any mode or principle of construction or mechanical or
other action of a mechanism, a suitable disclaimer in respect there
of is required to be inserted on its representation, provided there
are other registrable features in the design. (6) The design should
not include any Trade Mark or property mark or artistic works as
define under the Copyright Act, 1957.
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5. Can stamps. Labels, tokens, cards, be considered
an article for the purpose of registration of Design?
No. Because once the alleged Design i.e., ornamentation is removed
only a piece of paper, metal or like material remains and the
article referred ceases to exist. Article must have its existence
independent of the Designs applied to it. [Design with respect to
label was held not registrable, by an Order on civil original case
No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to
an article should be integral with the article itself.
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6. When does the Applicant for Registration of Design
get the registration certificate?
When an application for registration of a Design is in order, it is
accepted and registered and then a certificate of registration is
issued to the applicant.
However, a separate request should be made to the Controller for
obtaining a certified copy of the certificate for legal proceeding
with requisite fee.
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7. What is a Register of Designs?
The Register of Designs is a document maintained by The Patent
Office, Kolkata as a statutory requirement. It contains the design
number, class number, date of filing (in this country) and
reciprocity date (if any), name and address of Proprietor and such
other matters as would affect the validity of proprietorship of the
design and it is open for public inspection on payment of prescribed
fee & extract from register may also be obtained on request with the
prescribed fee.
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8. What is the effect of registration of design?
The registration of a design confers upon the registered proprietor
'Copyright' in the design for the period of registration.
'Copyright' means the exclusive right to apply a design to the
article belonging to the class in which it is registered.
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9. What is the duration of the registration of a
design? Can it be extended?
The duration of the 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-3 accompanied by a
fee of Rs. 2,000/- to the Controller before the expiry of the said
initial period of Copyright.
The proprietor of a design may make application for such extension
even as soon as the design is registered.
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10. What is the date of registration?
The date of registration except in case of priority is the actual
date of filing of the application. In case of registration of design
with priority, the date of registration is the date of making an
application in the reciprocal country.
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11. Is it possible to re-register a design in
respect of which Copyright has expired?
No. A registered design, the copyright of which has expired cannot
be re-registered.
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12. How one can ascertain whether registration
subsists in respect of any design?
For ascertaining whether registration subsists in respect of a
design, a request should be made to the Patent Office, Kolkata. If
the serial number of the registered design is known, the request
should be made on Form 6, otherwise on Form 7, together with fee of
Rs. 500/- or Rs. 1,000/- respectively. Each such request should be
confined to information in respect of a single design.
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13. What is piracy of a Design?
Piracy of a design means the application of a design or its
imitation to any article belonging to class of articles in which the
design has been registered for the purpose of sale or importation of
such articles without the written consent of the registered
proprietor. Publishing such articles or exposing terms for sale with
knowledge of the unauthorized application of the design to them also
involves piracy of the design.
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14. What is the penalty for the piracy of a
registered Design?
If anyone contravenes the copyright in a design he is liable for
every offence to pay a sum not exceeding Rs. 25,000/- to the
registered proprietor subject to a maximum of Rs. 50,000/-
recoverable as contract debt in respect of any one design. The
registered proprietor may bring a suit for the recovery of the
damages for any such contravention and for injunction against
repetition of the same. Total sum recoverable shall not exceed Rs.
50,000/-as contract debt as stated in Section 22(2)(a). The suit for
infringement, recovery of damage etc should not be filed in any
court below the court of District Judge.
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15. Is marking of an article compulsory in the cases
of article to which a registered design has been applied?
Yes, it would be always advantageous to the registered proprietors
to mark the article so as to indicate the number of the registered
design except in the case of Textile designs. Otherwise, the
registered proprietor would not be entitled to claim damages from
any infringer unless the registered proprietor establishes that the
registered proprietor took all proper steps to ensure the marking of
the article, or unless the registered proprietor show that the
infringement took place after the person guilty thereof knew or had
received notice of the existence of the copyright in the design.
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16. Can the Registration of a Design be cancelled ?
The registration of a design may be cancelled at any time after the
registration of design on a petition for cancellation in form 8 with
a fee of Rs. 1,500/-to the Controller of Designs on the following
grounds:
1. That the design has been previously registered in India or
2. That it has been published in India or elsewhere prior to date of
registration or
3. The design is not new or original or
4. Design is not registrable or
5. It is not a design under Clause (d) of Section 2.
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17. Is it mandatory to make the article by
industrial process or means before making an application for
registration of design ?
No, design means a conception or suggestion or idea of a shape or
pattern which can be applied to an article or intended to be applied
by industrial process or means. Example- a new shape which can be
applied to a pen thus capable of producing a new appearance of a pen
on the visual appearance. It is not mandatory to produce the pen
first and then make an application.
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18. Why is it important for filing the application
for registration of design at the earliest possible ?
First-to-file rule is applicable for registrability of design. If
two or more applications relating to an identical or a similar
design are filed on different dates only first application will be
considered for registration of design.
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19. Can the same applicant make an application for
the same design again, if the prior application has been abandoned ?
Yes, the same applicant can apply again since no publication of the
abandoned application is made by the Patent Office, provided the
applicant does not publish the said design in the meanwhile.
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20. How to get information on registration of design
?
After registration of designs the most relevant view(s) of the
article alongwith other bibliographic data will be available in the
official gazette, which is being published on every Saturday.
However, such provision cannot be implemented at this stage due to
insufficient infrastructure.
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21. Whether it is possible to transfer the right of
ownership ?
Yes, it is possible to transfer the right through assignment,
agreement, transmission with terms and condition in writing or by
operation of law. However, certain restrictive conditions not being
the subject matter of protection relating to registration of design
should not be included in the terms and condition of the
contract/agreement etc. An application in form-10, with a fee of Rs.
500/- in respect of one design and Rs. 200/- for each additional
design, for registration of the transfer documents is required to be
made by the beneficiary to the Controller within six months from the
date of execution of the instruments or within further period not
exceeding six months in aggregate. An original/notarized copy of the
instrument to be registered is required to be enclosed with the
application.
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22. What is meant by priority claim ?
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.
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23. How it is possible to restore the lapse design
due to non-payment of extension fee within prescribed time ?
A registration of design will cease to be effective on non-payment
of extension fee for further term of five years if the same is not
paid before the expiry of original period of 10 years. However, new
provision has been incorporated in the Act so that lapsed designs
may be restored provided the following conditions are satisfied:
1. Application for restoration in Form-4 with fee of Rs. 1,000/- is
filed within one year from the date of lapsed stating the ground for
such non-payment of extension fee with sufficient reasons.
2. If the application for restoration is allowed the proprietor is
required to pay the extension fee of Rs. 2,000/- and an additional
fee of Rs. 1,000/- and finally the lapsed registration is restored.
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24. Can the name, address of proprietor or address
for service be altered in the register of design?
Name of the registered proprietor, address or address for service
can be altered in the register of designs provided this alteration
is not made by way of change of ownership through conveyance i.e.
deed of assignment, transmission, licence agreement or by any
operation of law, for which reference may be made to the answer
against Q. 21. Application in form-22 with a fee of Rs. 200/- should
be filed to the Controller of Designs with all necessary documents
in support of the application as required.
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25. Are the registered designs open for public
inspection ?
Yes, registered designs are open for public inspection only after
publication in the official gazette on payment of prescribed fee of
Rs. 500/- on a request in Form-5.
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26. Can the application for registration of design
be filed by the applicant himself only or through a professional
person ?
The application for registration of design can be filed by the
applicant himself or through a professional person (i.e. patent
agent, legal practitioner). However, for the applicants not resident
of India an agent residing in India has to be employed.
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27. How does a registration of design stop other
people from exploiting ?
Once a design is registered, it gives the legal right to bring an
action against those persons (natural/legal entity) who infringe the
design right, in the Court not lower than District Court in order to
stop such exploitation and to claim any damage to which the
registered proprietor is legally entitled. However, it may please be
noted that if the design is not registered under the Designs Act,
2000 there will be no legal right to take any action against the
infringer under the provisions of the Designs Act, 2000.
The Patent Office does not become involved with any issue relating
to enforcement of right accured by registration, similarly The
Patent Office does not involve itself with any issue relating to
exploitation or commercialization of the registered design.
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28. What are the important criteria for determining
a "set of article" ?
If a group of articles meets the following requirements then that
group of articles may be regarded as a set of articles under the
Designs Act, 2000:
a. Ordinarily on sale or intended to be used together.
b. All having common design even though articles are different (same
class).
c. Same general character.
Generally, an article having the same design and sold in different
sizes is not considered as a set of articles. Practical example:
"Tea set", "Pen set", "Knife set" etc.
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29. What is an artistic work which are not subject
matter of registration ?
An artistic work as defined under Section 2(c) of the Copyright Act,
1957 is not a subject matter for registration which reads as
follows:
"Artistic works" means: -
i. A painting, a sculpture, a drawing (including a diagram, map,
chart or plan) on engraving or a photograph, whether or not such
work possesses artistic quality.
ii. An work of architecture and
iii. Any other work of artistic craftsmanship.
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30. What is meant by classification of goods
mentioned in the Third Schedule ?
In the third Schedule of Design Rules, 2001 the classification of
goods has been mentioned. The classification is based on Locarno
Agreement. Only one class number is to be mentioned in one
particular application. It is mandatory under the Rules. This
classification has been made on the basis of Articles on which the
design is applied.
Practical Example: If the design is applied to a toothbrush it will
be classified under class 04-02. Similarly if the design is applied
to a calculator, it will be classified in class 18-01. Subsequent
application by the same proprietor for registration of same or
similar design applied to any article of the same class is possible,
but period of registration will be valid only upto period of
previous registration of same design.
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31. What is meant by Property mark as per the Indian
Penal Code
(Sec. 479) ?
A mark used for denoting that movable property belongs to a
particular person is called a property mark. It means that marking
any movable property or goods, or any case, package or receptacle
containing goods; or using any case, package or receptacle, with any
mark thereon.
Practical example: The mark used by the Indian Railway on their
goods may be termed as a Property Mark for the purpose of easy
identification of the owner.
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