The Designs Act, 2000, was made effective from May 11, 2001, and the Designs Rules, 2001 govern India's registration of designs. According to the Act, the design registration protects the features of shape, pattern, configuration, ornamentation, or composition of some lines or colours applied to the articles.
Since a design registration tries to protect only the design's visual appeal, it does not include any scope or feature that is a mode of construction or a mere mechanical device or any artistic work that is covered under the Copyright Act or any trademark included under the Trademarks Act.
Moreover, each design registration is directed towards a single class of articles, the type that is selected based on a classification system specified in the third schedule of the Designs Act. The classification system is completely based on the International Classification system.
A design registration exists typically for an initial period of ten years from the date of registration that can be further extended for five years on request. The date of registration is same as the date of application for registration except in case of an application that also claims priority from an application filed previously in a convention country. The date of registration is the same as the date of filing of the priority application.
The design registration applications must be filed with the Office of the Controller General of Patents, Designs and Trade Marks at Kolkata under the Department of Industrial Policy and Promotion in the Ministry of Commerce and Industry. This office conducts an investigation and grants the registration if the application meets all formal and substantive requirements specified in the Designs Act. The applicant is offered with sufficient opportunity, including a hearing, to amend the application within the limits that are allowed for confirmation of the registration requirements.
What is the Need for Design Registration?
Design registration protects counterfeiting of the product by complying with the Designs Act, 2000 at the Office of Controller General of Patents, Designs, and Trademarks. As prescribed in the Act, a design of a product can be registered if it has a new shape, configuration, pattern, composition of lines, ornament, or a particular combination is applied. For making a design valid for registration, it must be new and original, which has been created through an industrial process.
The primary purpose of registration is to provide the owner of the design exclusive rights to exploit the design and then use it for commercial purposes. By merely filing an application does not guarantee design registration, the registrar considers various facts before allowing it. Hence, it is suggested to seek professional assistance in the process of applying for design registration as the experts will ensure that the application is drafted in a better way. Your application's status needs to be checked periodically, hence getting professional help from Enterslice can sort out your requirement as well.
What are the Criteria for Design Registration?
The design needs to be registered and protected under the Design Act, 2000 needs to fulfil the following essential elements:
- Original and New Design: This specifies that design must not be previously used or published in any country before the date of application or design registration.
- The core of the design is the features that are represented by the shapes, configuration, patterns, composition, or ornamentation that applies to an article.
- The designs need not only be appreciated with the eyes. The process or method of creation and application is entirely irrelevant.
- It should not include artistic works, property marks, or trademarks.
- There must be significant differences between your design and the other designs that have already been registered. Alike designs or similar designs, even if it is slightly different does not qualify to be registered.
What Is the Procedure for a Design registration?
The first point to be noted is that the application for design registration can be applied to five different authorities:
- Controller Designs Patent Office in Kolkata
- Patent Office in Delhi
- Patent Office in Ahmadabad
- Patent Office in Mumbai
- Patent Office in Chennai
Whenever an application is submitted to any one of the four offices in Delhi, Mumbai, Chennai, and Ahmadabad and is rerouted to Kolkata's head office, the following is the application procedure for filing of the design registration:
- In Form-1 the application must be filed along with the following documents:
a) Name of the Applicant
b) Address of the applicant
- Nationality of the Applicant
a) The applicant is not a natural person. For example, a company, the information regarding the place of incorporation, and the legal status of the entity must be included.
b) The required application fee.
- The class and sub-class of the article under the Locarno Classification embodying the design.
- The name of the article for which the design applies.
- Representation of the design: In case the design is two dimensional, two copies of the plan need to be submitted. Further, the applicant also needs to highlight the design's unique features that differentiate from any other existing models.
- In case the application to register the design in more than one class is made, each level of registration must have a separate application.
- Statement of disclaimer or novelty needs to be attached to each representation with regard to the mechanical processes, numbers, trademarks, letters, etc. It must also be endorsed and duly signed and dated on each representation by the applicant or the authorized person on behalf of the applicant.
- After submitting the application, the patent office examines the application and then raises objections if there is any. Upon the clearance of all the objections, the design must be granted a copyright certificate by the patent office.
- The design registration is valid for ten years from the date of the registration.
- The registration period can be extended by another five years before the expiry of the first ten year period by submitting the application via Form-3 and paying a fee of amount Rs. 2000.
What are the Documents Needed for Design Registration?
The following documents are needed for design registration:
- A duly well-certified copy of the original or certified copies of the extracts from all disclaimers.
- All Affidavits.
- Proper Declarations.
- Any other public documents can be made available on the payment of a fee.
You must ensure to file the affidavit in the paragraph form. It should consist of a declaration of truth and verifiability. According to the fourth schedule, the controller regulates the costs involved in the process of design registration.
Categories of Applicant for Design Registration
The Design (Amendment) Rules, 2014 had introduced two types of applicants:
- Natural Person; and
- Other than a natural person.
The importance of the applicants' classification is the different fee structures imposed on the applicant depending upon the category they fall under.
Under the specified category of ‘Other than a natural person’ there are two sub-categories:
- Small Entity
- Others except for a small entity
The benefits received by small businesses are a reduction in the fee that must be paid while applying for design registration. The primary advantage of a design registration is that the registration certificate holder has the legal right to restrict any other person from using the design without his permission. Whenever a third party uses the design without knowing the holder of the certificate, the holder of the certificate may claim the damages in the court of law. This permits him to get the compensation from the person for violating his right over the design usage.
What are the Aspects of Design Registration?
The aspects of the design registration have been enumerated below:
File in a Professional Manner
It is important to file professionally for the Design Registration since it is the proper way to ensure that the design is protected appropriately. You can do this by taking the help of professionals in Enterslice. The professionals will help in design registration by filling a professional application and addressing all the aspects of the Design Act.
Design registration is a complicated process which is generally performed by the registrar. The registrar examines the facts and premises of all cases. Hence, with professional help, it is easy to file for the design registration application. Knowledge, expertise, and experience of the professionals make the registration procedure easy.
After filing of the application for design registration, it becomes a duty to keep a check on the status of the application. A design registration application usually goes through much time-bound response or action from the applicant.
The patent office then creates a list of all the registered designs. The fundamental purpose behind the list is to make the competitors aware of the registration of a design and prevent counterfeiting. In case of any imitation, the registered design owner has all the legal right to take action under the Design Act.
The Design Act legally protects all the registered designs under it for a period of ten years, which is renewable by another five years.
What are the Benefits of Design Registration?
The benefits of design registration have been explained below:
- A proper design makes any article or ornament attractive as well as appealing. Hence, it enhances its commercial value and, at the same time, increases the marketability of the product.
- Whenever a design is protected, the author can sue the person or business who has copied or imitated the design. This assures that the design of the product is authentic and original and is protected for the owner.
- Design registration protects the image or diagrammatic representation of products or packaging. Many companies depend on copyright and provide themselves with proper coverage. However, in case of conflict, the other party contesting the validity of copyright has to prove the same. Hence, a design registration can be regarded as the perfect alternative to prove the rights' validity.
- Whenever a designer adds something unique and creative to its product, it adds individual character to the design. The uniqueness has its approach in the market that helps form its own place between all the existing products.
What is the Distinction between Trademark Registration and Design Registration?
A Trademark is a symbol of trade. The symbol can be in the form of a logo or word. Trademark registration protects such symbols from imitation.
A particular diagrammatic representation that helps in preventing the designs.
A trademark can be in the form of word, logo, mark, or shape. It is not necessary to keep the brand innovative.
Design is a step ahead of representation; hence it is necessary to make it more innovative and unique.
Trademark protection is provided so that no other company will use the same mark and in case of any infringement trademark holder has the authority to sue the company.
The purpose of Design Registration is to safeguard the product. It covers all the aspects of the product: how it looks and what it does.
Trademark Act 1999 protects the trademark.
Design Act 2000 protects the design.