In general, a design is the outer outlook of an article that a naked eye can see. The definition of a Design as per the act provides that a design means only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or 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 of construction or anything which is in substance a mere mechanical device, and does not include any trademark or property mark or artistic work.
The Design Law in India is governed by the Designs Act, 2000. The old Design Act, 1911 was amended in 2000 to incorporate the amendments which were rendered necessary because of the tremendous progress made by India in the field of Science and Technology. The said Act was amended with a view to provide more protection to registered designs and to promote design activity in order to promote design element in an article of production. The Rules were last amended in the year 2008.
The Indian Intellectual Property Office (IPO) is the primary office, which comprises of the Trade Marks Registry, The Patent Office, and The Designs Office in India. The Designs Office has its head office at Kolkata and the other Branches of the Patent Office only function to accept design applications but all technical examination is conducted at the Kolkata Office.
Salient Features Of Indian Designs Law & Practice
A status search may be conducted at the IPO website at http://ipindiaonline.gov.in/designapplicationstatus/designstatus.aspx
A design application may be filed in India in the form of an ordinary application or a convention application within 6 months of the priority date. It is possible to register a new or original design in India and original means originating from the author of such design and includes the cases which though old in themselves yet are new in their application.
Formal Requirements & Examination
The Indian Designs Office has a detailed manual for Formal Requirements and Examination. The same is available at http://ipindia.nic.in/manuals/Manual_DesignsPractice_and_Procedure_31March2011.pdf
The Designs Office accepts drawings, photographs, tracings, computer graphics or other representations of designs or even specimens. The Applicant is also required to file a statement of novelty with the application.
The Designs Office does not allow in the representation of article:
- Sectional Views
- Descriptive Matter
- Reference numerals
The new Manual states that Dotted lines may be allowed in an application and this is a new practice in India, as dotted lines were not allowed earlier even to show matter not claimed as a part of Designs.
An examination Report is usually issued within 3 months from date of application and a response needs to be filed within 3 months from the date of examination report (extendable).
For the purposes of design registration, India follows LOCARNO Classification and articles are divided into 31 classes and class 99.
When a Design Application is for an article with multiple utilities, the application may be made with depiction of an article in any one or more of the utilities. It is advisable to file two applications in different classes for better protection.
Detailed LOCARNO classification is available at http://www.wipo.int/classifications/nivilo/locarno/index.htm?lang=EN
Any person who has duly filed a design application in one of the convention countries, such person or his successor in title, shall enjoy, for the purpose of filing in India or other member countries, a right of priority for a period of 6 months.
Accordingly, any person may claim priority of a foreign design application within 6 months of the said foreign application date. Similar priority rights are available to Indians for foreign design applications inconvention countries.
In case an applicant in India claims a priority, it is a mandatory requirement to file a certified copy of priority document with English Translation within 3 months of Indian filing date. There is no extra cost as long as these documents are filed within said 3 month period, except small official fee.
A Design is published after registration in the Official Gazette and is open to Public Inspection thereafter.
Registration, Duration & Renewal
A Design is registered as of the date of making the application for registration of that design and the registration is valid for 10 years and may be renewed for a further period of 5 years.
It takes about 6 – 10 months to obtain a design registration in India and the time frame may vary depending on complexity of the proceedings.
Unauthorised application of the features of a registered design to any article in any class of articles in which the design is registered amounts to piracy of the registered design.
Action for piracy of design may be instituted in a District Court or High Court having jurisdiction.
A registered design is assignable and transmissible and the particulars of the same must be entered in the Register of Designs to entitle the person in whose favour the design is assigned or transmitted.
A cancellation action may be filed by any person interested for cancellation of registration of the design on the following grounds:
- Design has been previously registered in India; or
- It has been published in India or in any other country prior to the date of registration; or
- The design is not new or original design; or
- The design is not registrable under this Act; or
- It is not a design as defined under the Act.
The cancellation is to be filed before the Designs Office and the decision is appealable before the High Court. The Controller may also refer a cancellation petition to the High Court for decision.
Name, address and nationality of the Applicant;
Name of the article in respect of which the design is to be applied;
International Class as per Locarno Classification;
Statement of Novelty stating the features in which novelty is claimed;
Different views of the article (such as front, back, side, top, bottom, perspective etc.);
Priority application number, country and date, if any;
Power of Attorney (may be filed within 2 months at no extra costs);
Certified copy of priority documents, if any (with English translation), (may be filed within 3 months; no extra costs).