What is a Design?
Design means only the features of shape, configuration, pattern or ornament or composition of lines or color 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 of construction or any thing which is in substance a mere mechanical device and does not include any trade mark, as defined 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.
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.
What is the object of Design Registration in India?
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.
Can stamp, 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. So, the Design as applied to an article should be integral with the article itself.
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.
What is a Register of Designs in India?
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. It is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.
What is the effect of design registration in India?
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.
What is the date of registration?
The date of design registration in India, 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.
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.
How can one 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.
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 the registered proprietor shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.
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 pen on the visual appearance. It is not mandatory to produce the pen first and then make an application.
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.
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.
How to get information on registration of design?
After registration of design, the most relevant views of the article along with 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.
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-l0, 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 in the register of design is required to be enclosed with the application.
What is meant by priority claiming?
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 six months apply for protection in other contracting states, later application will be regarded as if it had been filed on the same day as the first application.
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, license agreement or by any operation of law.
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.
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 accrued by registration. Similarly the Patent Office does not involve itself with any issue relating to exploitation or commercialization of the registered design.
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) A work of architecture and
(iii) Any other work of artistic craftsmanship.
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 & subclass 04-02. Similarly, if the design is applied to a calculator, it will be classified in class 18 & subclass 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 the period of previous registration of same design.
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.
Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.