Overview
If you are an unregistered brand, there is a higher risk that your products may be duplicated and sold under different trademarks or logos. To safeguard against such duplication, it is crucial to register your design. Multiple trademarks can make it challenging for consumers to recognize your products and determine whose goods they are purchasing. Registering your brand not only helps protect it from confusion but also prevents other brands from filing confusing trademark infringement lawsuits against you. Moreover, it grants you the legal authority to take action against anyone attempting to steal your design for their own profit.
Industrial designs are registered and protected through the process of Design Registration in India. This process is governed by the Designs Act of 2000 and the corresponding Designs Rules of 2001. Design registration pertains to the distinctive features of shape, configuration, patterns, or ornamentation applied to an article, which can be in two-dimensional, three-dimensional, or both formats, achieved through any manufacturing process or means.
What Do You Mean by Design Registration?
The entire procedure for Design Registration is governed by the Designs Act of 2000 and the corresponding Design Rules of 2001, which came into effect on May 11, 2001, replacing the earlier Act of 1911. The Design Rules, 2001 were later amended by the Designs (Amendment) Rules of 2008 and 2014, with the latest amendment on December 30, 2014, superseding all previous rules. This amendment introduced a new category of applicants, including small entities in addition to natural persons and entities other than small entities.
Industrial design primarily focuses on creating innovative and original features such as shape, form, surface patterns, embellishments, styles, or colors used in articles, which, when finished, appeal to and are assessed individually by the eye. The process of creating a design can be manual, mechanical, automated, or chemical. It covers features that give a unique appeal to a finished article, distinguishable solely by visual perception. However, it does not include any functional aspects, mechanical devices, registered trademarks (as defined in Section 2(v) of the Trade and Merchandise Marks Act, 1958), property marks, or artistic works (as defined under Section 2(c) of the Copyright Act, 1957).
The purpose of obtaining design registration under the Designs Act is to protect a novel or innovative design applied to a specific article through an industrial process or method. Often, consumer purchasing decisions are influenced not only by the product’s quality but also by its design, such as with mobile phones or sunglasses. The main objective of design registration is to ensure that the creator, artisan, craftsman, engineer, or designer of a unique design is not deprived of their rightful reward by copycats who might exploit the design for their products.
What Are the Eligibility for Design Registration?
The earlier Design Rules did not distinguish between different types of applicants. However, the Design (Amendment) Rules of 2014 introduced two main categories of applicants: ‘Natural Person’ and ‘Other than Natural Person.’ The ‘Other than Natural Person’ category is further divided into ‘Small Entity’ and ‘Others Except Small Entity.’ It was also specified that each of these categories would have different fee structures. Thus, the categories of design applicants with varying fees now include:
- Natural Person
- Small Entity
- Others Except Small Entity
Information Required for Design Registration:
1 Name of the Article: The specific article to which the design will be applied.
2 Novelty Statement: A brief description of the unique features claimed for the design.
3 Class of the Article: The classification of the article embodying the design.
4 Applicant Details: Names, ages, addresses, and nationalities of the applicants, specifying if they are partners or directors of a firm or company.
5 General Power of Attorney: Name, address, designation, and nationality of the individual signing the General Power of Attorney.
Who is Authorised for Design Registration?
Any proprietor (design owner) seeking to register a design that is original and has not been previously published in any country, and which does not conflict with any laws or regulations, can file an application for design registration. According to Section 2(j), the term ‘proprietor’ is defined as a person who:
- Is the author of the design
- Has acquired the design for valid consideration
- Has derived the design from the original titleholder
What is Locarno Classification Under the Design Act, 2000 ?
Under the Locarno Agreement, designs are registered across various classes based on their functionality, aiding in the efficient search and classification of industrial designs. Unlike the earlier system under the Designs Act, 1911, which categorized designs by the material of the article, the updated approach focuses on the subject matter and functionality of the design. The current system adopts the Locarno Classification System, established by the Locarno Agreement. Although India is not a signatory to the Locarno Agreement, its classification of industrial designs closely follows the Locarno Classification System.
What Are the Requirements for Design Registration?
- Novelty and Originality: The design must be new, unique, and original to be considered for registration. Designs that lack originality or uniqueness will be rejected.
- Non-Disclosure: The design must not have been disclosed to the public in India or anywhere else in the world through use, publication, or any other means prior to registration.
- Distinctiveness: The design should be clearly distinguishable from any existing registered designs or combinations of designs that are already known or disclosed to the public before the filing date.
- Exclusion of Offensive Content: The design must not contain any scandalous or obscene elements.
- Non-Functionality: The design must not include purely functional features, as the registration focuses on the aesthetic aspects.
- Exclusion of Trademarks and Artistic Works: The design must not incorporate any trademarks, property marks, or artistic works as defined under the Copyright Act.
What Items Cannot Be Registered as a Design Under Design
Act?
The following items are excluded from design registration:
-
- Publications and Certificates: Books, government forms, university certificates, sports certificates, daily calendars, holiday greeting cards, atlases, maps, and posters.
- Official Documents and Medals: Official stamps, sports and academic medals, and cinematic cartoons or other tokens.
- Mechanical and Construction Items:
- Items with a principle or method of construction.
- Mechanical objects.
- Constructed buildings and superstructures.
What Are the Types of Applications for Design
Registration?
- Ordinary Application:
- This type of application does not claim any priority from a previously filed application.
- Reciprocity Application:
- This application claims priority based on a prior application filed in a convention country.
- It must be filed in India within six months from the filing date in the convention country.
- Note that the six-month period is non-extendable
What Are the Mandatory Documents Required for Design
Registration in India?
The following documents are required to register a design in India:
- Name and Address of the Applicant: Details of the applicant, including their legal status (natural person, company, etc.).
- Start-up Certificate: If the applicant claims to be a start-up registered with the Government of India, a certificate must be filed.
- Description of the Article: The applicant must provide a description of the article along with the design application.
- Form 1: Filed in the prescribed format (as per Schedule-II of the Designs Rules).
- Representations: Representations of the design should be prepared as per Rule 12, 13, and 14 of the Designs Rules and submitted in duplicate.
- Form-21 (Power of Attorney): If filed through a patent agent or advocate, the original Form-21 (General Power of Attorney) must be submitted (as per Schedule-II). If a copy of the General Power of Attorney is filed, it should be endorsed with the design application number, corresponding to the original GPA.
- Form-24 (Small Entity Status): If claiming small entity status, this form must be filed in the prescribed format (as per Schedule-II). It should be accompanied by evidence of registration under the MSME Act, 2006 for Indian entities.
- Affidavit: An affidavit deposed by the applicant or an authorized signatory as per Rule 42 of the Designs Rules, required for foreign entities.
- Priority Document: Original priority document as per Rule 15 of the Designs Rules.
- English Translation: Authenticated English translation of the priority document if the original priority document is in a language other than English.
- Assignment: Original assignment document, if the applicant of the priority application in the convention country is different from the Indian applicant.
Explanation Related to the Documents Required for
Design Registration
DESIGN APPLICATION:
An application must be filed using Form-1, along with the prescribed fees, providing the following details:
- Full name, address, nationality of the applicant
- Name of the article
- Class number
- Address for service in India
Foreign applicants are required to provide an address for service in India, which can be the address of their agent in India. It is mandatory for foreign applicants to provide such an address, without which the Office will not proceed with the application.
The class to which the article belongs must be accurately mentioned in Form-1. As per the Designs Rules, 2001, articles are classified in the Third Schedule based on the Locarno Classification. For registering a design under more than one class, a separate application is needed for each class.
The application must be signed either by the applicant or their authorized agent/legal representative. In India, only a registered patent agent or a legal practitioner can act as an authorized agent.
If the applicant has already registered a design in another class, the registration number must be mentioned in Form-1.
DESIGN REPRESENTATION:
Two copies of the design representation must be submitted.
POWER OF ATTORNEY (POA):
A Design Application can be filed either personally by the applicant or through a patent agent/legal practitioner. If filed through a patent agent/legal practitioner, a power of authority (POA) must be submitted along with the application. A General Power of Attorney is also acceptable.
PRIORITY DOCUMENT:
For a reciprocity application, a copy of the design application filed in the Convention Country must be submitted. The copy should be certified by the Official Chief or Head of the Organization where the application was filed.
If the priority document is not submitted with the application, it may be filed within an extended period of three months. The extension may be requested by filing Form-18 along with the prescribed fee.
What is the Procedure of Design Registration in India?
The procedure for Design Registration in India is outlined in Chapter 2 of the Design Act. Here are the steps to follow for registering a design:
- Filing an Application: The initial step is to submit an application for registration at the patent office using the prescribed form and fee. Ensure all information provided is complete and accurate to expedite the process. The application must specify the class of the design and the “article” it will be applied to.
- Submission of Images/Drawings: Including images or drawings of the article is crucial for the application. To prevent complications or objections, follow these tips:
- The images must be clear and easily visible.
- Photographs should have a contrasting background.
- The design should be photographed from all angles (front, rear, top, bottom).
- Ensure the entire article is visible in the images without any parts missing.
- Examination by the Controller of Design: After submission, the application undergoes a detailed examination by the Design Office. This includes verifying formal compliances such as the applicant’s details and the appropriate classification of the article.
- Handling Objections: If objections arise, the applicant will be notified to make the necessary amendments. The applicant can respond in writing to the objections. If the response is satisfactory, the application is accepted. If objections persist, a hearing is conducted, and if unresolved, the design may be rejected.
- Publication and Validity: Once accepted, the design is published in the Official Gazette. A registered design is valid for ten years from the date of application and can be renewed for an additional five years.
- International Considerations: India is a signatory to the Paris Convention, which sets international standards for the protection of patents, trademarks, and industrial designs.
- Infringement Actions: In cases of design infringement, the owner can claim damages and seek an injunction to prevent further use of the design.
What Are the Government Fee Related to Industrial
Design Procedure?
| S.NO |
FUNCTION |
FORM NO. |
GOVT. FEE |
| 1 |
On application for registration of design under section 5 and 44 |
1 |
1000.00 |
What Are the Benefits Related to Industrial Design
Registration?
The registration of a design grants the certified proprietor the exclusive right to apply the design to articles within the registered class. A registered design owner is entitled to enhanced protection of their intellectual property.
The owner has the right to sue for infringement if their design is copied or used without permission. They can also license or sell their design as legal property in exchange for a fee or royalty.
A design is initially protected for 10 years from the date of registration. However, if the renewal fee is not paid within the prescribed time, this protection will lapse. There is a provision to file for renewal within 1 year of the cessation in the designated manner.
The design is registered by the Patent Office to inform competitors about its creation, preventing unauthorized use.
The initial 10-year exclusive right to use a registered design can be extended by an additional 5 years.
If a design is copied or used in violation of its copyright, the owner can seek legal remedies under the Designs Act. The owner may recover up to ₹25,000 in damages for infringement, with a maximum of ₹50,000 if the design is illegally copied.
Design registration provides legal protection against infringement and ensures the owner’s exclusive rights are upheld.
At Legal Tax, we ensure that you can focus on growing your business while we handle all the legal details.
Our experts will assist you in registering your design in a hassle-free manner within 2-4 months. We will prepare your design registration with minimal effort on your part. Once the application is ready, we will send you a power of attorney, allowing us to file the application on your behalf.
We will take care of filing your registration with the relevant authorities, including the Design Wing of the Patent Office. Once filed, you will receive a design number, and we will track the progress of your application.
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A ‘Design’ refers to the shape, pattern, ornament, style of lines, color, or any other artistic features of a product. It does not include any system or principles used to construct the design. Designs can be either two-dimensional or three-dimensional in nature, such as 3D wallpaper designs.
- Name and Address of the Applicant: The legal status of the applicant, whether a natural person, company, etc.
- Start-up Certificate (if applicable): If the applicant is a registered start-up with the Government of India, a certificate must be submitted.
- Description of the Article: A description of the article and its classification as per the relevant classification rules.
- Image/Drawings: An image or drawing of the article to be filed with the application.
- Other Declarations and Affidavits:
- Form 1 in the prescribed format (as per Schedule II of the Designs Rules).
- Representations should be prepared as per Rule 12, 13, and 14 of the Designs Rules and submitted in duplicate.
- Form 21 (Power of Attorney/General Power of Attorney) in original (if filed through a patent agent or advocate) (as per Schedule II).
- If the applicant submits a copy of General Power of Attorney (GPA), it should be endorsed with the design application number associated with the original GPA.
- Form 24 in the prescribed format (if small entity status is claimed) (as per Schedule II).
- Evidence of registration under the MSME Act, 2006 for Indian entities.
- An affidavit from the applicant or authorized signatory as per Rule 42 of the Designs Rules for foreign entities.
- Authenticated English translation of the Priority document (if the original priority document is in a language other than English).
- Assignment in Original (if the applicant of the priority application in the convention country is different from the Indian applicant).
When a design is registered, copyright protection is granted for a period of 10 years, which can be extended for an additional 5 years. During this time, the owner enjoys exclusive rights over the design’s value within the class in which it has been registered.
The registration of a design grants the registered proprietor the exclusive right to apply the design to the article in the class where it is registered. This ensures better protection of the intellectual property. The registered owner has the right to sue for infringement if their design is copied or used without permission. Additionally, the design owner can license or sell their design for a fee or royalty.
Initially, the design registration grants this right for 10 years from the registration date. If the fee for the extended registration period is not paid, the benefit ceases. However, a provision exists to file for a return within one year from the cessation of the registration.
The registration of a design with the Patent Office serves to inform competitors about its existence. The exclusive right to use the design for 10 years can be extended for an additional five years. If a design is copied or used in violation of its copyright, the owner may seek legal remedies under the Designs Act. The owner can recover up to ₹25,000 against the infringement, with a maximum of ₹50,000 for illegally copied designs. Design registration offers legal protection against such infringements.
Unlike copyright protection, design registration does not cover literary or artistic works such as books, calendars, stamps, etc. Additionally, applications cannot be made for designs associated with national flags, banners, or symbols of any country.
The procedure for design registration in India is outlined in Chapter 2 of the Design Act. The following steps should be followed to get your design registered:
- The first step is to file an application for registration with the patent office using the prescribed form and fee. It is crucial to provide complete and accurate information to ensure a faster processing of the application. The class in which the design is to be registered must be clearly specified, along with the “article” to which it is to be applied.
- A drawing or image related to the “article” is a necessary part of the design application. To avoid complications or objections regarding the filing image, applicants should follow the tips and guidelines provided to ensure that the image meets all required standards.
The owner of a design (including firms and corporate entities), or an assignee (either separately or jointly), in the case of a Non-Resident Indian (NRI), may appoint their lawyer or legal representative for design registration purposes.
Design registration is valid for a period of 10 years and can be extended for an additional 5 years with the payment of the necessary fees. If the extension is not completed within the required time, the design will lapse. However, it can be restored by filing a restoration application within 1 year from the date of lapse using Form 4, applicable only for non-payment of the extension fees.
Yes, an application is to be given to the Controller of Patents and Designs by
Yes, under Section 10 of the Design Act, 2000, a design registration can be cancelled if the design is found to be not original.
To qualify for design registration, the design must meet the following criteria:
- Be new, fresh, and unique.
- Not be offensive, obscene, or contrary to public order.
- Not have been disclosed to the public or published anywhere.
- Focus solely on aesthetic features, without incorporating functional or mechanical elements.
An appeal can be made to the Design Wing of the Patent Office using Form No. 6, accompanied by
