Registration of Design

Registration of Design
05 August 2020

Registration of Design

In a layman’s language, the word design means ‘a plan or drawing produced to show the look and function or workings of a building, garment, or other objects before it is made.’ or ‘a decorative pattern’. Further, as per the Design Act, 2000, it means:

  1. the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article, which in the finished article appeal to and are judged solely by the eye;
  2. whether in two dimensional or three dimensional or in both forms,
  3. shall be capable of being a product of industrial process or means, whether manual, mechanical or chemical, separate or combined.

However, it does not include any mode or principle of construction or any trademark or property mark or artistic work as a trademark or artistic work can be registered under Trademark Act or Copyright Act whatsoever may be.

The registration and protection of industrial designs in India are administered by the Designs Act, 2000, and corresponding Designs Rules, 2001 which came into force on 11th May 2001 repealing the earlier Act of 1911. The Design Rules, 2001 was further amended by Designs (Amendment) Rules 2008 and Designs (Amendment) Rules 2014. The last amendment in Designs Rules came in to force from 30th December 2014, which incorporates a new category of applicants as small entities in addition to a natural person and other than a small entity.

The industrial design recognizes the creation of new and original features of new shape, configuration, surface pattern, ornamentations and composition of lines or colors applied to articles which in the finished state appeal to and are judged solely by the eye.

Essential requirements for registration

A design should:

  1. Be new or original
  2. Not be disclosed to the publication in tangible form or by use or in any other prior to the filing date, or where applicable, the priority date of the application for registration.
  3. Significantly distinguishable from known design or a combination of known designs
  4. Not comprise or contain scandalous or obscene matter
  5. Not be a mere mechanical contrivance.
  6. Be applied to an article and should appeal to the eye
  7. Not be contrary to the public order
Who can be the Applicant?

The following can be the applicant:

  1. an author of design,
  2. a person who has acquired the design,
  3. a person for whom the design has been developed by the author, or
  4. a person on whom the design has devolved
What is the Basic Registration Procedure?

Step 1: Finding out whether any registration already exist

The Design office can assist you to search whether the design has been previously registered or not. For the same, an application under Form No. 6 with requisite fees needs to be filed.

Step 2: Preparing a representation of the design

This is the most important step and a procedure that needs to be done very meticulously as it is observed that 90% of the applications are objected to formality issues when the one is not able to explain its design properly. It should be the exact representation of the article on which the design has been applied. Under this, we would have to include:

A statement of novelty i.e. the innovative feature in the design.

Disclaimer i.e. in case anything on design is likely to be confused by a trademark or contains words, letters, numerals, etc. over which exclusive claim is not being made is to be mentioned specifically.

Step 3: Identifying the class of design

Designs are required to be categorized in separate classes in order to provide for systematic registration. There are 32 classes in all out of which you have to opt-in which class your design is falling into.

Step 4: Claiming a priority date

If you have applied for protection of the design in convention countries or countries which are members of inter-governmental organizations, you can claim registration of the design citing a priority date in India. Provided such an application is made within six months from the date of filing of the application in such a convention country.

Step 5: Filing of application and payment of Fee

The application for design shall be filed in Form I along with prescribed fees of Rs. 1,000/- (for natural Person) and Rs. 4,000/- (For other than natural Person), representation sheet and power attorney (in case application is filed through a patent agent or legal practitioner).

Step 6: Complying with objections (if any)

If the Design Office seeks additional information or clarifications after preliminary examination, please ensure that these are provided promptly or maximum within three months from the date of communication of the statement of objections or else, the application shall be treated as abandoned.

Step 7: Registration and Publication

Once an application is registered, it is published in the Patent Office Journal ordinarily within one month and is open for public comments for the next three months. Upon registration, the Controller issues a certificate of registration to the proprietor of the design.

Documents required
  1. General Power of Attorney given to the agent duly signed by the proprietor, partner or one of the Directors of the company
  2. Four copies of Representation of the design on A4 size paper which shall be exactly similar drawings, photographs, tracings, or other representations of the design.
  3. Documentary proof of Priority (if any) (i.e. any previous registration or application for registration)
  4. List of countries to claim the priority, if any, where the application/applications for design has/ have been filed, along with the date and application number.
Information required
  1. The name, address, and nationality of the Applicant. If the Applicant is not a natural person the legal status and the place of incorporation
  2. Name of the article to which the design is to be applied.
  3. A brief statement of the novelty one claims for his design
  4. Class of the article embodying the design
  5. Name(s), age, and address (es) and nationality (ies) of the Applicant/s whether they are partners or directors of the firm/company.
  6. Name, address, designation, and nationality of the person who signs the General Power of Attorney
Benefits of Design Registration

The registration of a design confers upon the registered proprietor the exclusive right to apply a design to the article in the class in which the design has been registered.

A registered proprietor of the design is entitled to better protection of his intellectual property. He can sue for infringement if his right is infringed by any person. He can license or sell his design as legal property for consideration or royalty. Registration initially confers this right for ten years from the date of registration. If the fee for extension is not paid for the further period of registration within the period of initial registration, this right will cease. There is provision for the restoration is filed within one year from the date of cessation in the prescribed manner.