Filing Design Applications in India
Design can be broadly described as the outer appearance or the shape of an article visible to the naked eye. In India and in most other parts of the world, a new and distinct design can be conferred Intellectual property protection as an Industrial design, provided it fulfills the parameters that have been laid down by the law for such protection. Industrial Design protection is limited to only the aesthetic appearance of an article and does not extend to its functionality.
Design is defined under Section 2(d) of Indian Designs Act, 2000 as “features of shape and configuration, ornamentation, pattern or combination of lines or colors applied to an article whether two dimensional or three dimensional 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.”
Design protection gives its proprietor an exclusive right to exclude others from using and manufacturing the design for which protection is sought. It also gives the registered owner a right to file a suit for infringement in case of infringement.
One should bear in mind that design protection is given only to the exact appearance of an article and not its functionality. The article to be registered should have an independent existence. The design to be registered should form an integral part of the article and it should be capable of being made and sold separately. For example, the designs of buildings, architecture, paintings and sculptures may not be ideal to seek design protection for since these cannot be produced on an industrial scale. However, a unique design for a door handle or for a brick used for construction of a building are examples of designs that are capable of being protected as Industrial designs.
The requirements for an article to be registered include the following:
- The design should be new and original.
- It should not be available to the public either in India or any other country by way of publication or use before the filing date. Such an article will not be granted registration in India.
- The article should be capable of being manufactured and sold separately.
- The article should not involve any mode or principle of construction which is a mere mechanical process i.e., the shape in which all the features of design are dictated solely by the function it performs.
- The article in its finished state should have aesthetic appeal and judged solely by the eye.
- The design so applied should be used for commercial purposes and increase the marketable value of the article.
- It should not be against the morality and public order of the country. It should not contain any scandalous or obscene matter.
- It should not contain any property mark as defined under IPC, any trademark as defined under Trade and Merchandise Marks Act, 1958 or any artistic work as defined under Indian Copyright Act, 1957.
- Any design which is not merely a mechanical contrivance and meets the criterion for registration apart from functionality may qualify for design registration.
- Any trivial modifications made to an already existing design will not be granted any design registration. To obtain a design registration, the modifications should be substantial and not minimal.
Once the requirements for design protection are met, the next step would ideally be to proceed with the formalities of application for a design registration with the Controller of Designs, Kolkata. Section 5 of Indian Designs Act prescribes the procedure for obtaining a design registration. The application for design registration should contain the following:
- A duly executed Power of Attorney.
- Form 1– containing the name of the article, class and sub-class under which the design is to be registered. An article can be registered in more than one class of registration under the Locarno Classification of Designs which has 31 main classes and various sub-classes. The classification of designs is prescribed under the Third schedule of Indian Designs rules, 2001.
- Representation sheets– containing the name of the article, statement of novelty claimed in the design, images, drawings or photographs of the article from different views i.e., perspective view, front view, rear view, top view, bottom, right side view and left side view.
The Indian designs office facilitates online filing of design applications, which can be achieved by submission of all the relevant documents online at www.ipindiaonline.com. Upon payment of the applicable fee for filing, the filed application will be given a design application number. The applicable statutory fee for initiating a design filing in India is:
- Rs 1000/- Natural person.
- Rs 2000/- Small entity.
- Rs 4000/- other than Natural person.
Once the payment and other formalities are satisfied, the application undergoes examination. The examiner determines whether the application is in prescribed format, containing all the formal requirements, the images, views, and the statement of novelty and title of the article. If there are any deficiencies in the application after a formal examination, the controller issues a First Examination Report stating the objections to be complied with by the applicant. The applicant usually has a response time of 6 months from the date of filing of the applications.
If the examiner thinks that the applicant has responded to all the objections, he may register, publish and issue an Original Design Certificate for that design. However if the examiner is not convinced with the response sent by the applicant, he may issue a notice of hearing to the applicant for which the applicant has to appear in person.
Once the registration of the design is complete, the Original Design Certificate is issued to the applicant. The applicant who has obtained a design registration may now mark his articles with the words “REGISTERED”, “REGD” or “RD”.
Registration of designs not only prevents infringement but also increases the market value of an article. While the tenure of design protection is less when compared to other forms of intellectual property protection, it is a valuable protection to seek especially in product based industries thriving on new designs such as toy companies, cell phone manufacturers, jewellery designers, car manufacturers and so on, as these industries are ever evolving.
Authored by Shravani Damodara and Supriya Ramacha