The term “design” has been defined in Section 2(d) of the Designs Act, 2000 as the features of shape, configuration, pattern, ornament or composition of lines or colours applied on an article that is either two or three dimensional or both. Such a design has to be made by any industrial process or means which may be either mechanical, manual or chemical and when finished has to be judged solely by the eye.
The objective behind protecting industrial design is to encourage creativity in the industrial and manufacturing sectors by adding commercial value to a product by making it more attractive, ultimately aiding the economic development of a country. Manufacturers as a result pay fair attention to the designs of their articles and invest substantial amounts towards its research. Thus, to ensure a fair return on their investments it becomes necessary to accord legal protection to the creation of new designs. The protection is granted in the form of registration of Industrial designs and an effective system of protection promotes fair competition and honest trade practices, encouraging creativity and producing more aesthetically pleasing products for the consumers. Now that we know why granting protection to industrial design is important, let us look at its registration process.
Criteria for design registration
Before making an application to the Controller of Designs for the registration of industrial design, we must first understand what qualifies for registration. Section 4 of the Designs Act, 2000 prohibits registration of certain designs. A design qualifies for registration if it fulfils the following criteria:
- New or Original: The design that is to be registered should be new in the sense that it has never been created or invented before. As far as originality is concerned it may be known or existing before but has been applied to a specific article for the first time. Thus, even if a design is not completely new but has been applied to a different subject matter, it will qualify for registration.
- Undisclosed to public: A design which has been disclosed to the public anywhere in India or in any other country by way of publication in tangible form or some other way before the filing or priority date of the registration application will not be registrable. There are two exceptions to this requirement:
- Confidential disclosure: If the proprietor has made a disclosure of the design before registration to a person in good faith, and such person acts in contrary to such good faith and discloses the design to other persons, then such disclosure will not amount to publication. Section 16 of the Designs act preserves and protects the proprietor’s registration in these circumstances.
- Display of design in exhibition: Section 21 of the Designs Act provides for special provisions under which the display of design in exhibition does not amount to publication of design.
- Distinctiveness: A design which is not distinctiveness or distinguishable from other known designs or combination of designs is not registrable.
- Design containing scandalous or obscene matters: If a design contains any scandalous or obscene matters then the controller may refuse registration.
- Design contrary to public order or morality: As per Section 35 of the Designs Act, 2000 if the controller believes that the design is against public order or morality, then registration may be refused.
Let us now move to the application process for registration of industrial design and how to obtain the grant of registration.
Application for registration of designs
An application for registration of design is made to the Controller of Design who refers the application for examination to an examiner to consider if it meets all the criteria for registration. The following requirements must be met to obtain registration:
- The application has to be made in the prescribed form with the required fees.
- The Representation sheet of an article should be filled with the application in duplicate. Here “Representation” stands for the exact representation of the article. The drawings, photographs, tracings or computer graphics must be exactly similar to the article for which the registration is sought. In rare cases, the controller may demand the specimen to be submitted at the time of examination.
- The applicant at the time of making the application must identify the correct class of the article. An article may be classified into thirty one classes and a miscellaneous class 99 as described in the Third Schedule of the Design Rules, 2001. A design cannot be registered in more than one class. Where a design application is made for an article with multiple utility or uses, the application may be made depicting the article with multiple uses. The applicant is such a case may apply in any one of the class of the article or multiple classes for better protection.
After the applicant applies for registration, the examiner conducts a novelty search in the available databases to determine if the design is novel and distinctive from other previously registered, used or published designs. If the design is found to be non-distinctive or not new, the examiner sends the report to the Controller along with the necessary citations.
The Controller after considering the report of the examiner grants registration if it meets all the requirements for registration of design. However, if the application includes any objection or requires an amendment then the controller shall communicate the statement of objections to the applicant and if the applicant fails to comply with the objections or fails to apply for hearing within three months from the date of communication of statement of objections, the application will be deemed as withdrawn. The objections have to be removed by the applicant before the period of six months from the date of filing of the application, however, this may extend for another period of three months if a request has been made before the expiry of six months.
Publication of registered designs
The Controller after registration of a design shall publish the particulars of the design in the prescribed manner and thereafter it will be open to public inspection.
Grant of certificate
Once the Controller is satisfied that the application meets all the formalities and criteria for registration, a certificate shall be granted to the applicant. The date of application for registration is considered the date of registration of design. Post registration, the applicant has monopoly rights in favour of the design. The registration details of the applicant is kept in the register of designs at the patent office which is situated in Delhi, Mumbai, Chennai and Kolkata however, all applications from the Delhi, Mumbai and Chennai office are transmitted to the Kolkata patent office for further processing.