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 object before it is made.’ or ‘a decorative pattern’. Further, as per the Design Act, 2000, it means:
♠ 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;
♠ whether in two dimensional or three dimensional or in both forms,
♠ 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 trade mark or property mark or artistic work as trademark or artistic work can be registered under Trademark Act or Copyright Act, whatsoever may be.
Now in this article, let us understand some basics about registration of Designs and its related frequently asked questions (FAQs):
WHO CAN BE THE APPLICANT?
The following can be the applicant:
- an author of design,
- a person who has acquired the design,
- a person for whom the design has been developed by the author, or
- a person on whom the design has devolved
WHAT IS THE BASIC REGISTRATION PROCEDURE?
Step 1: Finding out whether any registration already exist
The Designs office can assist you to search whether the design has been previously registered or not. For the same, 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 on 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 application is made within six months from the date of filing of application in such 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/- (forNatural 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 next three months.Upon registration, the Controller issues a certificate of registration to the proprietor of the design.
FREQUENTLY ASKED QUESTIONS (FAQs)
1. What is the duration of the registration of a design? Can it be extended?
The duration of registration of design is initially ten years from the date of registration. However, it can be extended by a further period of five years on an application to be made before the expiry of initial ten years.
2. Is marking of an article compulsory in the cases of article to which a registered design has been applied?
Yes, it would always be preferable to mark “Registered” or “REGD”, “RD” and application number as in case of non-marking, the registered proprietor would not be entitled to claim damages from any infringer.
3. 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 capable to be applied by industrial process or means and thus, it is not mandatory to produce the article first and then make an application.
4. Is it possible to oppose a design which has been published in the journal?
Yes, it is possible to oppose a design within three months of its publication in the journal. Rest proper lengthy legal procedure is prescribed for the same in the Designs Act, 2000 that shall be discussed further in another article.
5. Can you give some examples of designs that are non-registrable?
An illustrative list of non-registrable designs is as under:
i. book jackets, calendars, certificates, forms and documents.
ii. dress making patterns, greeting cards, leaflets, maps and plan cards.
iii. post cards, stamps and medals.
iv. labels, tokens, cards and cartoons.
On conclusion, I would like to highlight that it is always important to remember that 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 and further that, a design isonly and only capable of being registered only if it is new or original.
{The author i.e. Kajal Goyal is a Company Secretary in Practice at Kajal Goyal and Associates and can be reached at (M) 9999952595 and (E) cskajalgoyal@gmail.com}
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