What is Design?
“Design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, 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; but does not include any mode or principle of construction or anything which is in substance a mere or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 the Copyright Act, 1957 (14 of 1957).
The outward appearance of a product or part of it, resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation.
New or Original Designs:
A design to be registrable must be new or original. Original means originating from the author of the design. New applications of old designs are registrable. Designs which are not new or original or disclosed to the public anywhere in India or in any other country or not significantly distinguishable from known designs or combinations of known designs or comprising scandalous or obscene matter are not registrable.
This Indian legal position is more on the lines excluding non-registrable designs by identifying the categories of designs not registrable rather than positively reciting what are registrable designs.
What is the object of registration of Designs?
Object of the Designs Act is to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.
What is a product?
A product can be any industrial or handicraft item including packaging, graphic symbols and typographic typefaces but excluding computer programs. It also includes products that are composed of multiple components, which may be disassembled and reassembled
Why protect your designs?
The design or shape of a product can be synonymous with the branding and image of a company and can become an asset with monetary value that could increase. If you do not apply for protection others may benefit from your investments.
What is a utility model?
A utility model is an exclusive right granted for an invention similar to a patent. It is sometimes referred to as a petty patent or an innovation patent. It may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof.
What is the difference between a Patent and a Design?
A patent covers the function, operation or construction of a new creation. To be patentable, a function must be innovative, have an industrial application and be described in such a fashion that a man of the art is capable of reproducing the process.
A design covers the appearance only of a product. A design cannot protect the function of a product.
If protecting a product with both a patent and a design registration (i.e. a new product can perfectly include both new functions and a new appearance), the timing of the applications will be crucial, as it must be ensured that the publishing of one or other of the rights does not destroy the novelty of the other application.
Can stamps. Labels, tokens, cards, be considered an article for the purpose of registration of Design?
No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, and High Court]. So, the Design as applied to an article should be integral with the article itself.
What is meant by Property mark as per the Indian Penal Code (Sec. 479)?
A mark used for denoting that movable property belongs to a particular person is called a property mark. It means that marking any movable property or goods, or any case, package or receptacle containing goods; or using any case, package or receptacle, with any mark thereon. Practical example: The mark used by the Indian Railway on their goods may be termed as a Property Mark for the purpose of easy identification of the owner.
When does the Applicant for Registration of Design get the registration certificate?
When an application for registration of a Design is in order, it is accepted and registered and then a certificate of registration is issued to the applicant.
However, a separate request should be made to the Controller for obtaining a certified copy of the certificate for legal proceeding with requisite fee.
Design Registration System:
Most countries provide for national design laws providing for a system to administer the registered designs. The process typically involves filing applications for registration of designs in the prescribed format, remedying the objections, if any, by the Design Examiner and getting the design granted. India has adopted a new classification that conforms to the Locarno Classification of industrial designs.
What is a Register of Designs?
The Register of Designs is a document maintained by The Patent Office, Kolkata, as a statutory requirement. It contains the design number, class number, date of filing (in this country) and reciprocity date (if any), name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design. It is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.
What is the effect of registration of design?
A5: The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.
What is the date of registration?
The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.
What is the duration of the registration of a design? Can it be extended?
The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date.
This initial period of registration may be extended by further period of 5 years on an application made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Copyright.
The proprietor of a design may make application for such extension even as soon as the design is registered.
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 intended to be applied by industrial process or means. Example – a new shape which can be applied to a pen, thus capable of producing a new pen on the visual appearance. It is not mandatory to produce the pen first and then make an application.
Why is it important for filing the application for registration of design at the earliest possible?
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.
Can the same applicant make an application for the same design again, if the prior application has been abandoned?
Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.
How to get information on registration of design?
After registration of design, the most relevant view(s) of the article along with other bibliographic data will be available in the official gazette, which is being published on every Saturday. However, such provision cannot be implemented at this stage due to insufficient infrastructure.
Whether it is possible to transfer the right of ownership?
Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc.
An application in form-l0, with a fee of Rs. 500/- in respect of one design and Rs. 200/- for each additional design, for registration of the transfer documents is required to be made by the beneficiary to the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarized copy of the instrument to be registered in the register of design is required to be enclosed with the application.
How does a registration of design stop other people from exploiting?
Once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it may please be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000.
The Patent Office does not become involved with any issue relating to enforcement of right accrued by registration. Similarly the Patent Office does not involve itself with any issue relating to exploitation or commercialization of the registered design.
What is an artistic work which are not subject matter of registration?
An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration which reads as follows: “Artistic works” means: –
(i) A painting, a sculpture, a drawing (including a diagram, map, chart or plan) or engraving or a photograph whether or not such work possesses artistic quality.
(ii) A work of architecture
(iii) Any other work of artistic craftsmanship.
Can the Registration of a Design be cancelled?
The registration of a design may be cancelled at any time after the registration of design on a petition for cancellation in Form 8 with prescribed fee to the Controller of Designs on the following grounds:
- That the design has been previously registered in India or
- That it has been published in India or elsewhere prior to date of registration or
- The design is not new or original or
- Design is not registrable or
- It is not a design under Clause (d) of Section 2.
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