In this article we will look into some of the key dos and don’ts of design registration under the Designs Act, 2000.
Over the past century, as the global markets and economies have opened up and free trade is the goal towards which all efforts seem to be directed, intellectual property has risen in terms of value and criticality as a result. The intellectual property of a business is the identity of the business today. The logo of a brand creates an association of trust and quality with the market. Patents communicate the commitment of a brand towards innovation. Copyrights speak for the creative energies of a brand. Designs relay the aesthetic philosophy of a product.
For a very long time, the design aspect of a product did not bear much importance. Design was always meant to be simple and functional. But when markets become more competitive, a number of similar products begin crowding the market making it hard for a customer to choose. Besides, there is only so much technological innovation possible at any given point of time. There has to be a general advancement in scientific research to elevate innovation to the next level. This is where design comes in.
Especially for products that are technology-heavy, design is the one factor that a layman can still find relatable. And a person always looks for something relatable in a product before choosing between two products or making the decision to buy. This is why products like mobile phones, laptops, watches and automobiles rely heavily on design even though the functionality of the product is independent of its design. That is why many of these products are sold in unique shades of colours or patterns so as to have some exclusive and unique identifier from its competition in the market.
In India, design of a product is protected by the Designs Act, 2000. But in order to qualify for the protection of this act, a design has to meet certain eligibility criteria. A design is eligible to be protected under the act if:
- It has not been registered or published before or does not resemble a design that has been registered or published before
- The design has commercial use and can be applied to an article or object through an industrial process.
- Has only aesthetic functionality which can be measured and judged solely by the eye alone.
- Does not have any mechanical functionality that lends to the primary functionality of the product.
- Does not come under the definitions of design under the Trademark Act, Copyright Act or Section 479 of the IPC that defines a ‘property mark.
Design patent India Act has not been mentioned expressly here because any patent design will have mechanical functionality that will lend to the primary function of the product and hence will be disqualified under criteria number 4 automatically.
Dos And Don’ts Of Design Registration
If a design meets the criteria above, then it is eligible for registration. But being eligible is not the same as being registered. There are a few dos and don’ts that one must be aware of before, and after Design Registration Certificate to make sure it is protected and secured. Let us take a look.
Do keep a time log with description during the development of the design – While this is not a mandatory requirement while applying for a registration certificate, it certainly helps establish unequivocal ownership of the design. So even if someone challenges your design during the registration process, you have wholesome evidence. This may seem like over-detailing. But there is a legal maxim that says ‘vigilantibus non dormientibus jura subveniunt’ which Electronic time log is convenient and credible
Do check the portal for similar designs and consult an IP expert if you find a similar design – Before you decide to register your design, make sure you do a thorough check for similar designs that may already be registered or maybe in the process of registration. These can be found on the online intellectual property portal of the Ministry of Commerce and Industry. If you do find a design that you feel is similar to yours and are not sure what steps to take next, contact an intellectual property expert who will be able to study your case and guide you on the steps ahead.
Do register your design if you find it to be unique – If you do find your design to be unique and have found no designs on the portal that seem similar to your design, then make sure you register the design. Registering a design is not mandatory. But there are a number of benefits you gain from registering it. The registration certificate first and foremost serves as a valid substitute for ownership documents. It gives you exclusive commercial rights. It enhances the market value of the design. And it adds more credibility to the brand image.
Do ensure confidentiality and non-disclosure agreements with any third party who has access to design – When you commercialise your licence there will be a number of people you will have to grant access to your design. These may be printers, dyers, advertisers etc. So whenever you grant someone access to your design, ensure that they sign a confidentiality and nondisclosure bond wherein they will ensure that no one else has access to the design. This ensures that any losses of revenue due to unintended exposure of the design can be recovered through the judicial route.
Do make sure the certificate of registration is on public record and clearly visible next to the design – Make sure that the registration number on the registration certificate of the design is mentioned when you share a design publicly so they are aware that any imitation and unauthorised use of the design will invite litigation and penalties. This is just a means to discourage anyone from proceeding with such actions or disallowing anyone from claiming ignorance.
Do check the portal from time to time for applications similar to your design – Even after registering the design, you must check the portal at regular intervals to ensure that no one has made an application for any design that resembles your or might be confused as yours. When an application is underway, the controller is required to perform due diligence to the best of his abilities. But the resources with the controller are limited and there is only so much they can examine. So they put up the application on the portal for a period of time before granting the certificate so that all interested parties can look at the design and object if they feel that the design should not be granted a certificate.
Don’t apply for a design that is similar to an already registered design – When you find that a design very similar to yours has already been registered and an intellectual property expert is of the opinion that the design might not get approved, then it is best not to apply for the registration. Instead, it may be more feasible to approach the owner of that design and licence the design. However, if you find more than one designs that are similar to your and have been registered, then you can go ahead with the application because you know that the controller is indeed granting the certificate to designs that are similar in general but unique in some specific ways. You also know that the chances of objections are low, given that more than one similar-looking design has been approved.
Don’t falsely declare that a design is registered – Declaring that your design has been registered without actually holding a certificate is a criminal offence in terms of forgery and fraud. The registration certificate enhances the value of design and gives it certain powers and rights that unregistered designs don’t enjoy. So overinflating the value of your design by claiming that it is registered constitutes making false statements and fraud. Besides, anyone can check if your design is actually registered or not on the online portal for intellectual property. So making false claims like this can make you lose your credibility and tarnish the value of the design, even though it may be unique and original.
Don’t miss a deadline set by the authorities with regard to defects in the application form – Most of the times when an application for registration is made, the examining officers under the controller will have queries and clarifications or might point out some defects in the form. The officer is required to be thorough in his or her due diligence before sending a report to the controller. So he or she will send a request for clarification or correction of defects with a deadline. If the request is not responded to within the deadline, the form will be automatically classified as ‘abandoned’ and the application request will be closed. This means that the process will have to start from scratch all over again and the costs incurred once more Design Registration
Don’t forget to renew your registration after ten years – As per the act, a certificate of registration for a design is valid for ten years. And if the owner wishes to extend beyond ten years, then he or she can make an application for an extension in which case the certificate will be renewed for five more years. While ten years is usually ample to exploit a design commercially, there is no harm in extending it by five years so that you can retain the exclusive rights to sell or licence the design.
Don’t enter any monetary transactions without getting a valuation certificate first – Intellectual property is an intangible asset. In order to value an asset, one first needs a basic salvage value for the asset, which is the scrap value or the value of the material it is made of. Then we take economic forces such as demand and supply into account to get the marketplace value of the product. Since intangible assets have no salvage value, the marketplace value cannot be measured through the traditional route. At the same time, the criticality of intellectual property to the success of a business cannot be overlooked and doing so would not be presenting a fair picture of the business’s balance sheet. So the World Intellectual Property Organisation, or WIPO, has laid down the guidelines for calculating the monetary valuation of intellectual property. Make sure that you do not enter any monetary transaction until the monetary worth of the asset has not been determined, given that a registered design has enhanced monetary value.
Conclusion
Intellectual property is a fairly new subject and every year there are new provisions being added, given that there is still ambiguity in establishing how much intellectual property contributes to the revenues of the business. Given that all businesses are working towards building their intellectual property capital, it is important that someone with the necessary training in the subject matter and ample hands-on experience with the procedures and protocols is consulted in the process so that all efforts in this direction are employed effectively. If you are looking for any advice or are looking to register your design, contact vakilsearch now and we will connect you with our highly trained and experienced team of intellectual property experts to assist you with whatever your requirements may be.
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