In this article we take a look at the provisions for registration of a design as laid out in the Designs Act, 2000.
Registration of a Design Under the Design Act: The word design can have different meanings in different contexts. Even in the singular and specific context of intellectual property law, the word design has multiple sub-contextual meanings. If you use the word design in the sub-context of a trademark, it could mean the design of the logo of a brand. If you use it in the sub-context of a copyright it can refer to visual art. And when it comes to patents, the word design can refer to a drawing of a working prototype of an invention.
In fact, for a very long time, there was no separate law for the protection of designs. All residual matters pertaining to design that do not fall into the other three categories were dealt with under the Patents and Designs Act, 1911. But with the boom in the advertising and marketing industries after the second world war, aesthetic design of a product began to play a critical role in the success of a product. So it became necessary to take the new utility of design in commerce into account when it came to protection of intellectual property. With that in mind the Designs Act, 2000 was passed, repealing the Patent and Design Act, 1911 completely, given that parts of it had already been repealed by the enactment of the Patents Act, 1970.
The act clearly defines what is a design and what makes a design eligible to be protected by the design registration act. Let us take a look at this.
What Is a Design as Per the Designs Act?
The term design has been defined for the purpose of this act in section 2(d) in the first chapter of the Act. The section states that:
‘“Design” means only the features of shape, configuration, pattern, ornament or composition of lines or colors 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 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 or property mark as defined in section 479 of the Indian Penal Code, 1860 or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.’
Let us break down this definition for a better understanding. The usage of the words ‘only features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article’ for defining a design indicates that the design must have a purely aesthetic function.
This is further clarified by the exclusive definition of the design which states that a design ‘does not include any mode or principle of construction or anything which is in substance a merely mechanical device.’
You can also see the residual nature of the definition of design under this act as it states that under this act design “does not include any trade mark as defined in the Trade and Merchandise Marks Act, property mark as defined in section 479 of the Indian Penal Code, or any artistic work as defined in the Copyright Act.
There is no mention of Patent Act specifically here because any design that falls under the patents act will be mechanical and functional in nature and is hence automatically disqualified in the first part of the definition itself.
Let us not take a look at the registration of a design under the act.
Registration of a Design Under the Designs Act.
The registration aspect of the design is detailed in Chapter II of the Designs Act, titled ‘Registration Of Designs’. Sections 3-7 of the Act deal with the registration process. Let us take a look at these various sections.
Section 3 – Controller and other officers
The intellectual property law protects intellectual property rights. But the law cannot protect these rights all by itself. It can only declare the illegality of infringing such rights and empowers the authorities to take action against such infringement. It is the authorities that have to uphold the law and execute its provisions. The presiding officer when it comes to the registration of a design is called a Controller.
Under this section of the act, the provisions are laid down as to who the controller and the other officers are in the hierarchy of the registration authorities for designs. It mentions that
‘The Controller General of Patents, Designs, and Trade Marks appointed under sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958 shall be the Controller of Designs for the purposes of this Act.’
Basically, the power of the controller for patents, designs, and trademarks is to be rested in one office. The section also states that ‘the Central Government may appoint as many examiners and other officers and with such designations, as it thinks fit in sub-section (2) of this section. It says that the controller is the ultimate authority and the allocation or withdrawal of any work assigned to the officers is only at the discretion of the controller.
Section 4 – Prohibition of registration of certain designs
This section declares that any design that has been registered, used, or published before or bears a close resemblance to a design that has already been registered, used, or published before will not be protected and the owner of the already registered, used or published design can sue the design submitted for registration if used.
It also states that any design that ‘comprises or contains scandalous or obscene matter shall not be registered’
Section 5 – Application for registration of designs
This section lays down the procedure and the protocols for the registration process. It states that ‘the Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in any country and which is not contrary to public order or morality, register the design under this Act.’
So as long as the conditions above are met, the controller can approve the application for registration. It also states that before the controller can approve an application, he or she must ‘refer the application for examination, by an examiner appointed.’ The examiners are the ones appointed by the central government as discussed in section 3.
Next, it states that ‘every application under Sub-Section (1) shall be in the prescribed form and shall be filed in the Patent Office in the prescribed manner and shall be accompanied by the prescribed fee.’ The prescribed form is called ‘Form 1’ and can be downloaded from the online portal of the government or directly from the Patent office.
It then states that ‘a design may be registered in not more than one class.’ The World Intellectual Property Organisation has classified almost all product categories into different classes for the context of intellectual property rights. A design must have a commercial use for it to be protected under intellectual property laws. This means that the creator must have conceived the application of the design while creating the design. The design can be registered only in that class of products. For instance, the design on the packaging of a food product can be used as a design on a clothing item without violating the design act.
The next two subsections define the circumstances under which an application will be rejected. First, if the controller feels it violates the eligibility or feels it should not be registered for any other reason. And two, the form is defective and has not been corrected within the deadline given to the applicant to fix the defect. In case the application has been rejected by the controller, the applicant has the option to challenge the decision in the high court.
The final part of the section states that the registration is valid from the date of the application and not the date of registration. This is to give clarity to the term of protection the design enjoys under the act.
Section 6 – Registration to be in respect of a particular article
This section elaborates on the provision of the previous section which states that the registration of a design can only be done under one class.
It makes provisions for the registration of a product for more than one article under one class. It also states that if a person is registering a design that has already been registered for an article under the same class and the applicant acquires the rights to the design before the application is rejected, then the application will be processed as if the person making the application has always been the owner of that design and grant him the registration.
Section 7 & 9 – Publication of particulars of registered designs and Certificate of registration
This section states that ‘the Controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in such manner as may be prescribed and thereafter the design shall be open to public inspection.’
Basically, as soon as the registration is complete the controller will publish the design and its registered status on the portal for all to see so that anyone whose design resembles the registered design is aware that their application may be rejected on grounds of similarity with a registered design.
Section 9 additionally says that ‘The Controller shall grant a certificate of registration to the proprietor of the design when registered.’
The provisions of the act and the registration process laid down within it may sound technical, and tedious. This is because the provisions of this act have not been framed just within the legal framework of India. It is the result of the ‘Trade Related Intellectual Properties’ agreement signed by 164 World Trade Organization members to honour the trademarks registered in each other’s countries within their domestic borders. So the bird’s eye view necessary to understand the common sense in the provisions of this act may not be available to all. This is why it is always wise to consult someone who is not only formally and extensively trained in the subject matter but also possesses first hand experience in dealing with such matters. If you are looking to apply for a design registration or have any queries with regards to the registration process, do get in touch with vakilsearch and we will put you in touch with our highly experienced team of intellectual property experts to assist you.
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