Having a registered design in a brand offers more benefits and avoids duplication, learn more about registered design in India now.
It is crucial to have a registered design. If you are an unregistered brand the chances are that your products may be duplicated and sold by more than one trademark or logo. In the case of multiple trademarks, it will become more difficult for shoppers to recognize your products and keep track of whose goods they’re buying. Thus, registering your brand helps protect it against confusion and prevents other brands from filing confusing trademark infringement lawsuits against you.
What is a Registered Design in India?
‘Design’ refers to the unique characteristics of shape, form, blueprints, decorations, or the arrangement of lines and shades, either individually or in combination, given to any two- or three-dimensional object through any manufacturing process or method. The process of creating a design can be done manually, mechanically, automatically, or chemically, and it can be separate or all-inclusive, resulting in a finished article that appeals to the eye and can be recognised solely through visual perception.
The process of registering a design in India, regulated by the Designs Act of 2000 and the corresponding Designs Rules of 2001, enables the registration and safeguarding of various industrial designs. However, this excludes any purely mechanical devices, any registered trademarks as defined in Section 2(v) of the Trade and Merchandise Marks Act of 1958, as well as property marks or artistic works as defined under Section 2(c) of the Copyright Act of 1957.
Why Need a Design Registration?
A unique industrial design refers to the creation of new and innovative features for a product, which can be easily recognised by their distinct shape, formation, patterns, embellishments, and the combination of these elements. When a design reaches its completed stage, it immediately catches the eye and has a positive impact on customers in the market. There are several important reasons why a business entity should consider registering their designs:
- To obtain effective and convenient legal protection, preventing imitation or misuse of unique designs in India.
- To foster and nurture creativity and originality.
- It is a mandatory requirement for all companies located in WTO member nations that have ratified the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement.
Designs That Can Be Registered
To be eligible for registration under the Designs Act, a design must meet the following six requirements:
- The design must be new or original, without prior publication or use in any country prior to the application date for registration.
- The design should pertain to the features of shape, configuration, pattern, or ornamentation applied or applicable to an article. Therefore, designs of industrial plans, layouts, and installations are not eligible for registration under the Act.
- The design should be applied or applicable to an article through an industrial process. Designs of artistic nature, such as paintings or sculptures that are not mass-produced through industrial processes, are typically excluded from registration under the Act.
- The features of the design in the finished article should be visually appealing and solely judged by the eye. This means that the design must be visible and recognisable on the finished article it is intended for. Therefore, designs located on the inside arrangement of a box, money purse, or cupboard may not be considered if these articles are typically sold in a closed state.
- Any mode, principle of construction or operation, or anything that is essentially a mere mechanical device, cannot be registered as a design.
- The design should not include any trademarks or copyrights.
Examples of Registered Designs
Under the Designs Act in India, a diverse range of objects can be registered. This includes items spanning from cutlery to clothing, as long as they meet the criteria of being original and not mere mechanical contraptions.
For example:
- The form of the Coca-Cola bottle.
- The design on a football jersey.
- The silhouette of the Holden Monaro vehicle.
Items That Cannot Be Registered as a Design
The following items are ineligible for registration as a design:
- Books, jackets, calendars, certificates, forms, and other documents.
- Dressmaking patterns.
- Greeting cards, leaflets, maps, and plan cards.
- Postcards, stamps, and medals.
- Labels, tokens, cards, and cartoons.
- Any principle or mode of construction of an article.
- Mere mechanical contrivances.
- Buildings and structures.
- Parts of articles that are not separately manufactured and sold.
- Variations commonly used in trade.
- Mere workshop alterations of components in an assembly.
- Mere changes in the size of an article.
- Flags, emblems, or signs of any country.
- Layout designs of integrated circuits.
Benefits of Design Registration
Here are some clear advantages of registering a design under the Design Act 2000:
- Protection against Design Plagiarism: The design registration process prohibits other entities from copying, reproducing, selling, or distributing products with an identical design to the original one.
- Extended Validity: A design registration certificate remains valid for 10 years. Additionally, it can be extended for an additional 5 years after the initial validity period expires.
- Unique Selling Point: Design registration provides a business owner with a distinct Unique Selling Point. This means that registered designs give products a unique character and appearance compared to their competitors.
- Preserves Creativity: Products with registered designs are globally unique, meaning they have not been previously published in any WTO member nation and have not been used by anyone in India before.
- Engages Customer Response: Registering a design has the important benefit of appealing to customers and being judged solely based on visual perception.
- Encourages Innovation: Since uniqueness is a crucial criterion for design registration, products must be captivating and distinct from others. This fosters innovation and provides a significant boost to healthy competition.
Law Applicable for Design Registration
The administration of registering and protecting industrial designs in India is governed by the Designs Act of 2000 and the corresponding Designs Rules of 2001. These regulations were enacted on May 11, 2001, replacing the previous Act of 1911.
Furthermore, the Design Rules of 2001 have been amended through the Designs (Amendment) Rules of 2008 and the Designs (Amendment) Rules of 2014.
Documents Required
- Form 1 should be completed in the specified format outlined in Schedule-II of the Designs Rules.
- The representations should be prepared according to the guidelines specified in Rule 12, 13, and 14 of The Designs Rules and must be submitted in duplicate.
- For applications filed through a patent agent or advocate, the original Form-21 (Power of authority/General Power of authority) should be provided (as per Schedule-II).
- If a copy of the General Power of authority (GPA) is submitted, it should bear the endorsement of the design application number under which the original GPA was filed.
- If claiming small entity status, the prescribed Form-24 should be submitted (as per Schedule-II).
- For Indian entities, evidence of registration under the MSME Act, 2006 should be provided.
- Foreign entities should provide an affidavit sworn by the applicant or an authorised signatory, as per Rule 42 of the Designs Rules.
- The original Priority document should be submitted in accordance with Rule 15 of The Designs Rules.
- If the original Priority document is in a language other than English, an authenticated translated copy in English should be included.
- In cases where the applicant for the priority application in the convention country is different from the Indian applicant, the assignment should be submitted in its original form.
Vakilsearch Design Registration Process
At Vakilsearch, we understand the importance of minimising legal hassles so that you can focus on your business with ease. Leave the rest to us. Our team of experts is dedicated to ensuring a hassle-free design registration process in India, completing it within just 2 months. With Vakilsearch, preparing your design registration requires minimal effort on your part. Once the registration application is ready, we will send you a power of attorney, granting us the authority to file the application on your behalf.
Rest assured, we will handle the filing of your registration with the relevant authorities, including the design wing of the patent office. You will be provided with a unique design number to track the progress of your application. If you are seeking experts to register your design, Vakilsearch is the ideal choice.
FAQs
What does article mean as per the Designs Act 2000?
According to the Designs Act of 2000, the term 'article' encompasses any manufactured item or substance, whether fully artificial or partially artificial and partially original. This definition also includes all the components of that article, which can be finished and sold separately from each other.
What is the main objective behind the Design registration?
The primary purpose of obtaining design registration under the Designs Act is to protect new or innovative designs intended for application on specific articles that are manufactured through an industrial process or method, from being copied. In certain cases, the purchase of articles for consumption is influenced not only by their functional quality but also by their outward appearance. The key objective of design registration is to ensure that the artisan, inventor, or designer of an aesthetically appealing design is not deprived of their rightful recognition by others who imitate their design for their own goods.
When will I get the Design Registration certificate after applying for the design registration?
Once an application for design registration is submitted in a proper format, it undergoes the acceptance process and, upon acceptance, the design is officially registered. Subsequently, a certificate of design registration will be issued to the applicant. However, if the applicant requires a certified copy of the certificate for legal proceedings, a separate request must be made to the Controller of Designs. This request should be accompanied by the necessary government fee.
What is meant by the Register of Designs?
The Register of Designs, maintained by The Patent Office in Kolkata, is an essential legal document. It contains information such as the design number, class number, filing date in India, reciprocity date (if applicable), proprietor's name and address, and other pertinent details that impact the validity of the design's ownership. The register is accessible to the public upon payment of the designated official fee. Additionally, upon request and payment of the prescribed government fee, an excerpt from the designs register can be obtained.
Can I get Design registration for my postage stamps, sticker labels, tokens, and business cards that are to be considered for an article?
No, the mentioned objects are not eligible for design registration. The rationale behind this is that once the design or adornment is removed, only a piece of paper, metal, or similar material remains, and the article referred to will no longer exist. An article must have its own distinct existence independent of the designs applied to it. A case order from the Punjab High Court (Civil Original Case No. 9-D of 1963) held that a design pertaining to a label was not eligible for design registration. Therefore, the design, when applied to an article, should be considered an integral part of the article itself.
Can I get my design re-registered concerning which the Copyright has expired?
No, if a design's copyright has expired, it cannot be re-registered under the Designs Act of 2000, even if it was previously registered.
What will be the effect of registration of design?
The registration of a proposed design grants the registered proprietor the 'Copyright' for the design during the period of registration. In this context, 'Copyright' refers to the exclusive right to apply the design to their article, specifically within the registered class.
How much is the penalty for the Design piracy of a registered design?
In the event that someone infringes upon the copyright of a registered design, they will be held liable for each offense and required to pay a sum of ₹ 25,000/- to the registered proprietor, with a maximum penalty of ₹ 50,000/-. This amount will be treated as a contractual debt related to a specific design. The registered proprietor holds the authority to initiate legal action to recover damages caused by such a breach and to seek an injunction against the repetition of the offense. The total amount recoverable as a contractual debt, as specified in Section 22(2)(a), shall not exceed ₹ 50,000/-. It is important to note that any lawsuit related to the recovery of damages or violation should be filed in a court of jurisdiction equal to or higher than the District Court Judge level.
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