Intellectual Property Rights: Design-concept And Registration

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INTELLECTUAL PROPERTY RIGHTS DESIGN-CONCEPT AND REGISTRATION

Submitted ToMs Kritika

Submitted By Pujit Gumber 36/15 10th Semester BA.LLB(HONS)

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INDEX

1. 2.

Introduction Definition

3. 4.

Nature and Scope Historical Background

5.

Legal framework in India

6. 7.

Procedure Examination

8.

Post Registration

9.

Conclusion

10. Bibliography

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INTRODUCTION

We see so many varieties and brands of the same product (e.g., car, television, a piece of furniture, mineral water bottle etc.)In the market, which look quite different from each other. If the products have similar functional features or have comparable price tags, the eye appeal or visual design of a product determines the choice. Even if similarities are not close, a person may decide to go for a more expensive item because that item has a better look or color scheme suiting the person’s taste and choice. What is being said is that the external design or color scheme or ornamentation of a product plays a key role in determining the market acceptability of the product over other similar products. Therefore, if you have a good external design that gives you an advantage then you must have a system to protect the features. This protection is provided by the Designs Act, 2000 in India. "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 mechanical device. Functional aspects of design are not covered in this Act. A design is necessarily a part and parcel of the article manufactured. Unless design is new and original, registration cannot be deemed to be effective. The mere difference in appearance of product may not be sufficient to hold that it is a different or new design. Design means only the nature of shape, configuration, pattern or ornament, which in a finished article appeal to and judged solely by the eye. However it does not include any made or principle of construction or anything which is in substance a mere mechanical device, and does not include any trademark or property mark, as defined by the Indian Penal Code in Sections 478 and 479. During ancient days, design patents were not contrasted with utility patents but they are nowadays considered as different forms. This is so, even though they equally involve the exercise of the inventive field. Design is that characteristic of a physical substance more particularly in respect of goods or articles, which by means of lines, images, configuration, and the like taken as a whole makes an impression, through the eye, upon the mind of observer. The essence of a design resides not in the elements individually, nor in their methods of arrangement, but whatever the impression, there is attached in the mind of the observer. As a result of phenomenal development in science and technology the importance of designs has increased significantly. The purpose of any design law is to protect new and novel designs made with the object of applying to particular articles to be manufactured and marketed commercially.

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DEFINITION OF DESIGN

The term “design” is defined in Section 2 (d) of the Designs Act, 2000. This definition reads as follows:

“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 be 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 (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 of the Copyright Act, 1957 (14 of 1957).” To summarize the requirements laid down in the definition above, any person (including a partnership firm or a body corporate) claiming to be the proprietor of the design can apply for its registration so long as the design is:        

New or original; Not previously published in any country; Reproducible by industrial means; Not contrary to public order or morality; Significantly distinguishable from known designs or combination of known designs; Not comprised of or containing scandalous or obscene matter; Appealing to the eye; and Not including anything that is in substance a mere mechanical device.

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NATURE AND SCOPE OF INDUSTRIAL DESIGNS

It goes without saying that design skills and processes pervade the entire spectrum and spheres of human endeavours and activity. Thus their roots are steeply embedded in the evolutionary trends of any given society’s cultural, economic, political and legislative beliefs, values, perceptions, perspectives and aspirations. In this sense they are reflective of an intimate blend of practices underlying public spirit and utility objectives of societies. The end result of which is that designs evolve into forms that are well-suited to the end-users’ needs, aspirations and expectations. For instance, in England, Cardinal Richelieu’s disgust with a dinner guest’s constant habit of picking his teeth with a pointed knife prompted the design of the blunted knife, whose subsequent shortcoming to spear meat in turn led to the design of the two-fingered fork, then further improved to modern day diverse fork designs. So too did the Orientals’ displeasure with human fingers dipping into food lead to the design of chopsticks. These related developments amply demonstrate and reinforce the truism that different and culture-specific solutions to similar problems, needs and wants are at the core of design processes. In this context, design processes are to be viewed as by and large inspired and propelled by the failure of existing products and processes to function optimally to produce the desired result and by the extent to which the creator can innovatively imagine a suitable alternative.Design means a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article to by some manual, mechanical or chemical means. It is a suggestion of form or ornament to be applied to a physical body. It is a conception, suggestion or idea, and not an article, which is the thing capable of being registered. The design is not the article, but is the conception, suggestion, or idea of a shape, picture, device, or arrangement which is to be applied to the article.1

1

Law of copyright and industrial design by P. NARAYANAN

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HISTORICAL BACKGROUND OF INDUSTRIAL DESIGN

During the last century, before the existence of any international convention in the field of industrial property, it was difficult to obtain protection for industrial property rights in the various countries of the world because of the diversity of their laws. Moreover, patent applications had to be made roughly at the same time in all countries in order to avoid a publication in one country destroying the novelty of the invention in the other countries. These practical problems created a strong desire to overcome such difficulties.2 During the second half of the last century the development of a more internationally oriented flow of technology and the increase of international trade made harmonization of industrial property laws urgent in both the patent and the trademark field. When the Government of the Empire of Austria-Hungary invited the other countries to participate in an international exhibition of inventions held in 1873 at Vienna, participation was hampered by the fact that many foreign visitors were not willing to exhibit their inventions at that exhibition in view of the inadequate legal protection offered to exhibited inventions.6 This led to two developments: firstly, a special Austrian law secured temporary protection to all foreigners participating in the exhibition for their inventions, trademarks and industrial designs. Secondly, the Congress of Vienna for Patent Reform was convened during the same year, 1873. It elaborated a number of principles on which an effective and useful patent system should be based, and urged governments “to bring about an international understanding upon patent protection as soon as possible.” As a follow-up to the Vienna Congress, an International Congress on Industrial Property was convened at Paris in 1878. Its main result was a decision that one of the governments should be asked to convene an international diplomatic conference “with the task of determining the basis of uniform legislation” in the field of industrial property. Following that a final draft proposing an international “union” for the protection of industrial property was prepared in France and was sent by the French Government to a number of other countries, together with an invitation to attend the 1880 International Conference in Paris. That Conference adopted a draft convention which contained in essence the substantive provisions that today are still the main features of the Paris Convention.3 A Diplomatic Conference was convened in Paris in 1883, which ended with final approval and signature of the Paris Convention for the Protection of Industrial Property. The Paris Convention was signed by 11 States: Belgium, Brazil, El Salvador, France, Guatemala, Italy, the Netherlands, Portugal, Serbia, Spain and Switzerland. When it came into effect on July 7, 1884, Great Britain, Tunisia and Ecuador had adhered as well, bringing the initial number of member countries to 14. El Salvador, Guatemala and Ecuador later denounced the Paris Convention to 2 3

http://www.wipo.int/export/sites/www/about-ip/en/iprm/pdf/ch5.pdf http://www.wipo.int/export/sites/www/about-ip/en/iprm/pdf/ch5.pdf

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join again in the 1990s. It was only during the first quarter of the 20th century and then particularly after World War II that the Paris Convention increased its membership more significantly. The Paris Convention has been revised from time to time after its signature in 1883. Each of the revision conferences, starting with the Brussels Conference in 1900, ended with the adoption of a revised Act of the Paris Convention. With the exception of the Acts concluded at the revision conferences of Brussels (1897 and 1900) and Washington, D.C. (1911), which are no longer in force, all those earlier Acts are still of significance, although the great majority of the countries are now party to the latest Act, that of Stockholm of 1967.4

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http://www.wipo.int/export/sites/www/about-ip/en/iprm/pdf/ch5.pdf

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LEGAL FRAMEWORK IN INDIA

The first legislation in India for protection of Industrial Designs was The Patents & Designs Protection Act, 1872. It supplemented the 1859 Act passed by Governor General of India for granting exclusive privileges to inventors and added protection for Industrial Design. The 1872 Act included the term ―any new and original pattern or design, or the application of such pattern or design to any substance or article of manufacture‘. The Inventions & Designs Act of 1888 re-enacted the law relating to protection of inventions and designs and contained provision relating to Designs in a separate part. The Patents & Designs Act enacted in 1911 also provided for protection of Industrial Designs. The Patents Act, 1970 repealed the provisions of the Patents and Designs Act, 1911, so far as they related to Patents. However, the provisions relating to Designs were not repealed and continued to govern the Designs Law. India joined the WTO as a ―member State‖ in 1995. Consequently, the Patents & Designs Act, 1911 was repealed and the Designs Act, 2000 was enacted, to make the Designs Law in India TRIPS compliant. The preceding legislation, the Designs Act 1911, dated back nearly a century. Tremendous progress in science and technology over the course of the 20th century, a vastly changed economic milieu and India’s accession to the Agreement on Trade-Related Aspects of IP Rights necessitated an urgent review of the legal design protection system to address modern demands. The Designs Act 2000 was enacted to meet this objective. Design protection is territorial in nature. If design registration is sought outside India, the owner must seek protection in each country separately under its relevant laws. However, India is a party to the Paris Convention and recognises the right to claim priority from other member states. This right is available for six months from the earliest priority date (ie, the date on which the design application is first filed in a reciprocal country). Additionally, while India is not a signatory to the Locarno Agreement, its design classification system is modelled on the Locarno Classification system. There are 32 classes, of which most are further divided into sub-classes. These classes have been numbered as Class 1 to 31 and Class 99. Class 99 covers articles which are not specifically mentioned under any of the other 31 classes. Designs are a statutory right in India and the statute prescribes registration as a condition precedent for protection. Hence, there is no right in or remedy available for unregistered designs.

A design registration protects the aesthetic aspect of a product. Registration confers protection on the features of shape, configuration, pattern, ornament or composition of lines or colours as applied to an article. Functional or technical features of articles are not protected under the Designs Act. An ‘article’ includes, among other things, any substance – artificial or partly artificial and partly natural – and any part of an article which is capable of being manufactured and sold independently.

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Further, novelty or originality is a prerequisite for design registration in India. A design is considered ‘novel’ if: • it has not been disclosed to the public anywhere in the world by publication or use, or in any other way, before the filing date or priority date; and • it is significantly distinguishable from known designs or a combination of known designs. ‘Original’ in relation to a design means originating from the author of the design and includes designs which, although old in themselves, are new in their application. The statutory definition of a ‘design’ covers “features...which in the finished article appeal to and are judged solely by the eye” (Section 2(d) of the Designs Act). The ‘appealing to the eye’ requirement is a preliminary test of novelty. Similarity between designs is ascertained by the ‘judged solely by the eye’ test.Prior publication or display of a design is novelty vitiating. The only exception to this rule involves disclosure of a design in industrial or other exhibitions which are notified in the Official Gazette with prior intimation to the controller general of patents, designs and trademarks, where the necessary application is made within six months of the date of first exhibition or publication. The Designs Act includes no specific provisions or exclusions on the registration of spare parts and partial designs. These are registrable provided that they satisfy the essential registrability criteria. Insofar as partial designs are concerned, the novelty requirement is restricted to the novel portion only. Protection can also be afforded to a set of articles if the articles included in the set: • are ordinarily sold together or intended to be used together; • have common designs, despite the articles being different; and • have the same general character. Not all designs are registrable under the Designs Act. Unregistrable designs include those which: • are not new or original; • have been previously published or used anywhere in the world; • are not significantly distinguishable from known designs or a combination of known designs; • comprise or contain any scandalous or obscene matter; • are against public order or morality; • are mere mechanical contrivances; or • contain a trademark or artistic work .

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ESSENTIAL FEATURES OF INDUSTRIAL DESIGNS

The following features have been considered as essential elements of an industrial design and in India also they are recognised as essential. (a) Novelty- Designs are not registerable unless they are “new”. This novelty must reflect manifestly and is to be tested against those designs which were already published or registered in the country. The designer must have applied some further skill and labour of a draftsmanship. However common trade usage is not the only criterion forjudging the novelty of registered designs. (b) The whole article and parts- An article for which a design may be registered includes “any part of an article if that part is made and sold separately”. (c) Must match- To secure conformity with unregistered design right, the 1988 Act (UK) excludes consideration of features of shape and configuration which are dependent on the appearance of another article of which the article is intended by the author of the design to form an integral part. (d) Immaterial appearance- An exclusion where, the appearance of the article is not material i.e. if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description and, would not be taken into account if the design were applied to the article. (e) Functional features- A registrable design does not include features of shape or configuration, which are dictated solely by the function which the article has to perform. In the field of design registrations, France and Germany have been the lead countries followed by Japan, USA, Korea and UK. In USA, designs also qualify for patents and ‘hence’ the differentiation is not well demarcated as in Europe and other countries.5

"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. The features of The Designs Act, 2000 which came into effect from May 11, 2001 replacing the earlier Designs Act, 1911 are: . 1. International classification based upon Locarno classification has been adopted wherein the classification is based on articles -the subject matter of design. Under the previous law a 'Design' was classified on the basis of the material of which the article was made. 5

32 Prabuddha Ganguli, Intellectual Property Rights- Unleashing the Knowledge Economy, Tata McGraw

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2. Under new law, a Design registration can now be obtained for new or original features of shape, configuration pattern, ornamentation or composition of lines or colours as applied to an article, whether in 2 or 3 dimensions or both 3. A concept of "absolute novelty" has been introduced whereby a 'novelty' would now be judged based on prior publication of an article not only in India but also in other countries. Under the previous law, the position was ambiguous. 4. A Design registration has been brought within the domain of the public records right from the date it is physically placed on the Register. Any member of public can take inspection of the records and obtain a certified copy of the entry. In the previous Act, there was a 2-year confidential period -post registration -which prohibited taking inspection/certified copy of any entry in the records. 5. A Design registration would be valid for 10 years (from the date of registration which is also the date of application) renewable for a further period of 5 years 6. Under the previous law the validation period was 5 years which was extendable for 2 terms of 5 years each. 7. A Design registration can be restored within a year from its last date of expiry. Under the previous law, no provision relating to restoration upon expiration of the Design registration was provided. 8. Cancellation of a Design registration under the new law is possible only before the Controller and there are a couple of additional grounds which have been recognized:9. The subject matter of Design not registerable under the Act 

The subject matter does not qualify as a 'Design' under the Act.

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The subject matter does not qualify as a 'Design' under the Act

Under the previous Act, the cancellation was provided for before the Controller within 12 months from registration on limited grounds and in the High Court within 12 months or thereafter.

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PROTECTION OF A DESIGN Industrial designs are what make an article attractive and appealing; hence, they add to the commercial value of a product and increase its marketability. When an industrial design is protected, the owner- the person of entity that has registered the design-is assured an exclusive right against unauthorized copying or imitation of the design by third parties an this helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity and promoting more aesthetically attractive products. Protecting industrial designs also helps economic development, by encouraging creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts. They contribute to the expansion of commercial activities and the export of national products which increases interest in innovating more designs in the field of consumer products. Industrial designs are business assets that can increase the commercial value of a company and its product. The more successful a design, the higher its value to the company. A protected design may also be licensed (or sold) to others for a fee. Rights in Industrial Designs The rights which are accorded to the proprietor of a validly registered industrial design again emphasize the essential purpose of design law in promoting and protecting the design element of industrial production. Whereas copyright accords to an author the right to prevent the copying of a work, industrial design law accords to the proprietor the exclusive right to prevent the unauthorised exploitation of the design in industrial articles:

1. Entitlement to Rights: The right to legal protection in respect of an industrial design belongs to the creator (or author or originator) of the industrial design. Two questions concerning the operation of this principle arise and are often the subject of particular legislative provisions. First, there is the question of the entitlement to legal protection in respect of an industrial design that has been created by an employee, or by a contractor pursuant to a commission. In these situations, the law usually provides that the entitlement to legal protection of the design shall belong the employer, or to the person who has commissioned the design. The basis for this rule is that the creation of the design falls within the duties which the employee is paid to perform, so that the employee should seek the reward for his creative activity in an appropriate level of remuneration, responsibility and other conditions of employment. Likewise, in the case of the contractor, the thing for which the contractor is being paid is the production of the design for the use of the person commissioning the design.6

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http://www.wipo.int/export/sites/www/about-ip/en/iprm/pdf/ch5.pdf

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2. Nature of the Rights: The right to prevent others from exploiting an industrial design usually encompasses the exclusive right to do any of the following things for industrial or commercial purposes: - make articles to which the design is applied or in which the design is embodied; - import articles to which the design is applied or in which it is embodied; - sell, hire or offer for sale any such articles. In some laws, the exclusive rights of the proprietor also extend to preventing another from stocking any articles to which the design has been applied or in which it is embodied. While this right is sometimes considered as excessive in that it deals only with preparatory acts, it is on the other hand often included in order to facilitate the enforcement of a proprietor’s rights, since it may often be easier to locate a stock of infringing articles than to apprehend a person in the act of selling or offering for sale such articles.25

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Acquisition of Rights Industrial design protection is usually granted pursuant to a procedure for the registration of such designs. The most commonly adopted examination system provides for a formal examination only of an application for a registered design.According to this system, an application is examined to ensure that it meets with each of the formal requirements for an application which are imposed by the relevant law. But no search is made of the prior art to determine whether the substantive criterion of novelty or originality is satisfied by the design for which registration is sought.

4. Creation and Fixation Rights in designs may, under certain laws, also be acquired by the act of creation and fixation of the design, in a document or by embodying the design in an article. These systems do not require any formal registration procedure for the acquisition of exclusive rights in the design. 5. Relation to Copyright: Objects qualifying for protection under the law of industrial designs might equally well receive protection from the law of copyright. Thus, industrial designs law has relations both with copyright law and with industrial property law. Supposing a particular design embodies elements or features which are protected both by the copyright law and the industrial design law, a creator of an industrial design may claim cumulatively or simultaneously the protection of both laws. Cumulation of protection means that the design is protected simultaneously and concurrently by both laws in the sense that the creator can invoke the

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protection of either or both, the copyright law or the industrial design law, as he chooses. It also means that if he has failed to obtain the protection of the industrial design law by failing to register his design, he can claim the protection of copyright law, which is available without compliance with any formality. Finally, it means that after the term of protection of the registered design expires, the creator may still have the protection of the copyright law. But it is to be noted that cumulation must be distinguished from “co-existence.” Co-existence of protection means that the creator may choose to be protected either by the industrial design law or by the copyright law. If he has chosen the one, he can

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Protection of Industrial Designs under the new Indian Designs Act, 2000

The 1911 act was amended so many times in the British colonial period and after the Indian independence. Finally Indian Designs Act, 2000 was enacted to consolidate and amend the law relating to the protection of designs and to implement the TRIPS Agreement It came into effect in India on May 11, 2001, replacing the old law of 1911 to provide more effective protection to the registered designs and to encourage design activities. The new act of 2000 grants the owner or proprietor of the registered designs an exclusionary right of selling, licensing, assigning and using the same in any product. In India, registration of an industrial design is possible to protect if it is new or original provided it is a: non-functional features of shape, configuration, pattern, ornamentation or composition of lines or colours, applied to any article whether in two or three dimensional or in both forms, by any industrial process or means whether guide, mechanical or chemical, separate or combined. India, under this act, has adopted the ‘first to file, first to get’ system, which means that the inventor or creator of a design should file the application for registration on the earliest possible time in order to prevent other persons claiming rights on that particular designs. A design is considered to be new if no design has been made available to the public before the date of filing, or the application for registration. In India, novelty is determined on a worldwide basis The main change that the act has brought in is the exclusion of ‘artistic works’ as defined in the Indian Copyright Act, 1957 from the definition of the term ‘design’ Likewise the Copyright act also excludes any design which is registered under the Designs Act from the scope of protection under the copyright act. The new definition to the term ‘design’ made many conflicts in giving protection to the artistic works. This was explained by the Delhi High Court in Microfibers Inc. v. Girdhar Co. & Another 2009(40) PTC 519(Del) that the artistic works which are excluded from designs protection are the piece of art by itself in the form of painting. The court further observed that the artistic work with an object to put them into industrial use are not excluded from the section 2(d) of the designs act and they needs to be registered to get protection. The court clearly explained in that case that “The exclusion of an 'artistic work' as defined in Section 2(c) of the Copyright Act from the definition of 'design' under Section 2(d) of the Designs Act, 2000 is only meant to exclude the nature of artistic works like painting of M. F. Hussain. It is, thus, the paintings, sculptors and such works of art which are sought to be specifically excluded from the new Act”7 The definition under the act of 2000 is an improved one and more comprehensive. The inapplicability of copyright law to the fashion industry has not caused any instability, nor has it adversely affected the incentive to innovate and create. It is beyond doubt that the fashion industry needs to regulate dissemination of designs and art to reduce if not curb unauthorized use and appropriation of creative artistic works. The new act has made another major change to the existing act by extending the initial period of protection to ten years from five years, but the maximum term of protection remains the same for fifteen years In case of piracy of the designs, the person who infringed the design copyright shall be liable for the fine not exceeding fifty thousand rupees. The proprietor can also bring a suit for 7

http://www.vbook.pub.com/doc/53318556/Evolution-of-Designs-Act-in-India-Protection-of-Industrial-Designsunder-International-IPR-Regime

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recovery of damages and infringement. The suit for infringement of registered designs cannot be instituted in any court lower than that of a district judge. The new act is more superior and effective in giving protection and encouraging the industrial designs in India REGISTRATION OF DESIGN Properly filled up application form and appropriately prepared representation are crucial for efficient prosecution of a Design Application. It is observed that 90% of the applications are objected on formality issues. Very few applications are objected on substantive issues, such as novelty and originality. Extensions are sought by the agents/legal practitioners for filing reply to such formal objections, which results in a further delay of 4-5 months. Accordingly, it is required that the documents related to Design Applications shall be prepared diligently. This can significantly reduce the time taken for registration. The Designs Wing of the Patent Office is committed to register a properly filed application, which complies with the substantive criteria of registrability, in one month from the date of filing, from April, 2011 onwards.

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Based upon the “finished article” concept, the Indian Patent Office follows a very rigid practice of not permitting a single design application to include views of more than a single embodiment of a particular design for an article. Additionally, views showing an article in more than one operational position are not permitted in one and the same application. Thus, “cover open” and “cover shut” views will not be allowed in a single application. Importantly, the article must be shown in only a single operative position. Views showing “cover on” and “cover off” positions will not be permitted in a single application. If such views are included, the application will be held to cover a plurality of designs and one set will need to be deleted. This becomes significant when one appreciates that Indian design law does not contain provision for divisional. The representations filed may be in the form of photographs, tracing or drawings. Most applicants prefer line drawings but under the practice which has evolved, the drawings are required to show the article in the form in which it appears to the eye and hatching or shading or discreet lines are always require to be removed. Contrary to the US practice, no part of the article should be delineated in dotted or broken lines. It is also a part of Indian patent practice not to register designs the shape and configuration of which are determined purely by the function of article performs. In other words, something which is mere mechanical device cannot be registered as a design in India. The registration of an industrial design in India gives the proprietor an exclusive right to sell, import and apply it to any article. Further, Design rights are granted on a country-bycountry basis, with an Indian registration the Design will have protection only in India. If

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the rights holder wishes to protect a design in other countries, then it will have to seek protection in each country separately under the relevant law. India follows the system of "first-to-file." Therefore, it is imperative that a rights holder applies for the registration of its design at the earliest opportunity to ensure that no other person can claim prior rights to the design. Furthermore, an application for design in India has to be filed before publication or any kind of public disclosure of such design, in order to be eligible for registration.

Design Registration Flow Chart

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PROCEDURE FOR REGISTRATION OF DESIGN While the Indian Patent Office has four branches (in Chennai, Delhi, Kolkata and Mumbai), there is only one outpost of the Design Office, in Kolkata. Accordingly, design applications filed in the other three offices are sent to Kolkata. An electronic filing facility has also been introduced for the filing of new applications to register a design. All applicants or stakeholders can now file design applications online through the official portal of the Office of the Controller General of Patents, Designs and Trademarks (at www.ipindia.gov.in or www.ipindia.nic.in). The e-filing facility includes a comprehensive payment gateway which accepts electronic banking, as well as debit and credit cards. Users can also use their existing digital signatures (i.e., the signatures used in trademarks and patents) for login and authentication purposes. Earlier this year, the Design Application Search Utility was also launched – this enables applicants to search for published design applications through a number of search inputs, such as application number, applicant’s name, state and country, date of filing, publication date and name of article. Before this, published design applications could be searched for on the basis of the application number only. In order to file an application to register a design, the applicant must complete Form1, which includes its full name, address, nationality, the name of the article, the class number and the address for service in India. The application may be signed by the applicant or its authorized agent. The following must accompany Form 1 and fee of: Rs1, 000 for a natural person, Rs2,000 for a small entity or Rs4,000 for any other type of entity accompanied with four copies of the design, a brief statement of novelty endorsed on each copy, in case of a convention application, the priority documents and if the application is filed by an agent, a power of attorney. REGISTRATION PROCESS 

Applicant

Any person claiming to be the proprietor of any new or original design may apply for registration. A proprietor may be from India or from a Convention Country. A proprietor may be: a) b) c) d) e)

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. Name of an applicant can be substituted or a joint claim can also be made for an applied design

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Filling of Application An application/petition for registration of design, extension of copyright, cancellation of registration and rectification of register may be filed at any of the four Patent Offices. However, the Patent Offices located at Delhi, Mumbai and Chennai transmit such applications to the Patent Office, Kolkata for further processing and prosecution. E-filing facility for filing of Design Applications and all the subsequent documents is also available 

Contents of Application

a) Application Formi. An application shall be filed in Form-1, along with the prescribed fees, stating the full name, address, nationality, name of the article, class number and address for service in India. Foreign applicants are also required to give an address for service in India,

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ii.

iii. iv.

which could be the address of their Agent in India. In case of foreign applicants, it is mandatory to give an address for service in India. Unless, such an address is given, the Office shall not proceed with the application. The class to which the article belongs shall be mentioned correctly in Form-1. Under the Designs Rules, 2001, articles have been classified in the Third Schedule based on Locarno Classification. It may be noted that for registering a design in more than one class, a separate application is required to be filed for each class The application shall be signed either by the applicant or by his authorized agent/legal representative. In India, only a registered patent agent or a legal practitioner can be appointed as an authorised agent. In case, the applicant has already registered a design in any other class of articles, the fact of such registration along with the registration number shall be mentioned in Form-1.

b) Representation of design -Two copies of representation of the design shall be submitted.

c) Power Of Attorneyi. A Design Application may be filed personally by an applicant or through a patent agent/legal practitioner. If the application is filed through a patent agent/legal practitioner, a power of authority shall be submitted, along with the application. General Power of Attorney is also acceptable. ii. The Register of Patent Agents containing the names and addresses of all the registered patent agents is available at: www.ipindia.nic.in iii. It is observed that a large number of applications are filed by agents/legal practitioners, without a power of attorney. Such discrepancies cause undue delay in the disposal of applications and may amount to unnecessary harassment of the applicant. If the power of attorney was not submitted along with the application, the same shall be submitted within a month from the date of filing. d) Priority DocumentA reciprocity application shall be accompanied by a copy of the design application filed in the Convention Country. Such copy shall be duly certified by the Official Chief or Head of the Organisation in which it was filed. If the priority document was not filed with the application, the same may be filed within an extended period of three months. Extension may be sought by filing Form-18 along with the prescribed fee. e) Representation sheeti.

ii. iii.

The representation sheet of an article needs to be prepared diligently and shall be filed along with the application, in duplicate. The Designs Rules require that four copies of the representation shall be filed along with the application. However, as the records are digitised and processed electronically, two copies of the representation shall suffice. Representation means the exact representation of the article for which registration is sought. A representation may contain more than one page. Representation shall be exactly similar drawings, photographs, tracings including computer graphics or specimens of the design. The Controller may require a specimen of the article to be submitted at the time of examination, in rare cases.

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iv.

v. vi. vii. viii. ix.

x. xi. xii. xiii. xiv. xv. xvi. xvii. xviii.

xix. xx.

Photographs should be pasted on the representation sheets with the help of adhesive and not by other means like stapler, pin and cello tape. While using photographs in representation sheets, one of the copies of representation sheet shall not be covered by cellophane or tracing paper so as to enable digitization. Representation shall be prepared on white A4 size paper (210 mm X 296.9 mm) of durable quality, but not on card board, and only on one side of the paper. The figure(s) shall be placed in an upright position on the sheet. Each figure shall be designated clearly (e.g. perspective view, front view, side view). If design is to be applied to a set, the representation shall depict various arrangements in which the design is to be applied to articles in the set. Where an application is for a design as applied to a set, whether the given articles constitute a set or not, shall be determined by the Controller. In case, name or representation of living persons appear on a design, consent of such persons may be submitted along with the application. In case of a deceased person, the consent of legal representative may be submitted. It may be noted that nonsubmission of such consent may result in office objections and resultant delay in registration. In case, the representation contains the image or name of an imaginary person, such fact may be mentioned in the declaration on the representation sheet. A statement of novelty and disclaimer (if any) in respect of mechanical action, trademark, word, letter, numerals should be endorsed on each representation sheet. Representation, which consists of a repeating surface pattern, shall show the complete pattern, and a sufficient portion of the repeating pattern in length and width, and shall not be less than 15.00 centimeters by 10.00 centimeters in size. The name of applicant shall be mentioned in left hand top corner of the representation sheet. Total number of sheets and sheet number shall be mentioned in the right hand top corner of the representation sheet in Arabic numerals. . The representation sheet shall be signed and dated by the applicant/agent. No descriptive matter or matter denoting the components by reference letters/numerals shall be included. No sectional views shall be incorporated in the representation sheet. Dimensions or engineering symbols etc. shall not be used in the representation sheet. The representation is not to be regarded as engineering drawing of the article. The relevant parameter is the shape and not the size of the article. Where Trade Marks, words, letters or numerals are not the essence of the design, they shall be removed from the representations or specimens. Where they are essence of the design, a disclaimer shall be given in the representation sheet disclaiming any right to their exclusive use. Non inclusion of this disclaimer will result in an office objection and resultant delay. No extraneous matter or background shall appear in the representation sheet. A background is considered neutral as long as the design is clearly visible in it. Dotted lines may be used in representation to indicate those elements of the article for which no protection is sought. Dotted lines identify elements which are not part of the claimed design. In such a case, features of design for which protection is sought must be shown in solid lines in the drawing.For instance, an ornamentation or surface pattern on an article can be registered. In such a case, the representation shall contain a solid line drawing for the claimed ornamentation or surface pattern, and dotted line for rest of the article.

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xxi. xxii.

xxiii. xxiv.

When colour combination is the essence of a design as applied to an article, the same shall be clearly depicted in the representation. Colouring may be used, on a black and white drawing, to highlight only those features of the design for which protection is sought. In such cases, it shall be clearly indicated in the novelty statement that the claim is restricted only to the portions depicted by colouring and the colours so given are not part of the design. Representations shall ordinarily be prepared in one format e.g. drawings, graphics or photographs etc. However, for better clarity, if the applicant so desires, a representation may be given in different formats. The applicant shall keep in mind the requirements of an Examiner to visualize the design and distinguish the same from any probable prior art. The number of views required in a representation sheet may be decided in light of this requirement.

f) Classification of Designs i. ii. iii.

iv. v.

For the purpose of registration of designs, articles are classified into thirty-one classes and a miscellaneous class 99, as described in The Third Schedule of The Design Rules, 2001. The appropriate class shall be clearly identified with reference to The Third Schedule and shall be mentioned in Form 1. In case of any ambiguity, the Controller may decide the same, if necessary, in consultation with the applicant. When a Design Application is for an article with multiple utilities, the application may be made with depiction of an article in any one or more of the utilities. For instance, in case of a design of pen cum torch, the applicant is at liberty to apply in the class relating to pen, torch, pen-torch, or file two applications in different classes for better protection. The classification of articles under The Third Schedule is based on the International Classification of Industrial Designs according to the Locarno Agreement. However, India is not a signatory to the agreement. Ordinarily, the name of article should be common/familiar in the Trade or Industry and shall be analogous to the representation of the article. If the name of article is not common, the applicant may state the purpose for which the article is intended to be used, in Form-1 and representation sheet, so as to enable the Office to correctly decide the classification and facilitate search. An error in mentioning the article correctly may result in office objection with resultant delay of 2-3 months.

g) Address for Servicei. ii. iii. iv. v. vi.

An address for service in India shall be given by every person in any proceeding under the Act or Rules. Change in address for service before a design has been registered shall be effected by filing a petition under Rule 46 with the prescribed fee, along with the fresh Form-1. Any change in address for service for a registered design shall be effected by filing Form22 with the prescribed fee. Address for service is treated for all purposes as the actual address of such person. Unless an address for service is given, the Controller shall not proceed with the application. An address for service shall include e-mail of the agent/applicant.

h) Leaving and Serving Documents

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i. ii.

iii.

iv. v.

Any application and any other related document may be sent by hand or by letter addressed to the Controller of Designs. The letter may be sent by post or courier service or by electronic transmission duly authenticated. In case of electronic transmission which is not duly authenticated, the duly signed or executed document shall be submitted within fifteen days from the date of such transmission. However, the date of filing of document shall be taken to be the date on which fee is duly submitted. All non-fee documents may be sent by fax, or e-mail with a scanned copy of the signed document as attachment. If any document is sent by post or electronic transmission duly authenticated, it shall be deemed to have been filed at the time when the letter containing the same would have been delivered in the ordinary course. In proving such sending, it shall be sufficient to prove that the letter was properly addressed and transmitted. The following documents along with the prescribed fee may be filed at any of the four Patent Offices: However, all further documents relating to above said matters shall be filed in the Patent Office, Kolkata only.

i) Fee i. ii. iii. iv. v.

The fee to be paid in respect of any matter is prescribed in the First Schedule of The Design Rules, 2001. The fee payable under the rules may either be paid in cash or through electronic means or may be sent by bank draft or cheque payable at par, to the Controller of Designs and drawn on a scheduled bank located at the respective filing location. Stamps and Indian Postal Orders are not accepted. Where fee is payable in respect of a document, the entire fee shall accompany the document. Fee once paid in respect of any proceedings shall not ordinarily be refunded irrespective of whether the proceeding has taken place or not.

j) Initial Processing ofApplicationi. On receipt of an application, the Office accords a date and serial number to the application. This serial number, upon registration, becomes the registration number of the design. ii. If the representation sheet is in such a form that the design cannot be visualised e.g. representation sheet received by fax, the application number shall not be allotted. Such an application shall be returned by post or at the counter itself, along with the fee, for nonfulfilment of basic requirements. The applicant/agent should be diligent enough to fulfil such basic requirements. iii. A money receipt, which contains the application number, date and address, is handed over at the receipt counter or sent to the address for service, by post, as the case may be. iv. Applications received at the Counter or by Post in Chennai, Mumbai and Delhi Patent Offices are sent to Patent Office, Kolkata within a week. v. All applications and other documents are digitized and verified at the Designs Wing, Kolkata and are uploaded to the server. vi. The documents are then stored for official records

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EXAMINATION AND REGISTRATION OF DESIGNS The application for registration of a design is refereed by the Controller of Designs to an Examiner of Designs for conducting examination as to: i. whether the application and the documents satisfy the formal requirements, and ii. whether such design as applied to an article is registrable, under the provisions of the Designs Act, 2000 and Designs Rules, 2001. a) Formality check The Examiner determines whether: i. the application is in prescribed format. ii. the prescribed fee has been paid. iii. the name, address, and nationality of the applicant is mentioned. iv. address for service is given in the application form v. declaration of proprietorship is given in the application form vi. representation sheet is in a manner as prescribed in Rule 14 vii. power of authority, if applicable, is filed b) Substantive examination Substansive Examination is carried out to determine whether the design under consideration is: i. a design‘ under the Act ii. new or original iii. prejudicial to public order or morality iv. prejudicial to the security of India c) Special provision relating to prior registered designs i. ii.

iii.

If the applicant has registered the design in any other class of articles, prior to the application under consideration, the fact shall be mentioned in Form-1. Upon Examination, if it is found that the design under consideration is already registered by the same applicant in another class and the applicant has not disclosed that fact in the application form, the Examiner shall raise an objection only with an objective to predate the application, and not on the ground of novelty. In such cases, the objection is communicated along with the citation of such prior registered design and the applicant is asked to amend the application. The term of the copyright of the design under consideration shall be co-terminus with the term of previously registered design. Upon Examination, if it is found that the applied design is already registered by another person in respect of some other article, the design under consideration may be registered only if the applicant becomes registered proprietor of the already registered design. The term of the

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copyright of the design under consideration shall be co-terminus with the term of previously registered design. iv. Apart from the above, while examining the application the Examiner shall consider other criteria of registrability e.g. scandalous matter etc. d) Security of India i.

Any application for design which is prejudicial to the security of India is not registrable and is not published. ii. For the purposes of this provision, the expression ―security of India‖ means any action necessary for the security of India which relates to the application of any design registered under this Act to any article used for war or applied directly or indirectly for the purposes of military establishment or for the purposes of war or other emergency in international relations. c. The Examiner examines the applied design vis-à-vis the security of India and if there is an objection, the same is reported to the Controller. If the Controller confirms the view of the Examiner, the application is referred to the Defence Research Development Organisation, Ministry of Defence, Government of India, for directions by virtue of the Powers conferred by Section 34 of the Act. On receipt of a view favourable to the applicant, the application proceeds further. e) Consideration of report of Examiner i. ii.

iii. iv. v.

vi.

vii. viii. ix.

The Controller shall consider the report of Examiner on registrability of a design as applied to an article and if it is registrable, the same shall be registered forthwith. The registration certificate shall be issued and sent to the applicant at the earliest. If upon consideration of the report, the Controller is of the opinion that there are objection(s) adverse to the applicant or the application requires some amendment(s), a statement of objections shall be communicated to the applicant by the Controller. The communication shall be made either by registered post or electronic transmission. When an objection is raised on the ground of novelty, the Controller shall cite the specific prior art. If the applicant fails to comply with the objections or fails to apply for a hearing within three months from the date of communication of statement of objections, the application shall be deemed to be withdrawn. The period for removal of objections shall not exceed the time period of six months from the date of filing of the application. However, the said period of six months can be extended for a further period not exceeding three months provided a request in Form-18 is filed before the expiry of six months. On consideration of response of the applicant, if the Controller is of opinion that the requirements of Act and Rules have not been met, the fact shall be communicated to the applicant clearly mentioning that the application is liable to be refused for reasons to be detailed and fixing a date for hearing. If the applicant fails to appear for the hearing without any request for adjournment, the application shall be refused giving a reasoned order. If written submissions are filed, while the opportunity to be heard is not availed by the applicant, no further opportunity to be heard may be provided and the matter shall be decided in light of the written submissions. If the applicant complies with all the requirements laid down under the Act and Rules, communicated in the form of statement of objections, the application shall be registered forthwith.

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f) Registration & publication i. ii.

Once an application is registered, it is published in the Patent Office Journal ordinarily within one month. The registration number is same as the application number. The date of registration of an ordinary application is the date of filing of the application. In case of reciprocity application, the date of registration is the date of filing of application in the Convention Country.

g) Register of designs

i. ii.       

All the registered designs are entered in the Register of Designs maintained at Patent Office, Kolkata. The register is available to public for inspection and an e-register is also available at the official website. The Register contains the following details: names(s) and address(s) of proprietor(s) of registered designs; registration number; class; date of filing in India and date of filing in Convention Country (if any); renewal of copyright; assignments and of transmissions of registered designs; any other matter which would affect the validity or proprietorship of the design.

h) Certificate of RegistrationUpon registration, the Controller issues a certificate of registration to the proprietor of the design. The certificate is sent by registered post to the address for service. No hand delivery of certificate of registration is allowed.

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POST REGISTRATION PROCEDURES a) Cancellation of registration i. ii.

iii. iv. v. vi. vii. viii.

Any person interested may file a petition for cancellation of a registered design in Form 8 . Such petition may be filed at any of the four Patent Offices. Such petitions filed in Offices other than Kolkata, are transmitted to the Kolkata Patent Office. However, at present, all further proceedings of cancellation take place only at Patent Office, Kolkata and hence all communications relating to cancellation petitions are required to be communicated to that office. The petition for cancellation of registration of a design may be filed on any of the following grounds: that the design has been previously registered in India; that it has been published in India or in any other country prior to the date of registration; that the design is not a new or original; that the design is not registrable under this Designs Act; that it is not a design as defined under Section 2(d). b) Extension of copyright (renewal)

i. ii. iii. iv.

The copyright in a registered design may be extended by a period of five years, from the expiration of original period of ten years. An application for extension of copyright shall be filed before the expiry of the original period of ten years. The Designs Wing shall complete the proceedings of extension of copyright in designs, within a week from the date of receipt of Form-3. The fact of extension of copyright in a registered design is entered in the Register of Designs and is published in the Journal of Patent Office c) Restoration of lapsed design

When copyright in a registered design has ceased to have effect due to non payment of fees for extension of copyright, within the prescribed time, an application for restoration may be filed within twelve months from the date on which the design ceased to have effect.

I.

d) Rectification An application for rectification of register of designs may be filed by any person aggrieved on the following grounds: i). non-insertion or omission of an entry; ii). entry made without sufficient cause; iii.) entry wrongly remaining on the register;

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iv )error or defect in any entry. II. III.

The rectification may be made by way of making, expunging or varying any entry. Rectification does not include cancellation of a design. CONCLUSION Industrial design is not an abstract idea instead it is a pattern or shape drawn on a paper which will be applied to an article giving it a distinct feature which appeals to the eye of a person for its appearance and not for the use of the article. The industrial design needs to be registered in order to get protection under industrial design law in the India as well as in other countries (member countries to the Paris convention for protection of industrial property) by way of a proper application The Industrial Design registration helps in safeguarding the ornamental or aesthetic elements of the article and it gives exclusionary rights to the holder or proprietor of the registered designs against unauthorized use like replicating or copying by a person without his consent. The protection to the industrial designs helps the economic development, which promote creativity in the industrial arena. From the above discussion it is clear that The Hague system for international registration of designs provides maximum advantages and benefits to the international merchandisers to acquire registration and get protection within the contracting states through a single application. It makes the procedure simple and efficient in registering and getting protection for the designs created by an individual at the international level. However, India is not a member to the Hague system of international registration of design; it gives wider protection to the industrial designs under the designs act of 2000. But it will be better to have international protection in India to make the protection available in all the contracting parties to the Hague system and to provide much protection to the international traders in India.

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BIBLIOGRAPHY Websites: 1. http://en.wikipedia.org/wiki/Industrial_design 2. http://ictsd.org/i/news/bridgesweekly/151994/ 3. http://www.wipo.int/export/sites/www/about-ip/en/iprm/pdf/ch5.pdf

4. http://www.lex-ip.com/Paris.pdf 5. http://www.indianpatents.org.in/faqdesign.htm#86

Books: 1. Law of copyright and industrial design by P. NARAYANAN, 4 th edition, published by Eastern Law House, 2007. 2. Intellectual property law handbook by DR. B.L. WADEHRA, 2 nd edition, published by Universal Law Publishing Co. Pvt. Ltd.,

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