ONLINE DESIGN REGISTRATION APPLICATION | DESIGN REGISTRATION PROCESS INDIA

INTRODUCTION

A freshly generated design applied to an article produced through an industrial process can be secured from counterfeiting by a design registration, which is a sort of intellectual property protection. Design registration grants the creator exclusive rights to use the design for ten years, with the possibility of a five-year extension.

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Under the Design Act of 2000, “any shape, configuration, pattern, or ornament, or arrangement of lines and colours, or a combination thereof, applied to any article,”[i] can be registered. However, if you want to register your design, it must meet the following requirements:

  • It should be fresh and distinct.
  • The design should be related to a product’s physical orientation.
  • An industrialized procedure must be used to apply the design to any product.
  • The design must be clearly apparent and included in the product.
  • In the event of infringement, the owner of a registered design can pursue legal recourse under the Design Act.

HOW DO YOU DEFINE A DESIGN?

The definition of the term ‘Design’ is given under Section 2(d) of the Designs Act, 2001. “Only the features of a shape, pattern, configuration, composition, or ornament of lines or colours that are applied to any article that is two dimensional, three dimensional, or both by an industrial process or any means, whether mechanical, manual, or chemical, separated or combined, are judged solely by the finished article.”[ii]

WHAT IS THE PROCEDURE TO REGISTER A DESIGN?

  1. An application for the registration of a design must be submitted with Form 1 and include the following information:
  • The name of the person who is applying for the registration.
  • The address of the person who is applying for the registration.
  • The nationality of the person who is applying for the registration.
  • If the application is not a natural person, such as a corporation, then legal status information must be given.
  1. The title of the article/product to which the design is applied.
  2. The design must be registered. Two copies of the design must be provided if it is two-dimensional. (The applicant must emphasize the design’s distinctive qualities.)
  3. If the application specifies that the design is to be registered in more than one class. In such a scenario, the person must have separate applications for each class of Registration.
  4. Each portrayal of mechanical processes, trademark numbers, and letters should be accompanied by a disclaimer or uniqueness statement.
  5. Each representation must be signed and endorsed by the applicant or an authorized person.
  6. Once the application has been submitted, the patent office will analyze it and, if necessary, issue objections.
  7. The design will be issued a Copyright certificate by the patent office once all objections have been eliminated.
  8.  

From the date of registration, the design registration is valid for 10 years.

WHAT ARE THE ADVANTAGES OF DESIGN REGISTRATION?

  • Any product or accessory that has a beautiful design is attractive and enticing. As a result, it raises the product’s commercial worthwhile also increasing its marketability.
  • When a design is secured, the inventor has the right to press charges against anyone who copies or imitates it. This ensures that the product’s design is genuine and unique to the owner.
  • Design registration safeguards the aesthetic characteristics of products and packaging. There are a lot of businesses that rely on copyright and ensure that they are adequately protected. When a dispute emerges, the other side will question the legitimacy of copyright. As a result, design registration might be viewed as an excellent alternative for demonstrating the legitimacy of certain rights.
  • Whenever a designer brings something distinctive or creative to a product, it gives it personality. Originality has its own strategy in the market, which aids the new product in carving out a niche for itself among competing products.

CATEGORIES OF AN APPLICANT

The Design (Amendment) Rules, 2014 established two applicant categories: “Natural person” and “Other than a natural person.” The significance of this applicant classification seems to be the different payment structures that are levied on applicants based on which category they fall into. There are two sub-categories under the category “Other than a natural person”: “Small entity” & “Others except for a small entity.” Small businesses benefit from a reduction in the fee that must be paid while applying to register a design. 

FEE SCHEDULE AND FEE PAYABLE BY JOINT APPLICANTS OF DIFFERENT CATEGORIES

The fee for each category of an applicant has been stated along with the announcement of the different categories of applicants. For the category of “natural person,” the previous cost structure has been maintained. The price for a “small entity” has been increased to twice that of a “natural person,” while the charge for an “other than tiny entity” has been increased to four times that of a “natural person.” Even with the new cost structure for ‘small entity and ‘other than small entity,’ filing and prosecuting a design application in India is still less expensive than in other countries. Furthermore, it has been stated that in the case of joint applications from various categories, the applicant with the highest fee category among the joint applicants would be considered.

DIFFERENTIAL FEE PAYMENT ON CHANGE IN CATEGORY OF APPLICANT

In the case of an application handled by a natural person being transferred to another natural person or from a small entity to another small entity, the modified regulations specify the conditions for payment of the difference in costs.

SMALL ENTITY CLAIM FOR FOREIGN APPLICANTS

The Patents (Amendment) Rules, 2014, left a grey area about documentary proof necessary by a foreign applicant to qualify as a small firm and enjoy cheaper costs. The Design (Amendment) Rules, 2014, attempted to fill in that gap.

In line with a new proviso under Rule 6, Form 24 of the Design Act, 2000, which is to be filed for claiming the status of a small organization, must be filed with every document for which a fee has been required. Furthermore, according to Form 24, an affidavit by the applicant or an authorized signatory in accordance with Rule 42 of the Designs Rules, 2001, is included in the particulars of the document to be deposed by a foreign applicant.

WHAT IS THE DURATION OF THE REGISTRATION OF A DESIGN AND ITS EXTENSION?

The duration of a design’s registration is generally ten years from the date of registration, but it is ten years from the priority date in uses where a claim to priority has been granted. This initial period of registration may be extended for a further 5 years by submitting a Form-3 application to the Controller, along with a fee of INR. 2,000/-, before the expiration of the said initial period of design registration. Even if the design has already been registered, the owner of the design can apply for an extension.

HOW TO CANCEL THE REGISTRATION OF A DESIGN?

The registration of a design may be cancelled at any time after it has been registered by filing a petition for cancellation in Form 8 with a fee of INR 1,500/- with the Controller of Designs on the following grounds: that the design has been previously registered in India or that it has already been published in India or elsewhere prior to the date of registration or that the design is not new or

original.

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HOW TO RESTORE A DESIGN THAT HAS BEEN LAPSED DUE TO NON-PAYMENT OF EXTENSION FEE WITHIN A PRESCRIBED TIME?

The design registration will be revoked if the extension fee is not paid before the end of the initial ten-year period. The Act, however, provides a new clause allowing for the reinstatement of expired designs provided certain conditions are met:

A petition for design restoration in Form-4, with a charge of INR 1,000, is filed within one year of the date of lapse, citing the cause for the non-payment of the renewal fee with adequate justifications. If the restoration request is accepted, the proprietor must pay an INR 2,000 extension fee as well as an additional INR 1,000 fee before the expired registration may be reinstated.

WHAT IS PIRACY OF DESIGN?

Design piracy is defined as the application of a design or its imitation to any object belonging to a class of products for the purpose of sale or importation of such products without the express permission of the registered proprietor. Design piracy occurs when someone publishes or presents such things for sale, knowing that the design has been illegally applied to them.

IS THERE ANY PENALTY FOR THE PIRACY OF A REGISTERED DESIGN?

When a person violates the copyright in a design, then such a person is under a liability to pay the registered proprietor. The sum must not exceed INR 25,000 for each violation. The registered owner may sue for damages and an injunction to prevent recurrence if there is a violation. The total amount recoverable for contractual debt cannot exceed INR 50,000 in respect of any one design.[iii] A complaint for infringement and damages should not be filed in a court lower than that of the District Judge.

POINTS TO BE KEPT IN MIND

  • FILE PROFESSIONALLY: It is necessary to file professionally for Design Registration because it is the most efficient way to make sure that the design is properly protected. 
  • GOVERNMENT PROCESS: Design Registration is a time-consuming procedure that is handled solely by the Registrar. The Registrar examines the facts and circumstances of each case. As a result, it is simple to file a design registration application with the help of a professional. The professionals’ expertise, experience, and knowledge end up making the registration process simple.
  • TIMELINE: Once you’ve submitted your design registration application, it’s your responsibility to keep track of its progress. The applicant’s response or action on a design registration application is frequently time-bound.
  • PROTECTION: The Patent Office provides a list including all registered designs. The list’s purpose is to alert competitors to a design’s registration, thereby preventing counterfeiting. If a registered design is imitated, the owner of the design has the right to sue under the Design Act.
  • 10 YEAR PROTECTION: The Design Act provides legal protection to designs registered under it for a period of ten years, renewable for an additional five years.

CONCLUSION

Design registration is gaining traction as a technique of safeguarding intellectual property and creating a competitive edge in the increasingly commoditized market environment in which most businesses operate. The registration process is reasonably quick and inexpensive in India, and the rights secured are just as effective as other types of IP rights. Owners of new designs are aware of this, and the administration is reacting by improving systems and procedures to provide better transparency, predictability, and efficiency.

 [i] Section 2(d), the Designs Act, 2001.

[ii] Section 2(d), the Designs Act, 2001.

[iii] Section 22 (2) (a), the Designs Act, 2001.

For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.