What is Design?
A design consists of the visual ornamental characteristics embodied in or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.
The patent law provides for the granting of design patents to any person who has invented any new, original, and ornamental design for an article of manufacture.
A design patent protects only the appearance of the article and not structural or utilitarian features.
What is design as per the Design Act 2000?
“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, and does not include any trademark as defined in;
1) clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or,
2) property mark as defined in section 479 of the Indian Penal Code or,
3) any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957
However, functionality aspects of a design are not protected under the (Indian) Designs Act, 2000 as the same are the subject matter of patents.
For instance:- a chair, table, hand tool, clock, bottle, or purse.
it gives the owner the right to exclude others from making, using, selling, offering to sell, or importing articles with a particular design without permission. And design patent rights can be enforced in federal courts.
Design patents last for 15 years, with no maintenance fees required.
What is the Objective of the Design Act, 2000?
It promotes creativity and protection of Original design and Compliance with TRIPs Agreements.
Who can apply for registration of design?
Any Person- proprietor of a design
• Partnership/Corporate Body
• Legal Utility
What are the Steps Required for Registration of Design in India?
- Submit Registered Form with prescribed Fees with Four Copies of Design (33cm x 25cm). It Should be clearly depicting the features of the design.
- Application along with required documents must be submitted to the branch Office of Mumbai or any other branch offices as per requirements such as Patent Office Delhi, Mumbai, or Chennai.
- After Application, the Patent Application must be Numbered, dated, and taken up for Examination.
- After Examination, if any defects found it must be communicated to the applicant or its Agent.
- From the Official date of Application, the Defect must be Communicated within a period of 6 months
- If a Defect is not solved by the Applicant or its Agent, the Comptroller do Personal Hearing to the Applicant and must be written form to the Applicant or his Agent.
- The Applicant can appeal to the High Court (within 3 months from the date of the Controller’s decision)
- Once accepted, the Application is notified in the Patent Office Journal.
What are the Basic Criteria of Design Patent?
There are two essential criteria:-
1. The design must be industrial. Thus, a painting or sculpture is not eligible for design patent protection because it is not separable from a useful object.
2. The design must not be dictated by the function of the article. That is, if the design specifically affects the way the article works, that design would not be separable from function and would not be eligible for design patent protection (though it may be eligible for a utility patent).
List of the categories under which Registration does not take place in case of a Design registration
Design of an article is not registrable in India if it falls under the following category:
- If it not New or Original;
- If it has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use in any other way prior to the filing date or priority date of the application;
- If it is not significantly distinguishable from known designs or combination of known designs;
- It comprises or contains scandalous or obscene matter.
- The same thing is applicable in case of Cancellation of registration of design and as a defence in an infringement proceeding.
If any foreign country is interested in protecting its industrial design in India, they should file an application for registration of a design in India within 6 months from the date of its convention application, i.e., the first application filed in the home country.
The advantage of filing an application within a period of six months from the date of the first application is that the Indian application will be treated to have been filed on the same date when the first application for the registration of design was filed.
Application for Registration of Designs under Section 5 of the Designs Act?
- Any person claiming to be the proprietor of any new or original article design which was not previously published in any country and which is not contrary to public order or morality can get register under the design act
- Before registration done by the controller, it must get examined by the examiner who is appointed under Sub-section (2) of Section 3
- Every application under Sub-section (1) shall be filed with the prescribed Form in the patent office with prescribed fees.
- Design to be registered should not be more than one class, in case of doubt, one can ask the controller.
- If controllers think that design is not eligible to get registered, one can refuse to do so. If not satisfied with the Order applicant can appeal to the High court.
- An application that, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned.
- A design when registered shall be registered as of the date of the application for registration.
- After registration of the design, it gets published and made available for public Inspection.
What is the Duration of Protection of Design?
Initially, protection of 10 years is given to the proprietor of a registered design with regard to exclusive rights to sell, make or import the articles and to initiate action against an infringer.
This initial period of 10 years can be further extended by a period of 5 years on the payment of renewal fees. In India, the maximum validity of registration under the (Indian) Designs Act, 2000 can be 15 years.
The (Indian) Designs Act, 2000, also introduces the international system of classification for registration. Restoration of lapsed designs or renewal of expired registration is also permitted under the (Indian) Designs Act, 2000.
Duration of the registration procedure
Registration of a design patent application takes an average of 7 months, dependent on whether the design process is smooth.
Grant, Validity term & design Renewal Fees
Upon grant, the design patent is valid for 10 years from the registration date. This term may be extended for five years if the corresponding request is provided, and the corresponding fee is paid before the expiration of the 10-year term.
A grace period of twelve months from the date of registration expiration and surcharge applied when the renewal fee wasn’t duly paid.
Difference between Design Vs Copyright Vs Trademark
A design patent protects any new, original, and ornamental design for a useful article of manufacture.
A copyright protects any original work of authorship that has been fixed in a tangible medium of expression.
A trademark protects any words, names, symbols or devices used in commerce to identify and distinguish a particular source of goods or services from another source.
India Design Office Filing Fee:
|Applicant type||Indian Rupees|
Attorney Fees may cost approx 25000-30000.
After one gets a trademark or service mark, one must actively and continuously protect it by monitoring the internet to be sure no one else is using it. If one does not follow up on misuse, He/she can lose rights to the trademark.
Like other business property, trademarks and service marks can be bought and sold, or they can be licensed to others for things like apparel or advertising giveaways.
Student, Vivekanand Education Society of Law Chembur Mumbai.
Sushma Gowda is a 1st year law student of Vivekananda education society of Law Chembur. She is an enthusiastic person to learn core area of various laws. She possesses research and drafting skills in different field of law. For any clarifications, suggestions and feedback kindly find her at firstname.lastname@example.org