FAQ'S - DESIGN SERVICE

Under the provisions of the Design Act of 2000, Section 2(a) refers to "article" as any article of manufacture, encompassing substances that are artificial or partly artificial and partly natural. This definition also includes any component or part of an article that has the ability to be created and sold independently as a distinct entity. Thus, the term "article" encompasses a wide range of manufactured objects and their separable elements.

The design must possess a quality of being new or original, without having been previously published or used in any country prior to the date of application for registration, as per Section 4 of the Act. The novelty aspect can lie in the utilization of a familiar shape or pattern in conjunction with a new subject matter.

The registration of a design grants the registered proprietor with the "Copyright" of the design throughout the registration period, as per Section 11 of the Act. "Copyright" refers to the exclusive right to apply the design to articles within the registered class. In other words, the registered proprietor has the sole authority to utilize the design on articles falling within the designated class.

Initially, registration grants the right for a duration of ten years, starting from the date of registration as specified in Section 11. This right can be renewed for an additional period of five years. However, if the fee for extension is not paid within the initial registration period, the right will expire. In such cases, there is a provision for restoring a lapsed design. The application for restoration must be submitted within one year from the date of expiration, following the prescribed procedure.

Piracy of a design means the application of a design or its imitation to any article belonging to class of articles in which the design has been registered for the purpose of sale or importation of such articles without the written consent of the registered proprietor, according to Section 22 . Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.

The Controller of Designs holds the authority to cancel the registration of a design upon receiving a petition for cancellation in Form 8, accompanied by the appropriate fee. The following grounds are considered for cancellation:

• Prior Registration: If the design has already been registered in India.
• Publication: If the design has been published in India or any other location before the date of registration.
• Lack of Novelty or Originality: If the design is deemed not new or lacking in originality.
• Ineligibility for Registration: If the design does not meet the criteria for registration.
• Non-Conformity with Design Definition: If the design does not fulfill the requirements specified in Clause (d) of Section 2, which outlines the definition of a design.

The principle of the "First-to-File" rule governs the registration eligibility of designs. In cases where multiple applications are submitted for an identical or similar design but on different dates, only the first application will be taken into consideration for the purpose of design registration.

Certainly, the same applicant is permitted to reapply for the abandoned design, as the Patent Office does not publish the abandoned application. However, it is essential for the applicant to refrain from publishing the said design during the interim period.

India, being a signatory to the Paris Convention, adheres to the provisions concerning the right of priority. Accordingly, if a regular first application is filed in any of the contracting states, the applicant has the option to seek protection in other contracting states within six months. In such cases, the subsequent application will be treated as if it had been filed on the same day as the first application, granting the applicant the benefit of priority.

An individual who has sought design protection in any convention country has the opportunity to submit an application for the same design in India within six months from the date of priority. This application is known as a Convention Application. It is important to note that this six-month period is not extendable and must be adhered to.

Registered designs become accessible for public inspection solely upon publication in the official journal. To obtain access, interested parties must submit a request in Form-5 and pay the prescribed fee.

For a design to be eligible for registration, it must fulfill certain requirements. Firstly, it should be new or original, with no prior publication or use in any country before the application date. The novelty may lie in applying a known shape or pattern to a new subject matter. Secondly, the design should relate to the features of shape, configuration, pattern, or ornamentation that are applied or applicable to an article. Thirdly, the design should be applicable to any article using an industrial process. Furthermore, the design's features should solely appeal to the eye and be visibly present on the finished article it is intended for. Designs based solely on modes of construction, principles of operation, or mere mechanical devices without significant visual impact are not eligible for registration. Lastly, the design should not include any trademarks, property marks, or artistic works as defined under the Copyright Act of 1957.

The registration of a design offers protection against unauthorized exploitation. If someone unlawfully exploits a registered design, the Design-holder can initiate a civil suit in a court of law, rather than approaching the Patent Office. The Design-holder can seek legal remedies, including an injunction to halt the unauthorized exploitation. Additionally, the Design-holder may also claim damages of up to INR 50,000 for each instance of design infringement.

Yes, it is possible to transfer the ownership rights of a registered design, as per Section 30. The transfer occurs through an assignment deed, which must be in written form. It is important to note that the request for transfer should be submitted within 2 months from the date of the assignment.

As per Section 5, any person who asserts themselves as the proprietor of a new or original design can apply for design registration. This includes the designer or their assignee, either individually or in collaboration with others, as well as through a legal representative. It is important to note that non-resident applicants are required to file their applications through an agent residing in India.

The classification of goods mentioned in the Third Schedule of the Designs Rules, 2001 pertains to the categorization of applications for the registration of designs applied to articles. This classification system is primarily based on the Locarno Classification, which is an internationally recognized system for classifying industrial designs. Each application must include only one class number, as mandated by the Rules. The classification is determined based on the specific articles to which the design is applied.