Design Registration

Overview

Design registration in India is a process governed by the Designs Act of 2000 and the corresponding Designs Rules of 2001. This legal framework aims to protect various industrial designs, ensuring that creators receive recognition and fair compensation for their innovative designs.

A design, as defined under the Act, encompasses the unique aspects of shape, figure, blueprints, decorations, or compositions of lines or hues applied to an article. This design may be two-dimensional or three-dimensional and can be created through various manufacturing procedures or modes, including manual, mechanical, automated, or chemical processes. 

The finished article should appeal to and be identifiable solely by the eye, excluding any mechanical devices or registered trademarks. The primary purpose of obtaining design registration under the Designs Act is to safeguard novel or innovative designs applied to specific articles during the manufacturing process. Consumers often base their purchasing decisions not only on the quality of a product but also on its design aesthetics. For example, the design of a mobile phone or goggles can significantly influence consumer preferences.

Reasons Why Obtaining design registration is essential for business entities

Legal Protection: Design registration provides an effective legal shield to safeguard unique designs from being imitated, copied, or misused by competitors or unauthorized parties. It grants the registered owner exclusive rights to use the design and take legal action against infringers.

Promotion of Creativity and Originality: By incentivizing creators to register their designs, design registration promotes creativity and originality in product development. It encourages businesses to invest in research and development to create distinctive and aesthetically pleasing designs that can capture consumer attention and loyalty.

Compliance with International Standards: Design registration is a mandatory compliance requirement for companies located in World Trade Organization (WTO) member nations that have signed the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement. Adhering to these international standards ensures that businesses uphold intellectual property rights and contribute to a fair and competitive global marketplace.

Overall, design registration offers businesses a competitive edge by protecting their intellectual property, encouraging innovation, and ensuring compliance with international legal standards. It enables companies to differentiate their products in the market, build brand reputation, and maintain a strong foothold in their respective industries.

Law Applicable for Design Registration

The registration and protection of industrial designs in India are governed by the Designs Act of 2000 and the corresponding Designs Rules of 2001. These laws came into effect on May 11, 2001, replacing the previous Act of 1911. Additionally, the Design Rules of 2001 have been amended by the Designs (Amendment) Rules of 2008 and the Designs (Amendment) Rules of 2014. These legal frameworks establish the procedures and requirements for design registration and enforcement, ensuring the effective protection of industrial designs in India.

Benefits of having a design registered under the Design Act of 2000

Legal Shield Against Design Plagiarism: Design registration provides a robust legal framework to prevent other entities from copying, reproducing, selling, or distributing products bearing an identical design to the original. This protection safeguards the creator’s intellectual property rights and ensures fair competition in the marketplace.

Extended Validity: A design registration certificate remains valid for a period of 10 years. Additionally, after the expiry of this initial validity period, the registration can be further extended for up to 5 years, providing long-term protection for the design.

Unique Selling Point: Design registration gives a business owner a unique selling point, distinguishing their products from competitors in the market. This unique character and appearance contribute to brand identity and consumer preference.

Preservation of Creativity: Registered designs are globally unique, ensuring that they have not been previously published in any World Trade Organization (WTO) member nations or used by anyone in India before. This protection preserves the creativity and originality of the design.

Client Response: Registered designs have a visual appeal that resonates with consumers and is judged solely by the eye. This aesthetic appeal can enhance customer engagement and increase the marketability of products.

Innovation: The criteria for design registration emphasize uniqueness, encouraging businesses to develop innovative and alluring designs that set their products apart from others. This focus on innovation promotes healthy competition and drives continuous improvement in product design and development.

Overall, design registration offers creators and businesses a range of benefits, including legal protection, extended validity, unique branding opportunities, preservation of creativity, enhanced consumer appeal, and incentives for innovation.

In the process of design registration, there are two main types of applications that can be filed:

Ordinary Application: An ordinary application is filed without claiming priority from any previous application. This means that the design being registered is not based on or derived from any earlier application filed in India or any other country. The applicant submits the design application directly to the appropriate authority without relying on any prior claims.

Reciprocity Application: A reciprocity application, on the other hand, claims priority from an application filed previously in a convention country. This type of application allows the applicant to leverage the priority date of the earlier application filed in a country that is a signatory to an international convention or treaty related to design registration. The reciprocity application must be filed in India within 6 months from the date of filing in the convention country. It’s important to note that the period of 6 months is not extendable, so the applicant must adhere to the deadline for filing the reciprocity application.

Overall, the choice between an ordinary application and a reciprocity application depends on whether the applicant wishes to claim priority from a previous application filed in another country. While an ordinary application is filed independently, a reciprocity application allows the applicant to assert priority based on an earlier filing in a convention country, providing certain advantages in the design registration process.

The application for registration of a design should be addressed to the Controller of Designs at the following address:

The Controller of Designs

The Patent Office

CP-2, Sector-V

Salt Lake, Kolkata – 700091

Points to remember while filing a design registration application

Properly Filled Application Form and Representation: It’s crucial to ensure that the application form is correctly filled out and the representation of the design is appropriately prepared. This helps facilitate the efficient processing of the design registration application. Many applications face objections during the formality check stage, highlighting the importance of accuracy in filing.

Attention to Detail: Pay close attention to the details of the application and the requirements outlined by the patent office. Minor errors or discrepancies in the filing process can lead to objections and delays in the registration process.

Minimize Extensions and Delays: Extensions are often requested by agents or legal practitioners to file replies to formal objections, leading to further delays of 4-5 months. To minimize delays, ensure that all required documents for the design application are carefully prepared and submitted accurately.

Efficient Processing: The Designs Wing of the Patent Office aims to grant registration to properly filed design applications within a short timeframe. Since April 2011, the office has committed to processing applications and granting registration within 1 month from the date of filing, provided all requirements are met.

Adhering to these key points and guidelines, applicants can streamline the design registration process, minimize objections, and expedite the issuance of registration for their designs. This proactive approach ensures efficient processing and timely protection of intellectual property rights.

Process for design registration

Examination: The application for registration of a design is referred by the Controller of Designs to an Examiner of Designs for examination. The examiner assesses whether the application and accompanying documents meet the formal requirements and if the proposed design is eligible for registration under the Designs Act, 2000 and Designs Rules, 2001.

Formality Check: The examiner checks various formalities, including whether the application is in the prescribed format, the prescribed fee has been paid, the applicant’s details are provided accurately, and the representation sheet complies with prescribed rules. Additionally, any required power of authority is reviewed.

Substantive Examination: Substantive examination is conducted to determine whether the proposed design is desirable under the Act, new or original, and not prejudicial to public order, morality, or the security of India.

Consideration of Examiner’s Report: The Controller considers the examiner’s report on the eligibility of the design for registration. If the design is deemed eligible, the registration is processed, and a registration certificate is issued to the applicant. However, if there are objections or amendments required, a statement of objections is communicated to the applicant.

Compliance with Objections: The applicant has three months to comply with the objections or request a hearing. If the objections are not addressed within this period, the application may be deemed withdrawn. The period for addressing objections can be extended by a further three months upon request.

Design Registration and Publication: Once an application is registered, it is published in the Patent Office Journal within one month. The registration number is the same as the application number, and the date of registration is typically the date of filing of the application.

Register of Designs: All registered designs are entered into the Register of Designs maintained at the Patent Office in Kolkata. This register is available for public inspection, and an e-register is also accessible on the official portal of the Intellectual Property India.

Following this comprehensive process, applicants can successfully register their designs and obtain legal protection for their intellectual property.

Documents required for a design registration application

Form 1: Form 1 is the application form for design registration, which must be filled out in the prescribed format as specified in Schedule-II of the Designs Rules. It includes details such as the applicant’s name, address, nationality, and particulars of the design.

Representations: Representations are visual depictions or drawings of the design that clearly illustrate its features and characteristics. These representations should be prepared according to Rules 12, 13, and 14 of the Designs Rules. They should be submitted in duplicate to ensure that the design is accurately depicted.

Form-21 (Power of Authority): Form-21, also known as the Power of Authority or General Power of Authority, is required if the application is filed through a patent agent or advocate. This form grants the agent or advocate the authority to act on behalf of the applicant in matters related to the design registration process. It must be submitted in its original form, as per Schedule-II of the Designs Rules.

Form-24: Form-24 is necessary if the applicant claims small entity status. This form, prescribed in Schedule-II of the Designs Rules, includes details confirming the entity’s eligibility for small entity status. For Indian entities, evidence of registration under the Micro, Small, and Medium Enterprises (MSME) Act of 2006 must accompany this form. Foreign entities must provide an affidavit deposed by the applicant or authorized signatory, as per Rule 42 of the Designs Rules.

Original Priority Document: The original priority document is required if the applicant wishes to claim priority based on an earlier application filed in another country. This document serves as evidence of the priority claim and must be submitted in its original form.

Authenticated English Translated Copy of Priority Document: If the original priority document is not in English, an authenticated English translated copy must be provided. This ensures that the document can be understood and reviewed by officials who may not be proficient in the original language.

Assignment (if applicable): An assignment document is necessary if the applicant of the priority application in a convention country is different from the Indian applicant. This document transfers the rights of the design from one entity to another and must be submitted in its original form.

Following are the Government fees for Design Registration process:

The validity of a design registration

The validity of a design registration initially lasts for ten years from the date of registration. However, in cases where a claim to priority has been allowed, the duration is calculated from the priority date. If the proprietor wishes to extend this initial period, they can do so by applying for a further extension of five years.

To request an extension, the proprietor must submit an application in Form-3 along with the prescribed fees to the Controller before the expiration of the initial ten-year period. It’s worth noting that the proprietor can apply for this extension as soon as the design is registered, providing flexibility in managing the registration’s duration.

How Corporate Raasta Consulting can help you with the process

Expertise in Intellectual Property Laws: Corporate Raasta Consulting likely has professionals well-versed in intellectual property laws, including design registration regulations. We provide guidance on the legal aspects of design registration and ensure that businesses comply with all necessary requirements.

Initial Assessment and Advice: We conduct an initial assessment of the design to determine its eligibility for registration. We advise businesses on the likelihood of successful registration and recommend any necessary modifications to enhance the chances of approval.

Documentation Assistance: Corporate Raasta Consulting can assist businesses in preparing and organizing the required documentation for design registration. This includes completing application forms, compiling representation of the design, and ensuring all necessary information is provided accurately.

Filing and Submission: Once the documentation is prepared, Corporate Raasta Consulting can handle the filing and submission process on behalf of the business. We will ensure that the application is submitted to the appropriate authorities within the specified timelines.

Communication and Follow-up: Throughout the registration process, Corporate Raasta Consulting can act as a liaison between the business and the regulatory authorities. We communicate any queries or requests for additional information and ensure timely responses to expedite the registration process.

Compliance Management: Beyond registration, Corporate Raasta Consulting can assist businesses in managing their design registrations effectively. This includes keeping track of renewal deadlines, updating registrations as needed, and ensuring ongoing compliance with regulatory requirements.

Legal Representation: In case of any legal challenges or disputes related to design registration, Corporate Raasta Consulting can provide legal representation and support to protect the interests of the business.