This article has been written by Mr. Devesh Singh Chauhan, a 2nd year student of Manickchand Pahade Law College, Sambhaji Nagar, Maharashtra.

Introduction

Design plays a crucial role in today’s market for the development of new products and services. It gives products an attractive visual appearance, making them more appealing to customers. Unique designs help products stand out from the competition, making them more marketable. Therefore, it is worth investing time and resources to create and develop new or original products with unique designs. 

It is also important to protect these designs to encourage designers to continue their work without worrying about ownership and reputation. By protecting designs and avoiding infringement, businesses can secure their intellectual property rights. To do this, it is crucial to register designs with recognized authorities. 

Previously, the Design Act of 1911 governed the rules and regulations of design in British India. After independence, India established its Design Act, with multiple amendments. The latest one is the Design Act of 2000, which regulates design laws in India. This law outlines the protection of design, regulations, benefits, and requirements for design registration [1].

Industrial design

Industrial design is the process of converting imaginative ideas into visually appealing or physical products that can be mass-produced. This process involves extensive research and analysis based on market demand. The focus is on the form and features of the product, intending to make it more comfortable and user-friendly. Industrial design can be represented in two-dimensional forms such as drawings, lines, colors, patterns, and painting, or in three-dimensional forms such as any article or product. Industrial design is used on a large scale for production and development, but protection is also important to encourage innovation and avoid infringement.

Eligibility for Industrial Design Protection

There is some element which is needed to satisfy eligibility for design protection are:

• • Novelty: For a design to be protected, it must be new and unique, and it should not have been seen before. A new design can be formed by combining previously invented designs to produce new visuals. Regarding the matter of Gopal Glass Works Limited v. Bharat Glass Tube Limited, diamond-shaped glass sheets were formed by engraved rollers developed by Dornbusch Gravuren GMBH (also known as the German Company). The Supreme Court dismissed the appeal in this case, indicating that a new visual design can be created by combining former designs [2].
  • Prior publication not acceptable: It is important to note that a design should not be made available to the public in any way, including public shows or communication, as it would constitute publication. However, if the design is used for private experimental purposes, it does not amount to publication. In the case of Wimco Ltd versus Meena Match Industries in Bombay, the court stated that if the design is no longer a secret and is in public possession, it is presumed to be published. It is worth noting that if a design has been previously published but not registered, there are two ways in which it can be considered as published – either through a prior document or through a prior user [3].
  • Visibility of design over the finished article: The virtual representation of design is only possible if it is crafted on the article which is in the form of either three-dimensional or two-dimensional. It should be anything like painting, clothing designs, product shapes, etc.

• Virtual representation of finished goods: Designs that offend public sentiment and disrupt public harmony are not allowed to register. In the absence of such issues, designs should be registered under Section 5 of the Design Act of 2000, and no government or institution should be able to prohibit them.

Need for Industrial design registration

Registering industrial design is crucial as it reduces the chances of piracy. If the registration process is delayed, and someone else claims your design, it can result in significant financial loss and affect your company’s goodwill. Registering industrial design helps to maintain healthy competition and balance revenues. 

In the 2018 case of Shree Vari Multiplast India Pvt. Ltd. v. Deputy Controller of Patents & Designs & Others, the Hon’ble High Court of Calcutta clarified that design laws do not prevent competitors from using the same methods and principles unless they use the same shape or configuration [4].

• • Rights and protection: Design registration is a process that provides designers with an array of benefits. Once a design is registered, the owner gains exclusive rights to make, use, import, and sell the design. This means that no one else can exploit the design without the owner’s permission, and the owner has legal remedies to avoid infringement and piracy. This protection of ownership ensures that the owner’s investment and hard work are not wasted.

• Legal Remedies: Design registration enhances the commercial value of the product by providing legal recognition to it. This legal recognition can help to differentiate the product from its competitors, and can also enhance its reputation. Moreover, by protecting the goodwill and ownership over the product, design registration encourages innovation and creativity in developing new products.

• Commercial Advantage: In the industrial perspective registration provides legal recognition to the product which enhances the commercial value of design.

• Promoting Innovation: Registration provides protection of goodwill and ownership over the product which encourages innovation and creativity in developing new products.

• Dispute Resolution: In the event of a design conflict, registration provides valid documentation that can be used to resolve disputes and prevent unnecessary legal battles.

• Global Recognition and Protection: It is important to note that international treaties regulate design laws and provide global recognition and protection. For example, it is mandatory for WTO members who ratify the TRIPs agreement to follow design laws and offer protection.

Furthermore, the design application is divided into two:

• Ordinary Application: The ordinary design application is the most common and general type of design registration. If a design has not been registered previously in any country, it can be registered through this application. The owner of the design enjoys exclusive rights and protection. In this type of application, the date of filing is important as it is considered the priority date for the design.
• Reciprocity Application: The reciprocity application is used to fill out an application that has already been filed for protection in a convention country. The members of the Paris Convention for the Protection of Industrial Property are known as convention countries. In India, the application should be filed within six months from the date of filing in the convention country, and this period is non-extendable [5].

Document requirement for Industrial design registration

To get design registration, the aforementioned papers must be submitted.

• Application Form-1       
• Power of Attorney
• A certified copy of the original or certified copies of extracts from the disclaimer
• Affidavits
• Declaration
• Other public documents can be made available on payment of a fee.   

However, the controller may regulate the cost involved in design registration according to the fourth schedule [6].

Process of Registration and Validity

Any individual, industry, or company can apply for design registration if the design is original and new. The applicant or a patent legal practitioner can fill out the application form. The design can be applied by the author or the person who has obtained the rights to the design.

The application for registration can be filled in five different authorities:

• Controller Designs Patent Office in Kolkata
• The patent office in Delhi
• The patent office in Ahmedabad
• Patent Office in Mumbai
• The patent office in Chennai

For further process, the application was transmitted to the Kolkata patent office.

Application for design registration needs to be filled in Form-1 with some other personal and general details:

• Name of the person who claiming or filling ownership.
• Current Address or if a change in address then a fresh application in form-1 should be filed and after the registration application in form-22 is prescribed 
• Nationality
• If the application is filed by the company its legality should be mentioned
• Registration fees 
• Classes of the article should be mentioned under Locarno Classification
• For registration of design the name of the product should be mentioned

If a product performs multiple functions and contains features of two or more products, it should be registered separately. For example, a nail cutter that contains a small knife should be registered as both a knife and a nail cutter. 

Once the application is submitted, a serial number is allotted, which also becomes the registration number if the registration of the design is granted. The document is received by the Kolkata patent office with attached documents and uploaded to the server to make it an official record. 

The duration of the design registration is described under Section 11 of the Design Act, 2000, which provides a total duration of 15 years. Initially, 10 years are given from the date of registration, and later, the controller can extend it for 5 years with a fee of Rs. 2000, which should happen before the expiry of the initial 10-year period [7].

Examination and Publication

Examining the design’s compatibility for registration requires reviewing the relevant documents and ensuring that they meet the basic requirements for registration according to the law. A design examiner, appointed by the controller of design, examines to determine if the application meets these requirements. Legal registration fees must be paid, and all guidelines must be followed. 

For ordinary applications, there is no time limit for filing, but for reciprocity applications, the application must be submitted within six months. If the examiner finds any deficiencies, the application is sent back to the controller, which requests an inquiry from the applicant. The applicant has three months from the date of communication to provide precise information. If the applicant fails to communicate within the prescribed time limit, the application is considered withdrawn [8]. 

Additionally, the design must be new and original, meet all the basic documentation requirements, and fall under the definition of “design” according to Section 2 of the Design Act, 2000. If the examiner finds that the design is not new or has already been registered, they will mention all the details in their report and send it to the controller. 

If it turns out during inspection that the applied design has already been registered by someone else for a different object, the design under consideration cannot be registered unless the applicant also registers as the registered owner of the previously registered design.

Conclusion

Design registration is an essential process that grants legal recognition to the work of a designer, ensuring that they have ownership rights and preventing others from infringing on their creative work. As the world continues to develop at a rapid pace, design law has become increasingly important to protect the interests of designers who are constantly innovating and creating new designs using the latest technologies and products to make life more comfortable and convenient. 

In India, the Design Act of 2000 is the governing law for design registration and protection. A well-designed product can give a good reputation and goodwill to the industry in the market, as well as popularity to the designer. However, before embarking on the design process, a designer should focus on ensuring that their design is novel and original to make the registration process smoother and less complicated [9]. 

Once the registration process is complete, the design is ready for commercial use in the market, providing a unique status to the brand and protecting it from piracy. It also offers legal remedies in case of any infringement, ensuring that the designer’s rights are protected. Thus, design registration is an essential step for designers to safeguard their intellectual property and reap the benefits of their hard work and creativity.

Reference

1. This article was originally written by Poonam Nahar, and published on I pleader. The link for the same is herein. https://blog.ipleaders.in/need-know-industrial-design/
2. Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008 (37) PTC 1 (SC)
3. Wimco Ltd, Bombay V Meena Match Industries, Sivakasi, AIR 1983 Del 537:1983 Rajdhani LR 631.
4. Shree Vari Multiplast India Pvt. Ltd. v. Deputy Controller of Patents & Designs & Others AID No.1 of 2018
5. This article was originally published on Corpbiz. The link for the same herein https://corpbiz.io/design-registration
6. This article was originally published on Indian filings. The link for the same is herein. https://www.indiafilings.com/learn/design-registration-2/
7. Section 11 of the Design Act, 2000
8. This article was originally written by Poonam Joshi, and published on I Pleader. The link for the same is herein. https://blog.ipleaders.in/procedure-registering-indian-industrial-design-online/
9. This article was originally written by the Patent Office (design wing), and published on Ip India. The link for the same is herein. https://www.ipindia.gov.in/writereaddata/Portal/Images/pdf/General-Info-Reg-of-Industrial-Designs.pdf