After India joined the WTO in 1995, it repealed the earlier Designs Act and enacted the present Designs Act, 2000, to make it TRIPS compliant.
Few changes were incorporated, such as, Novelty which was earlier determined with reference to India alone, was changed to global basis. The Design Rules were also amended to include an elaborate classification based on Locarno Classification system.
What is meant by Design?:
A design means the shape, configuration, pattern, ornamentation or composition of lines or colours applied to any article by an industrial process, as a result of which the finished product appeals to and is judged only by the eye. In simpler terms, which make the article look appealing. Design does not include any mechanical process or mode of construction.
Some examples of a design are:
Spectacle Footwear Lehnga Choli Set Jewellery
Which Designs are capable of Registration :
Only designs that are NEW and ORIGINAL are capable of being registered. New means that it has not been disclosed to the public prior to the date of filing. Original means originating from the owner. It should be significantly different from any other known design.
Application: An application is to be filed with the requisite fees stating the full name, address, nationality, name of the article, the class in which it falls, address for service and other details as required. Two sets of representation of the Design are required to be submitted. The representation must be the exact representation of the article. The representation may be in the nature of photographs, drawings, tracings or computer graphics. Photographs are required to be pasted on the representation sheets of A4 size paper. A statement of novelty and disclaimer in respect of any mechanical action, trade mark, word, numerals must be endorsed on the representation sheet. The representation sheet must bear the name of the applicant on the top left hand corner, the page number and total pages on the right hand corner and signature with the date at the bottom. No descriptive matter can be included. The number of views required may be decided keeping in mind the requirements of the Examiner to visualize the design and distinguish it from probable existing designs.
Generally as per the Design Office, 90% of the application are objected to at the time of examination of formality issues itself, probably due to lack of understanding of the procedure, resulting in delay in acceptance. It is, therefore, necessary to carefully file the application to avoid any delay.
Classification: Articles are classified into 31 different classes along with one miscellaneous class i.e. Class 99, which is based on the International Classification of industrial Designs as per the Locarno Agreement. If a particular design has multiple utilities, the application may be made in one or more of the utilities.
Examination: The Controller considers the report of the Examiner and if the mark is registrable, the same gets registered immediately and a certificate for the same is issued.
If any objections are raised, the same are communicated to the applicant for compliance. Objections may be relating to novelty where the Controller has to cite the specific prior art which he considers to be similar to the applicant’s design. The objections must be complied within the time specified in the examination report failing which the application may be deemed to have been withdrawn.
If after considering the reply, the Controller is of the opinion that the design is still not registrable, he will issue a notice fixing a date of hearing. After hearing the applicant, the Controller may register or refuse the application.
Registration: Once the application is registered, it is published in the Patent Office Journal. The date of registration relates back to the date of the application. Registration is valid for a period of 15 year. The certificate is prima facie evidence of the fact that the design has been registered.
Protection: During the existence of the design it shall not be lawful for anyone to apply the said design to any article in the class for which it is registered. Import of such article is also illegal. The registered proprietor can file a suit for infringement and damages against the person pirating the registered design.
The Defendant in any such suit filed by the registered proprietor may take up all defences including that the registered design lacks novelty or originality, it has been previously published or is not a design defined under Section 2 (d) of the Designs Act, 2000. An aggrieved person may also file a cancellation petition to cancel the registration of the said design.
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