1. General Information on Designs in India
- In India, Design registration relates only to external features i.e. shape, configuration, pattern or ornamentation etc. of an article.
- Any mode or principle of construction or operation of a device or article is not registrable under the Designs Act, 1911.
- Drawing representations should be on A4 size thick paper sheets clearly showing the features of the design by different views and stating names of the views below. One sheet should not have preferably more than 2 views.
- Utility Model applications cannot be filed in India, since there is no Utility Model Law in India.
- Separate applications have to be filed for each design.
- It normally takes about 6 months between filing an application and registration. A design is initially valid for 10 years and can be extended by one more term of 5 years (New Act).
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2. Infringement of a Registered Design
Infringement of a design means the application of a design or its imitation to any article belonging to the particular class of goods in which the design has been registered., for the purpose of sale or importation of such articles without the consent of the registered proprietor. Publishing such articles or exposing terms for sale with knowledge of the unauthorised application of the design to them also amounts to infringement of the design. TOP
3. Legal Proceedings
- Infringement of registered design
(1) During the existence of copyright in any design it shall not be lawful for any person -
(a) For the purpose of sale to apply or cause to be applied to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
(aa) To import for the purpose of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof, or
(b) Knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of goods in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
(2) If any person acts in contravention of this section, he shall be liable for every contravention -
(a) To pay to the registered proprietor of the design a sum not exceeding Rs. 500 (US$12) recoverable as a contract debt, or
(b) If the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly, provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed Rs.1000 (US$24).
(3) When the Court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the Register of Designs.
- Penalty for infringement of a Registered Design
If any one contravenes the copyright in a design he is liable for every offence to pay a sum not exceeding Rs. 500/- (US$ 12) to the registered proprietor, subject to a maximum of Rs. 1000/- (US$ 24) in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for injunction against repetition of the same. A person gets relief from damages if he has proceeded on the basis of a report from the Patents Office that no registration subsists in respect of a particular design and is later held as infringing copyright for the said design by pleading innocent infringer.
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4. The Indian Designs Act 2000
• The purpose of Indian Design Law is to encourage the creation of designs by ensuring their protection and utilization. Industrial design is one of the categories of intellectual property rights where the design system focuses on the protection of the aesthetic features of an article derived from its visual appearance.
• A design is an idea or conception as to features of shape, configuration, pattern, ornament, composition of color or line or a combination thereof applied to any article by an industrial process or means. A design is registrable provided it is new or original, not contrary to public order or morality, or does not contain obscene or scandalous matter.
• For the purpose of design registration, products have been classified into different classes. The class is on the basis of material of which the article is predominantly made. The classification of goods, which is based on the Locarno agreement, is provided in the Designs Rules 2001.
• Articles that cannot be mass-produced by an industrial production method cannot be objects of design registration.
• A design which is not new or original or has been disclosed to some individual member of the public who was under no obligation to keep it secret or 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 where applicable, the priority date of the application for registration or is not significantly distinguishable from known designs or combination of known designs, is not registrable. "Original", in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application.
• The shape or pattern need not be entirely new. The novelty may reside in its application to the new article of manufacture, even though the design is old.
• The Indian Designs Act 2000 does not stipulate any criterion or test for non-obviousness of a design for the purpose of registration.
• The following are not considered to constitute subject matter for registration of design under the Designs Act 2000:
The principle or the mode of construction of an article, mere mechanical device, solely functional features of shape, the building and structure, real estate, the part of an article not sold separately, variations commonly used in trade, mere workshop alterations of components of an assembly, stamps, labels, tokens, medals, trade marks, property marks, and mere change in size or material of the article, design contrary to public or morality or scandalous, computer chip, integrated circuit design and topographies, mother board, circuit board, exact copies of natural objects, etc. Designs that comprise or contain scandalous or obscene matter are not registrable.
A flow diagram of the design registration procedure in India is shown below.
• When an application for registration of a design is found to be in order, it is accepted and registered and a Certificate of Registration is issued to the applicant. A "Register of Designs" is maintained by the Patent Office which contains the design number, class, number, date of filing and reciprocity date (if any), name and address of proprietor and such other matters as would affect the validity of proprietorship of the design.
• The life of a design registered in India is initially for 10 years from the date of filing the application or date of priority, whichever is earlier. The period may be extended by another period of 5 years.
• 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. Publishing such articles or exposing them for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.
• When a design is registered, the registered proprietor of the design shall have copyright in the design during ten years from the date of registration. During the existence of copyright in any design it shall not be lawful for any person-
(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof, or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in nay class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
If any person acts in contravention of this section, he shall be liable for every contravention-
(a) to pay to the registered proprietor of the design a fixed sum recoverable as a contract debt, or
(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly.
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