1.Introduction
Before applying for registration of the Indian industrial design, due diligence should be done with regard to the documents to be submitted. This would be of great support for the efficient prosecution of a Design Application and to avoid any unnecessary delay in getting the application registered. Once all the substantive criteria of filing of application are met, the application can get registered in one months time.
To apply for Industrial design, one should keep in mind what type of application is to be filed, whether Ordinary or Reciprocity application. Ordinary application priority cannot be claimed. Whereas, in the Reciprocity application one can claim priority, provided such application is filed in India within six months from the date of the application filed in the convention country.
2.The process of application
The application can be filed by any person from India. The person applying for an application could be an author of the design, a person who has acquired the design, a person for whom the design has been developed by the author or a person on whom the design has been transferred.
The application can be filed at any of the four Patent Offices located in Mumbai, Delhi, Kolkata and Chennai. These applications are transmitted to Patent Office, Kolkata for further processing and prosecution.
An application for filing Industrial design shall be filed inForm-1, along with the prescribed fees with other prescribed details as per Rules duly signed by the applicant of his legal representative. Only a legal practitioner or a registered patent agent can be appointed as an authorised agent in India. Further, if the design is already registered in another class the information in this regard should be mentioned in the application.
The application can be either filed by the applicant or through a patent agent/legal practitioner by attaching the power of attorney along with the application and two copies of representation of the design as per section 11 to avoid unnecessary delay. The representation sheet should be the exact representation of the article for which registration is sought covering all the details. For filing r3eciprocity application of the design filed in the Convention Country is required to be submitted at the time of filing the application or within an extended period of three months in Form-18 by paying the requisite fee.
The registration application should consist of an appropriate class of designs of articles. There might be situations where the design for an article has multiple utilities, the application may be made with a description of an article in any one or more of the utilities. For instance, in the case of a design of a nail cutter cum knife, the applicant can apply in the class relating to nail cutter, knife or nail cutter knife by filing two separate applications in two classes.
The application should consist of proper addresses. If there is any change in address a fresh application in Form 1 is to be filed along with the prescribed fee payable before a design is registered. Whereas, for change in address of registered design an application in Form-22 with the prescribed fee shall be filed.
2(i)Processing of application
Once the application is received by the concerned office date and serial number is accorded to the application. The serial number so accorded becomes a registered number if registration is granted. Further, if the representation sheet forming part of the application is not in accordance with the prescribed guidelines then such applications are not accepted.
The documents once received by the Kolkata Patent Office the same along with the documents attached are uploaded to the server making them part of official records.
2(ii)Examination
The Controller of Designs sends the application to an Examiner of Designs for conducting an examination to examine whether documents forming part of the application satisfy the basic requirements and to examine whether the design as applied to an article is capable of being registered as per the provisions of law.
Thereafter, the Examiner after examining the basic requirements that the application is in prescribed format or not, the prescribed fee has been paid or not, representation sheet is as per the guidelines prescribed and other details as prescribed under the provisions of law.
In the case of the reciprocity application the examiner sees if the application was filed within the prescribed time or not, the priority documents were filed at the time of filing or not.
If any deficiency is found by the Examiner he shall send a report of the deficiency to the Controller, who communicates the statement of objections to the applicant. Such an application shall proceed for substantive examination only after compliance of the objections. The applicant will be provided with three months from the date of communication of the statement of objections or respond to the objections, failing which the application shall be treated as withdrawn.
If the applicant wishes to contest the objections, he may respond to the objections clearly indicating the reasons in detail. Thereafter, the Controller shall give a hearing and after listening to the applicants contention a speaking order shall be passed.
Further, if the basic documentation is proper, a Substantive examinationis carried out to determine whether the design under consideration is design under the Act or not. Whether the design is new or original, whether it is prejudicial to public order or morality and most important whether it is prejudicial to the security of India.
The Examiner further satisfies the novelty criteria by conducting search class-wise or article wise to ascertain whether the design for which the application is made is significantly different from the previously registered, used or published designs.
If it is found that the design is not new, the Examiner mentions these facts along with the citations in his report to the Controller. If the applicant has registered the design in any other class of articles, prior to the application under consideration, the fact shall be mentioned in Form-1.
Upon examination, if it is found that the applied design is already registered by another person in respect of some other article, the design under consideration may be registered only if the applicant becomes a registered proprietor of the already registered design.
The Examiner further examines if the applied design vis--vis the security of India and if there is an objection, the same is reported to the Controller.
2(iii)Consideration of the report of Examiner
On receiving the report of the Examiner on the registrability of a design the Controller shall grant registration and registration certificate shall be issued and sent to the applicant at the earliest by the Controller. If the Controller is of the opinion that there are some objections or the application requires some amendments then such objections shall be communicated to the applicant either through post or through e-communication.
The applicant shall file e reply to the objections raised within three months from the date of communication of the objection or else the application shall be deemed to have been withdrawn. On receiving a reply the Controller, if finds that the reply does not meet the requirements as per the provisions of the law, he shall provide an opportunity of hearing and on hearing, if the Controller finds that the requirements of the law are met with the application of the applicant, then it will be accepted and registration shall be granted. However, if the reply to objections raised is filed but the opportunity to be heard remains unattended, under circumstances no further opportunity of being heard shall be provided and the matter shall be decided on the basis of the reply filed by the applicant.
2(iv)Registration publication
Once the registration is granted, the same shall be published in the Patent Office Journal within one month. The date of registration shall be the date of application in the case of ordinary application, whereas, in the case of reciprocity application, the date of registration shall be the date of filing of an application in the Convention Country. The registered design shall be entered into the Register of Designs maintained at Patent Office, Kolkata
2(v)Certificate of Registration
Once the registration is granted the Controller shall issue a certificate of registration to the applicant of the design. The certificate is sent by registered post to the address for service. And no hand delivery of the certificate of registration is allowed.
2(vi)Validity term and design renewal fees
The design once registered shall have a validity of 10 years from the registration date. This term of 10 years can further be extended for another five years by filing an application for extension along with the required renewal fee before the expiration of the 10-year term.
2(viii)Duration of the registration procedure
The entire process of registration takes around 6 to 7 months depending upon the diligence of the applicant.
3.Basic requirements of design registration
In order for the design to be registered and protected under the Design Act, 2000, it needs to fulfil the following essential elements.
3(i)Novelty aspect
Novelty means newness. If a products design has a novelty aspect then only it can be registered. A combination of registered designs can also be considered, only if that combination produces new visuals.
3(ii)No prior publication of design and the design must be unique
The design should be unique in nature and should not be disclosed to the public anywhere in India or somewhere else in the world by way of use or prior publication or in any other way.
3(iii)Making application of design to an article
The design should be applied to the article itself. Without an article, registration of a design is not possible.
3(iv)Design should not be contrary to public order, morality or security of India
The design should not be prohibited by the Government or any authorized institution. It must be capable of registration under section 5 of the Design Act, 2000. The design which is against public morality or against the sentiments of people may not be allowed to get registered.
3(v)Documents required for design registration
Following are the documents required to register a document in India:
Name and detail address of the applicant
Nature/legal status of the applicant i.e. whether the applicant is a natural person or company etc.
For start-ups, the applicant should provide a certificate of registration.
The applicant is also required to file the description of the article along with the identification of the class as per the classification(1).
4.Rights conferred by the registration of a design patent
Registration of a Design confers on the owner copyright to use the design for the article for which it was registered. This, in effect, means that the owner has an exclusive right to use the design for the article under which it was registered. Any registered design infringement confers the owners right to sue the infringer for damages.
Thus, registering a design is vital to protect the appearance of your product. An important point to note is that an article must have its existenceindependentof the design. This means that even if the design is not applied to the article, the article can continue to exist. Thus, stamps, labels, and the like cannot be considered articles for registering designs.(2)
5.Steps involved in design registration under the Design Act, 2000
(i)Prior art work
The applicant will conduct a search and find out whether any similar design has been previously registered or not. There are various databases paid as well as unpaid to help the applicant for search such asIP Indias online public design search platform and WIPOS Global design database. If the applicant is unable to find the number of a similar design, then Form no 7 is filed along with Rs.1000.
(ii)Representation and classification of designs
The applicant needs to recognize the exact class of design from the Locarno classification based on the function of the article. And a representation/diagram should be prepared on white A4 size white paper and must indicate the details of the design and applicant clearly. If the applicant does not prepare it in A4 size then the portal wont accept it and can delay the application. Applicants details would be the name, address, and name of the article on which design has been applied. If the applicant is a foreigner, then he/she shall require to give an address for services in India.
(iii)Statement of novelty
Statement of Novelty is the most important point of an application. It will be stated below the representation sheet. This will enable a speedier examination of the design and registration process. According to the given below statement of novelty, the applicant can draft this statement:-
The novelty resides in the shape and configuration of the XYZ design as illustrated.
(iv)Disclaimer
Often the is confused with a trademark. Thus, disclaimer becomes essential to convey that under this registration, no claim of use is made to any trademark. Also, it is essential to specify if there are any powers of attorney. Following is the sample draft of the disclaimer:-
No claim is made by virtue of this registration to any right to the exclusive use of the words, letters, nor of trademarks appearing in the representation.
(v)Claim a priority date
If the application is made in conventional countries or countries in which are members of the intergovernmental organizations, then in that case, the applicant can claim a priority date in India. This shall be the date of filing the application in any such country (provided application must be made within 6 months in India.)
(vi)Payment of fees
Payment of fees can be done by cheque or draft payable at Kolkata head office or in cash. The application fee for registration is Rs. 1000 and Rs. 2000 for renewal.
(vii)Other initial processing of application
At this stage, an applicant has allotted a registration number when an application is filed with all related documents and fees attached therewith. The application can be filed either at the Design Office, Kolkata or any of its branches in Delhi, Mumbai or Chennai. Then a substantive examination is conducted by the examination officer and the report is presented within 2 months.
(viii)Facing objections
If an applicant receives any formal objections, then the applicant is given an opportunity to amend those objections by filing a written response. If the examination officer is not satisfied with the written reply, then an opportunity for a hearing will be given. If the applicant still fails, the design is declared non-registrable. All this is done within 6 months from the date of filing.
6.Final stage of registration and publication
If all stages are cleared by the applicant, then the application will be registered and published in the patents office and a certificate of registration will be issued. Registration of design will be valid for a period of 10 years and can be renewed for another 5 years. All this process will be completed within 8 to 12 months.(3)
7.Conclusion
Preserving originality is the essence of Intellectual Property rights. In India, it is not compulsory to register an industrial design under Design Act, 2000 for usage. But for the better commercial value of the product, gaining new customers, promotion of the brand in the whole world, it becomes extremely essential. Some articles or products are very dynamic and ever-changing in nature and they deserve to get legal protection for their owner. Thus, the object behind the creation of this Act is to regulate the design registering process by industrial means.
But in 2021 also, people tend to ignore the importance of registration of intellectual properties as it is not compulsory in India to register them. Mostly, small and medium business enterprises are unaware of how they can gain more commercial value for their product and promote their brand by registering their Industrial Designs. For successful registration of various IPs, people should hire an attorney who has good knowledge of IP as it might help them avoid IP infringement cases.
8.Citations:
1. Procedure for registering an Indian industrial design available at: https://blog.ipleaders.in/procedure-registering-indian-industrial-design-online/ (last visited on 5 Dec, 2023)
2.Industrial Design Patent in India available at: https://www.intepat.com/blog/industrial-design-registration-india/ (last visited on 5 Dec, 2023)
3.Steps involved in registration of Design Act available at: https://blog.ipleaders.in/steps-involved-in-registration-of-design-act-2000/ (last visited on 5 Dec, 2023)
