The Design Act governs the protection of industrial designs in India, ensuring that original and novel designs receive legal protection.

The procedure for registering designs under the Design Act involves various steps and compliance with specific provisions to ensure that the design meets the criteria for registration.

What is Design?

A design refers to the aesthetic and visual aspects of a product or an article, including its shape, configuration, pattern, ornamentation, or composition of lines or colors.

In legal terms, design typically pertains to the external appearance or decorative features applied to a product, which make it appealing and distinguishable from other products.

In the context of industrial design law, as outlined under the Designs Act, 2000 in India, a design must meet specific criteria to be registered and protected:

1. Novelty: It should be new or original, meaning it has not been published or used before.
2. Non-Functionality: The design should not be solely functional; it must primarily serve an aesthetic or ornamental purpose.
3. Application to an Article: It must be applied to a physical article by an industrial process.

Examples include the shape of a bottle, patterns on textiles, or the exterior of a vehicle. These designs contribute to the product’s visual appeal and can be protected to prevent others from copying them.

Also Read: Salient Features of the Design Act, 1911

Introduction to Design Registration

Design registration provides exclusive rights to the owner over the new and original design of any product. In India, the registration is governed by the Designs Act, 2000.

The primary purpose of design registration is to ensure that the visual appearance of a product is protected from unauthorized copying or imitation.

The procedure is clearly outlined in Chapter II of the Designs Act, which lays down the responsibilities of the Controller, the application process, and various rules regarding the registration of designs.

Controller of Designs

The Controller-General of Patents, Designs, and Trade Marks appointed under the Trade and Merchandise Marks Act, 1958, functions as the Controller of Designs under the Designs Act.

The Controller supervises the entire registration process and is vested with the power to appoint officers and examiners (Section 3).

The Controller’s office is responsible for accepting or rejecting applications and overseeing the publication and examination of designs.

Also Read: Powers and Duties of Controller of Designs

Prohibition of Registration of Certain Designs

Section 4 of the Act specifies that certain types of designs are not eligible for registration.

These include:

• Designs that are not new or original.
• Designs are disclosed to the public before the application (in India or any other country).
• Designs that are not distinguishable from known designs.
• Designs containing scandalous or obscene material.

The Controller has the authority to refuse registration if a design falls under these categories.

Registration Process

Step 1: Application for Registration

• Who can apply?: Any person claiming to be the proprietor of a new or original design that has not been previously published in any country and is not against public order or morality can apply for registration (Section 5).
• Form and fee: The application must be in the prescribed form, filed in the Patent Office, and accompanied by the prescribed fee.
• One class per application: A design may be registered in one class only. If there is doubt regarding the class, the Controller decides (Section 5(3)).

Step 2: Examination of the Design

• Controller’s action: Once the application is filed, the Controller refers the application for examination by an examiner (Section 5(1)).
• Examination report: The examiner assesses whether the design is capable of being registered under the Act and the rules and submits a report to the Controller.

Step 3: Refusal or Approval of Registration

• Controller’s discretion: Based on the examiner’s report, the Controller may either approve or refuse the registration of the design (Section 5(4)).
• Appeal against refusal: If the Controller refuses registration, the applicant may appeal to the High Court.

Step 4: Completion within Prescribed Time

• Applicant’s responsibility: If the application is not completed due to the applicant’s default or neglect within the prescribed time, it is considered abandoned (Section 5(5)).

Step 5: Date of Registration

• Effective date: Once registered, the design is considered to be registered from the date of the application (Section 5(6)).

Step 6: Registration of Design in Respect of Particular Articles

A design can be registered for specific articles within a class of articles. If registered for one article in a class, it may also be registered for other articles in the same class without affecting the validity of the design (Section 6).

Step 7: Publication of Registered Design

• Publication by the Controller: After the design is registered, the Controller publishes the prescribed particulars of the design in the prescribed manner (Section 7).
• Public inspection: Once published, the registered design is open to public inspection.

Step 8: Certificate of Registration

• Issuance of certificate: Upon registration, the Controller grants a certificate of registration to the proprietor of the design (Section 9(1)).
• Duplicate certificate: In case of loss or other valid reasons, the Controller may issue one or more copies of the registration certificate (Section 9(2)).

Step 9: Entry in the Register of Designs

• Register of Designs: The Patent Office maintains a “Register of Designs,” which contains details of the design, such as the name and address of the proprietor and notifications of assignments or transmissions (Section 10(1)).
• Computerized record: The register may be maintained in digital form, such as on computer, floppy disks, or diskettes, with proper safeguards (Section 10(1)-(2)).
• Prima facie evidence: The register is prima facie evidence of any matters required to be entered under the Act (Section 10(4)).

Case Laws Involving Design Registration

Bajaj Auto Ltd. v. TVS Motor Company Ltd. (2008)

In this case, Bajaj Auto accused TVS of infringing on its registered design of a motorcycle. The court ruled in favor of Bajaj, reinforcing the importance of registering and protecting industrial designs.

Gopal Glass Works Ltd. v. Assistant Controller of Patents and Designs (2006)

In this case, the court dealt with the scope of “novelty” in design registration. The decision emphasized that mere differences in minor details cannot be considered sufficient for design originality.

Dabur India Ltd. v. Amit Jain (2009)

In this case, the Delhi High Court ruled that using a deceptively similar design for packaging amounts to design infringement. It showcased how registration protects not only products but also associated packaging designs.

Transfer of Design Rights

Section 8 of the Act empowers the Controller to allow the transfer or assignment of rights related to a registered design.

This can be based on legal agreements, assignments, or decisions by a court. In such cases, the application for registration can proceed in the name of the assignee or the new proprietor.

Register of Designs

The Register of Designs (Section 10) is maintained at the Patent Office and contains details such as the name and address of proprietors, notifications of assignment, and other relevant information.

The register serves as prima facie evidence of all matters entered therein.

In case the register is maintained digitally (on computers or diskettes), it still holds the same legal standing as a physical register.

Verdict

The procedure for registering designs under the Design Act is comprehensive, ensuring that only novel and original designs are protected.

The Design Act helps businesses safeguard the aesthetic aspects of their products, which play a crucial role in market competition.

Following the legal process outlined in the Act, individuals and corporations can protect their creative efforts and prevent unauthorized use of their designs.

By adhering to the prescribed procedure, design proprietors can ensure that their innovations receive the protection they deserve, helping to foster creativity and innovation in the industrial sector.