How to Start a DESIGN REGISTRATION

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Overview of Design Registration

The Designs Act, 2000, which came into effect on May 11, 2001, and is managed under the Design Rules, 2001, governs Design Registration in India. This Act protects the ornamental or aesthetic features of a product, such as its configuration, pattern, shape, composition, or color. However, it does not cover features related to the construction method, mechanical devices, artistic works protected under the Copyright Act, or trademarks protected under the Trademarks Act.

Design Registration grants exclusive rights to the owner, allowing them to use the design for a period of 10 years, with the possibility of extending the registration for an additional 5 years. In the event of any infringement, the design owner can seek legal recourse under the Designs Act.

The application for Design Registration must be submitted to the Office of the Controller General of Patents, Trademarks, and Designs in Kolkata, under the Ministry of Commerce and Industry. This office examines the application and, if it meets the necessary criteria, issues a registration certificate. Applicants are provided an opportunity for hearings and modifications within the allotted time limits to ensure compliance with registration requirements.

Primary Purpose of Design Registration in India

The main purpose of Design Registration is to protect the uniqueness and originality of a design, preventing others from copying it. According to the Designs Act, a design can be registered if it is original, novel, and has been created through an industrial process. The design must have distinct ornamental or aesthetic features that set it apart.

By obtaining a Design Registration, the creator or owner is granted exclusive rights to exploit and commercialize the design. However, filing an application alone does not guarantee registration. The Registrar reviews several factors before granting approval. To ensure a smooth and correct filing process, it is recommended to seek expert guidance when applying for Design Registration.

Advantages of Design Registration in India

Here are some key advantages that an owner can enjoy after obtaining Design Registration in India:

  1. Increased Commercial Value: A unique and attractive design enhances the appeal of an ornament or product, which in turn boosts its marketability and commercial value.

  2. Protection of Visual Features: Design Registration safeguards the visual aspects of products and packaging. While some companies rely on copyright protection, disputes often arise over its validity. Design Registration offers a more reliable way to prove ownership and protect these rights.

  3. Exclusive Legal Rights: Once a design is registered, the owner has the exclusive right to take legal action against any party that copies or uses the design without permission. This ensures that the design remains authentic, unique, and exclusive to the creator.

  4. Market Differentiation: By adding creative elements to their product, the design owner can establish a unique identity in the market. This originality helps the product stand out and carve its own niche among competitors.

Eligibility Criteria for Design Registration in India

To register a design and protect it under the Design Act, 2000, the following criteria must be met:

  1. Exclusion of Artistic Works, Trademarks, or Property Marks: The design should not include artistic works, trademarks, or property marks.
  2. Design Features: The design must be based on features such as patterns, ornamentation, shapes, configuration, or composition applied to an article.
  3. Originality: The design should be original and unique, and it should not have been published in any country before the application date.
  4. Visual Appeal: The design should be appreciated primarily through visual perception. The process of creation and application is irrelevant to the registration.
  5. Distinctiveness: The design must be distinct from other designs already registered. Even minor similarities with existing designs may result in rejection.

Features of Design Registration

  1. Protection: Registered designs are listed by the Patent Office to inform competitors and protect against counterfeiting. In case of infringement, the owner can take legal action under the Design Act.

  2. Skilled Filing: To ensure proper protection, it’s crucial to file the design application correctly. Expert professionals, such as Swarit Advisors, can help in drafting and filing the application as per the Design Act’s requirements.

  3. Government Process: The registration process involves a detailed examination by the Registrar, who reviews all facts related to the case. Experts simplify this process through their experience and knowledge.

  4. Timeline: After filing, it is important to monitor the status of the application. The design registration process involves various time-bound responses or actions from the applicant.

Essential Documents for Design Registration in India

The following documents are required for Design Registration:

  • A certified copy of the original design or certified extracts from all disclaimers.
  • Proper declarations related to the design.
  • Affidavits that authenticate the details provided.
  • Any additional documents as required, which may be submitted upon fee payment.

The affidavit should be in paragraph form, including a declaration of truth and verifiability. The costs associated with the registration process are regulated by the controller as per the 4th schedule.

 
 
 

Procedure for Design Registration

Designing is the first crucial step toward a product's success in the market. A significant amount of time and resources are invested in creating designs that capture consumer attention. To protect these valuable designs from being copied or misused, companies seek design registration, ensuring their intellectual property is safeguarded.

In India, the authority responsible for design registration is the Office of the Controller General of Patents, Trademarks, and Designs. The process is governed by the Designs Act, 2000, which defines a "design" as the visual features, such as patterns, color, shape, configuration, or composition, applied to an article or product by any industrial process, which makes it aesthetically appealing. The design must be original, unique, and unpublished before the application date.

Steps in the Design Registration Process:

  1. Check for Prior Registration:
    The first step is to verify if the design has been previously registered. This is done by filing an application with the Patent Office. It's advisable to register the design as early as possible, as India follows the "first-to-file" rule.

  2. Application Submission:
    Next, an application for design registration needs to be prepared, providing details such as the applicant's full name and address, whether the applicant is an individual or entity, the article's description, and its classification.

  3. Examination and Approval:
    After submitting the application, the Patent Office examines it. If everything is in order, the design is approved and registered, followed by the issuance of a Registration Certificate. The design, along with its relevant details, is published in the Patent Journal, making the registration official. This entire process can take up to a year, depending on the complexity.

  4. Registration:
    Upon successful registration, the design is entered into the official register maintained by the Patent Office. The register includes details such as the design number, class, filing date, and the owner's name and address.

  5. Duration:
    The validity of a registered design is ten years from the registration date, which can be extended for an additional five years.

  6. Priority Claim:
    As India is a member of the Paris Convention, applicants can claim priority when filing applications in other countries for the same design or trademark. The priority date is considered to be the date of filing the initial application in India.

  7. Design Infringement:
    In case of design infringement, the design owner has the legal right to take action to prevent further unauthorized use and to claim damages. The infringer may be required to pay a penalty of Rs. 25,000 for the violation.

 
 
 
 

Fine for the Piracy of Registered Design

If someone infringes upon a registered design, they are liable to pay a fine of Rs. 25,000 for each offense, with a maximum limit of Rs. 50,000 for one design. This amount can be recovered as part of the contractual obligation related to the design. The registered owner has the right to file a lawsuit for damages and seek an order for the dismissal of the infringement. However, the total recoverable amount cannot exceed Rs. 50,000 as stated in Section 22(2)(a). The infringement case and recovery of damages can only be filed in the District Court, not in any lower court.

Comparison Between Design Registration and Trademark Registration

  1. Definition:

    • Trademark: A trademark refers to a symbol, word, logo, or name that represents a company or product. Trademark registration protects these elements from unauthorized use, such as copying or selling without permission from the owner.

    • Design: A design registration refers to the protection of the visual appearance of a product or its part, such as its shape, pattern, color, or configuration.

  2. Innovation:

    • Trademark: A trademark does not need to be innovative; it serves as a unique identifier for a product or company.

    • Design: A design must be innovative and unique, as it refers to the visual elements that make the product stand out.

  3. Protection:

    • Trademark: A trademark protects the brand or logo of a business, ensuring that no one else can use a similar mark. If infringed, the trademark owner can sue the violator.

    • Design: Design registration protects the appearance and visual features of a product, such as its shape, configuration, or ornamentation, preventing unauthorized copying or use.

  4. Protection Act:

    • Trademark: The protection of trademarks is governed by the Trademark Act, 1999. It ensures that a trademark serves to distinguish the goods and services of one entity from those of another.

    • Design: The Design Act, 2000 governs design protection. This Act allows for the registration of the visual features, including the shape, configuration, pattern, or composition of lines used in a design.