At a Glance: Design Registration in India

Introduction

In today’s highly competitive market, the visual appeal of a product can be just as important as its functionality. From the sleek curves of a smartphone to the distinct contour of a bottle, a product’s design plays a pivotal role in shaping its identity and market success. Design registration offers a legal mechanism to protect these unique, innovative designs, ensuring that creators can maintain their competitive edge while safeguarding their intellectual property.

In India, design registration is governed by the Designs Act, 2000 and plays a crucial role in protecting the aesthetic elements of various products. This blog delves into the importance of design registration, the process involved, and the key trends shaping the future of industrial design protection in India. Whether you’re a business owner, designer, or legal professional, understanding how to protect your design is vital to sustaining innovation and success in an ever-evolving marketplace.

What is Design?

Designs are the unique visual elements of products that distinguish them in the marketplace. This includes the shape, configuration, pattern, ornament, or composition of lines or colors applied to any product. In the context of intellectual property (IP), protecting these visual elements is essential to ensuring that creators and businesses can prevent others from copying or imitating their designs.

A few famous industrial designs that have stood the test of time are:

  • The Coca-Cola bottle: The unique contour shape of the bottle has become iconic worldwide.
  • The Apple iPhone: The sleek, minimalist design of the iPhone has revolutionized smartphone design.
  • The Volkswagen Beetle: Known for its distinctive round shape, this car became a design classic.

Why is Design Registration Important?

Design registration is essential for businesses and creators alike. It protects the visual appeal of a product, ensuring that competitors cannot replicate or imitate the design for their own gain. The benefits of design registration include:

  • Exclusive Rights: The owner of a registered design has the exclusive right to use it, preventing others from manufacturing or selling products with similar designs without permission.
  • Legal Protection: Design registration provides legal recourse against infringers.
  • Commercial Advantage: A registered design can be a valuable asset that can be licensed or sold.
  • Global Expansion: Registered designs can be extended to international markets, increasing their commercial value globally.

Designs in India

Design registration in India is governed by the Designs Act, 2000. As per Section 2(d) of the Act, “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye. 

The following are expressly excluded from being a design:

  • Mode or principle of construction;
  • A mere mechanical device (functional elements);
  • A trade mark;
  • A property mark;
  • An artistic work.

Further, as per Designs Act, 2000, “Article” includes any article of manufacture. Such an article could be any substance, artificial, or partly artificial and partly natural. Also, such an article should be capable of being made and sold separately.

Eligibility for Design Registration

For a design to be eligible for registration in India:

  1. The design must be new and original.
  2. It should not have been previously published in India or any other country.
  3. The design should not be offensive or contrary to public morality.
  4. The design should not comprise functional or technical aspects of the product; only the visual elements are considered.

Prohibition of Registration of certain designs (Section 4 of Designs Act, 2000). —

A design which—

  1. is not new or original; or
  2. has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or
  3. is not significantly distinguishable from known designs or combination of known designs; or
  4. comprises or contains scandalous or obscene matter, shall not be registered.

Further, designs should not be contrary to public order, morality or security of India. The design which is against public morality or against the sentiments of people may not be allowed to get registered.

Steps to Register a Design in India

Step 1. Filing of a design application in the Indian Patent and Design office: The requirements with respect to filing of new design application in India:–

  1. Complete, Name, address and Nationality of the Applicant; 
  2. Title of the Article; 
  3. Class under which you desire to obtain Design protection;  
  4. Each design registration is directed to a single class of articles, the class as per Designs (Amendment) Rules, 2021 is to be selected as per current edition of “International Classification for Industrial Designs (Locarno Classification)” published by World Intellectual Property Organization (WIPO).
  5. Priority can be claimed in India on the basis of a convention Application provided the Indian Application is filed within six months of the date of filing of the convention Application. 
  6. Certified copy of the priority document/DAS code. In case it is not possible, then these documents can be filed after filing of the Application in India within three months alongwith a formal request and prescribed official fee. 
  7. Verified English translation of the priority document (if priority document is not in English language) at the time of filing of the Application in India. 
  8. Photographs of the Article depicting the top, bottom, front, back, left side view, right side view and perspective view. 
  9. Assignment document in case priority is claimed from US application.
  10. Power of Attorney.
  11. Prescribed official fee-as per legal status of the applicant i.e. whether the applicant is a natural person/small entity or large entity. 

Step 2. Substantive examination of the design application done by Controller of Designs to ensure that design as claimed meets the criteria of novelty and originality.

Step 3. Publication of design is done in the design journal once design is accepted. 

Step 4: Issuance of e-certificate of Design.

The design application form can be viewed on official website of Indian Patent and Design office https://www.ipindia.gov.in/writereaddata/Portal/Images/pdf/Form_1.pdf

Term of Registration

The term of registration of a design subsists for 10 years from the date of registration. The meaning of date of registration is the date of filing of the priority application in the convention country.

In case of ordinary application the date of registration is date of filing of application in India.

Renewal and Restoration of Design 

Right in the design may be extended for a further period of five years, by way of filing a formal request alongwith prescribed official fee and said formal request has to be filed before the expiry of ten year term of registration. The request for such extension may be filed by the proprietor of the design as soon as the design is registered along with the prescribed official fee. 

The registration of design will cease to be effective on non-payment of extension fee for further term of five years before the expiry of ten year term of registration. However, the lapsed designs may be restored, if an application for restoration is filed along with the prescribed official fee within one year from the date on which the design ceased to have effect stating the ground for such non-payment of extension fee with sufficient reasons.

Recent Important Judgements in Relation to Designs

  • Diago Brands v. Great Galleon Ventures Limited, Delhi High Court, 2022-Mosaicing is prohibited for designs to be replicated under Section 4(c) of the Design Act. The word “Novelty” used in the Design Act 2000 should be read differently than the term “Novelty” used in the Patent Act 1970.
  • Novateur Electrical & Digital Systems v. V-Guard Industries Ltd., Delhi High Court, 2023– A concept is different from a design and in order to seek defense of prior publication, it needs to be shown that the design was communicated to the public. Communication of conceptual design to the public will not mean prior publication of the design. 
  • Casio Keisanki Kabushiki Kaisha v. Riddhi Siddhi Retail Venture, Delhi High Court, 2023-For “lack of novelty” to be used as a defence against a Design infringement claim, the lack of novelty or originality has to be seen as on the date when the design was registered. If a design, when registered, does not suffer from lack of novelty or originality, the mere fact that, after it is registered, several persons may choose to copy the said design can obviously not constitute a ground to cancel the registration of the design”.
  • UST Global (Singapore) Pte Ltd v. The Controller Of Patents And Designs, Calcutta High Court, 2023-“Since GUI is a 2-D design, the novelty can be judged by the eye as soon as the device is turned on. Further, application of GUI is via embedding source code in microprocessors and then displaying on screen of the device and thus the same can be regarded as “industrial process”.” Thus, both “screen displays & icons” as well as “graphic symbols, graphic designs and surface patterns” are registerable as designs. 
  • TTK Prestige Ltd v. KCM Appliances Private Limited, Delhi High Court, 2023-“Functional designs are not per se ineligible for registration and can be registered if they possess any aesthetic appeal.”
  • Sirona Hygiene Pvt. Ltd. v. Amazon Seller Services Pvt. Ltd., Delhi High Court, 2023– “(i) Registration stands as a factor in the registrant’s favour as prima facie evidence of the validity of the design. (ii) When considering a design for a utilitarian product, the extent to which differences in the prior art and the new design affect the product’s utility should be taken into account. Even minor visual differences in a utilitarian design can have a substantial impact on the product’s utility.” 
  • Pidilite v. Astral Design Infringement Case – The Bombay High Court granted an ad-interim injunction to Pidilite Industries, effectively restraining Astral Limited from using containers that were found to be deceptively similar to Pidilite’s registered M-SEAL PV SEAL containers.

Recent Trends in Design Filings in India

According to the 2022-23 Annual Report published by the Indian Patent, Design and Trademark Office, 22,698 design applications were filed in India in 2022, with the majority coming from the consumer goods and electronics sectors, showing a steady rise in design protection awareness in India.

As India’s economy diversifies and industries like tech and consumer goods evolve, design protection is becoming a key differentiator in the market.

Conclusion

Design registration in India is not only crucial for protecting the aesthetic appeal of products but also offers substantial commercial benefits. As India continues to see a rise in industrial design applications, businesses must be proactive in securing their designs.

In today’s rapidly evolving market, businesses cannot afford to overlook design registration as part of their intellectual property strategy. Protecting your designs not only safeguards your innovation but also ensures you stay ahead in a competitive marketplace.

References

  1. https://www.ipindia.gov.in/writereaddata/Portal/Images/pdf/The_Designs__amendment___Rules__2021.pdf
  2. https://spicyip.com/2023/01/spicyip-weekly-review-january-10-january-16.html
  3. https://indiankanoon.org/doc/32899326/
  4. https://indiankanoon.org/doc/27191234/
  5. https://indiankanoon.org/doc/93719428/
  6. https://indiankanoon.org/doc/44587046/
  7. https://spicyip.com/wp-content/uploads/2023/04/TTK-Prestige-v.-KCM-Appliance-1-1.pdf
  8. https://spicyip.com/2023/03/delhi-high-court-registration-of-a-design-can-be-prima-facie-proof-of-validity.html
  9. https://indiankanoon.org/doc/63420132/
  10. https://ipindia.gov.in/writereaddata/Portal/IPOAnnualReport/1_114_1_ANNUAL_REPORT_202223_English.pdf

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