Embassy of the United States

IPR Toolkit

Designs

Introduction to Designs

An industrial design registration protects the ornamental or aesthetic aspect of an article. Designs may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color. Designs are applied to a wide variety of products of different industries like handicrafts, medical instruments, watches, jewelry, house wares, electrical appliances, vehicles and architectural structures. An industrial design is primarily for aesthetic features. They do not protect any technical features of an article.  Industrial design protection precludes any trademark or artistic work.

The first design related legislation in India was passed by the British Government and was known as the Designs Act, 1911. The Designs Act, 2000, has since replaced this Act. The Designs Act, 2000 and the Designs Rules, 2001 presently govern the design law in India.

The registration of an industrial design in India gives the proprietor an exclusive right to sell, import and apply it to any article.  Design rights are granted on a country-by-country basis, with an Indian registration providing protection only in India. If the rights holder wishes to protect a design in other countries, then it will have to seek protection in each country separately under the relevant law. India has not yet acceded to the Hague System for the International Registration of Industrial Designs, which gives the owner of an industrial design the possibility to have its design protected in several countries by simply filing one application in one language with the International Bureau of WIPO.

Market Entry Planning

India follows the system of "first-to-file." Therefore, it is imperative that a rights holder applies for the registration of its design at the earliest opportunity to ensure that no other person can claim prior rights to the design. Furthermore, an application for design in India has to be filed before publication of the design, in order to be eligible for registration.  The Delhi High Court in Wimco Ltd., Bombay v. Meena Match Industries, Sivakasi & Other {1983 (3) PTC 373 (Del.)}, stated that, "[p]ublication within the meaning of the Act means the opposite of being kept secret. It is published if the design is no longer a secret. There is publication if the design has been disclosed to the public or the public has been put in possession of the design. Russel-Clarke in Copyright in Industrial Design, Fourth Ed. (pages 41-42) says:
"…It is sufficient, and there will be 'publication' if the knowledge was either:
(1) Available to members of the public; or
(2) Actually in fact shown and disclosed to some individual member of the public who was under no obligation to keep it secret.

It is not necessary that the design should have been actually used. There will just as much be publication if it is shown that it was known to the public, without ever having been actually put in use. Thus, publication may be of two types:

(a) Publication in prior documents
(b)  Publication by prior user""

It is advisable that Applicants include the following strategies as a part of their comprehensive overall strategy for protection:

• Hire a local law firm specializing in IPR. See for example, http://www.legal500.com, which lists the various law firms, specializing in different areas of law in India. 
• Apply for a clearance search at the Patents Office in order to ensure that rights holder's design is available for registration.
• Should the design be available for registration, applicants should immediately apply for registration.
• After the design has been registered, rights holders should ensure that the article on which the design is being used clearly mentions the word "Registered" (or any of its abbreviations) along with the Design Registration number. This is to inform the public that the design is registered and that the rights holder has the exclusive proprietary right to use the same. Should the rights holder not do this, in case of any infringement, the rights holder will have to prove that the infringer was aware that he was violating the rights holder's exclusive proprietary rights when he used the infringing design. 
• Should a rights holder discover that its design is being infringed, the rights holder should take immediate steps to protect its design, either by the means of filing cancellations, conducting investigations, sending cease and desist notices or initiating other appropriate legal actions.

What can be registered as a design and who can apply

Any person (including a partnership firm or a body corporate) claiming to be the proprietor of the design can apply for its registration so long as the design is:

• New or original;
• Not previously published in any country;
• Reproducible by industrial means;
• Not contrary to public order or morality;
• Significantly distinguishable from known designs or combination of known designs;
• Not comprised of or containing scandalous or obscene matter;
• Appealing to the eye; and
• Not including anything that is in substance a mere mechanical device. 
  

Registration Procedure

      The registration of a design in India is as follows:

• Select a IPR law firm in India
  The designs law in India allows the proprietor to file a designs application only if they have a place of business in India. Should that not be the case, the rights holder will be required to file an application through an attorney/agent. The attorney/agent can do a designs search, prepare, file and prosecute an application.
• Conduct a design search in order to ascertain the availability of the design
  Should the design be available for registration, the rights holder - or its attorney/agent - can proceed with the filing of the application in India
• Preparing the documents and filing the application
  The application can be filed directly by the Applicant or its assignee or its attorney/agent in the prescribed form. The details that are required in the application form include the name, address and nationality of the rights holder; the class in which the design is to be filed; representation of the design; name of articles to which the design is to be applied; address for service in India and priority details in case the rights holder is claiming priority from a Paris Convention application. The application has to be signed by the Applicant or their attorney/agent. The format of the application to be filed is available at http://www.patentoffice.nic.in/ipr/design/designform.htm. The designs under the Indian law have been categorized in separate classes in order to provide for systematic registration. An International classification of Industrial Designs according to the Locarno Agreement is followed in India and this classification of goods is based upon the function of the goods. Presently there are 32 classes (Classes 1 to 31 and 99), which are further divided into sub-classes. The classification of goods as followed in India is available at http://www.patentoffice.nic.in/ipr/design/des_rule.PDF. The application can be filed at the Patents Offices in Kolkatta, Mumbai, Delhi, and Chennai.
• Review by Designs Office              
  After the application has been filed, the Patent Office reviews it to ensure that it is complete in all respects and thereafter allots an application number to the application.
• Examination of the Application
  During the process of examination, the Patent Office determines if the design is barred for registration. Accordingly, it may issue a statement of objections and the Applicant must respond to the objections that have been raised within a period of three months from the official communication of objection. Should the Applicant not respond to the objections within this time frame, the Applicant is deemed to have withdrawn its application. Thereafter, based on the response to the objections that have been filed by the Applicant, the Controller of Designs determines if the application should be refused, accepted or put up for a hearing.  Should the application be rejected, the Applicant may appeal the order of the Controller of Designs at the High Court.
• Registration
  Following acceptance of an application, the Controller of Designs may direct the registration of the design. The particulars of the application and the representation of the articles to which the design has been applied will be published in the Official Gazette. After the registration of the design, the particulars are entered in the Register of Designs. Typically it takes about 6 to 12 months for the design to be registered.
• Term of Designs Registration
  A design registration is valid for a period of 10 years from the date of registration. This is renewable for a period of 5 years.

The flow chart of the process for registration that is followed by the Designs Office is as follows¹:

After the design has been registered, any party aggrieved by the registration of the design may file an application for its cancellation. The application for cancellation has to be filed in the prescribed format and has to be accompanied by a statement setting out the nature of the Applicant's interest and the facts on the basis of which his application is based. The registered proprietor of the design can contest the cancellation application and after the Controller of Design has examined the evidence and heard both the parties, the matter will be decided and the decision conveyed to the parties.    

Any aggrieved person can also initiate a rectification proceeding before the Controller of Designs on the grounds of non-insertion in, or omission from, the register of designs of any entry, by any entry made in such register without sufficient cause, by an entry wrongly remaining on such register or by an error or defect in any entry in such register. After following the prescribed procedure, the Controller of Designs can make an order for making, expunging or varying such entry as he thinks fit.    

Piracy & Enforcement Remedies  

The following acts, if made without the consent of the registered proprietor and during the term when the copyright in the design subsists, are considered to be piracy:

• 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, or to do anything with a view to enable the design to be so applied;
• 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
• To publish or expose or cause to be published or cause to be exposed for sale the article, knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered.
   
  If a person commits any act of piracy as mentioned above, he shall be liable for every contravention to pay to the registered proprietor of the design a sum not exceeding INR 25,000/- (approximately $625) subject to a maximum of INR 50,000/- (approximately $1,250) recoverable as contract debt in respect of any one design or the registered proprietor can initiate a suit against the infringer.
  
  Civil Litigation: A suit for infringement can be initiated under the Designs Act, 2000.
  
• Jurisdiction and Venue: A suit for infringement and/or passing off can be initiated either in the District Court or in the High Court depending on the valuation of the suit. The suit can be at the place where the rights holder or one of the rights holders actually and voluntarily reside or work for gain or carries on business.
• Elements of the Complaint: In the Complaint, the rights holder is required to demonstrate that the alleged infringing act involves a design that is identical or similar to the design of the rights holder and that the unlawful act interfered with the rights holder's rights of exclusive use or caused the rights holder economic loss
• Statute of Limitation: As a general policy in India and as prescribed under the Limitation Act, the rights holder has a period of three years from the cause of action for filing the suit. However, as design infringement is a continuing offence and the infringer violates the exclusive proprietary right of the rights holder every time he commits a discreet infringing act, the limiting period will run anew with each new act. Nevertheless, it is advisable that the legal action be initiated against the infringer as promptly as possible in order to establish the seriousness of the rights holder's intent before the Court.
• Ex-parte Interlocutory Injunction: Most Indian courts will grant ex-parte interlocutory injunctions provided that the rights holder is able to establish its rights before the Court and establish the gravity of the offence and that the violation of its proprietary rights merits immediate consideration. Ex-parte interlocutory injunction is a temporary injunction granted for the course of the trial restraining the infringer from using the infringing design, without any notice to the infringer.  
• Appointment of the Local Commissioner: Depending on the facts of the case, it is also advisable to ask the Court to appoint a local commissioner on the first date of the hearing to raid the premises of the infringer where the infringing goods are stored, in order to seize the goods.
• Damages: There has been a change in the Indian judicial system in recent times with some of the courts granting damages to rights holders for violation of their intellectual property rights, though such cases are still few and far between.

Provisions under the Customs Laws: Besides the civil and the criminal remedies mentioned herein above, there are also certain provisions under the customs law which prohibit the importation of infringing goods in India. The Customs Authorities have recently promulgated guidelines known as the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, under which the rights holder can record its registered designs with the Customs authorities. These guidelines authorize the Custom officials to seize goods infringing the designs of the rights holder at the border without obtaining any orders from the court.  Under these rules, the Customs authorities have initiated a recordation system under which the rights holder may give a notice in writing to the Commissioner of Customs or any other Customs officer authorized by the Commissioner at the port of import of infringing goods requesting the suspension of clearance of goods suspected to be infringing the design of the rights holder. Subsequent to the filing of such notice, the Commissioner is bound to notify the rights holder within the prescribed time regarding the acceptance or rejection of this notice. In case of acceptance of the notice, the normal period of validity of such registration is one year during which assistance will be rendered by the Customs authorities to the rights holder to prohibit the importation of infringing goods at the border. After the grant of this registration the importation of goods that infringe are deemed to be prohibited, as has been defined under The Customs Act, 1962. The Customs officers have the authority to suspend the clearance of such prohibited goods either based upon the information received by the rights holder or by initiating suo moto action, provided they have prima facie evidence or reasonable grounds to believe that the imported goods are goods infringing the design registration. After the clearance of the suspected goods is suspended, the Customs authorities must inform the rights holder. Should the rights holder not execute the requisite bond and join the proceedings against the importer within the prescribed period, the Customs authorities will release the suspended goods. The rules also empower the Customs officers to destroy the suspended goods under official supervision or dispose them outside the normal channels of commerce after it has been determined that the goods detained have infringed the design of the rights holder and that no legal proceeding is pending in relation to such determination. The rules also prohibit the re-exportation of the goods infringing the industrial design in an unaltered state.

Expected Developments

It is expected that a 'National Design Policy' will soon be in place in India.  The Department of Industrial Policy and Promotion has initiated a consultative process with industry, designers and other stakeholders for formulating this policy. Under this policy, the Government proposes to strengthen design education at different levels, encourage use of designs by small scale and cottage industries and crafts, facilitate active involvement of industry and designers in the development of the design profession, position and brand Indian designs within India and overseas, enhance design and design service exports and create an enabling environment that recognizes and rewards original designs.

Moreover, it is expected that the Customs authorities will soon begin to accept notices from rights holders electronically. The Customs authorities are in the process of upgrading their information technology infrastructure to enable them to do so.

Designs Legislation and Regulation in India

The Designs Act, 2000
The Designs Rules, 2001

International Treaties to which India is a signatory

Paris Convention for the Protection of Industrial Property 
Agreement on Trade-Related Aspects of Intellectual Property Rights  (TRIPS)

Designs Related Websites

http://www.dipp.nic.in
http://ipindia.nic.in/
http://www.wipo.int/designs/en/
http://www.uspto.gov

FAQs

1.   What is the duration of the registration of a design? Can it be extended?
The duration of the registration of a design is initially ten years from the date of registration, but in cases where a claim to priority has been allowed, the duration is ten years from the priority date. This initial period of registration may be extended by a further period of 5 years on an application made to the Controller of Designs before the expiry of the initial period of Copyright. The rights holder may make an application for such extension as soon as the design is registered.

2.   Is marking of an article with the word REGISTERED or with the abbreviations REGD or RD along with the design registration number compulsory in the cases of article to which a registered design has been applied?
Yes it is compulsory for the registered proprietor to mark the article as otherwise the registered proprietor would not be entitled to claim damages from any infringer. This would be essential to establish that the rights holder took all requisite steps to ensure the marking of the article. In the alternative the rights holder would have to establish that the infringer knew of or had received notice of the existence of the copyright in the design before the act of infringement took place. This provision is exempted for textile goods in which the design is woven or printed and for articles made of charcoal dust.

3. Is it necessary that an article by industrial process or means have been made before the application for registration of design is applied?
No, it is not necessary that an article should have been made by industrial  process before the filing of the application for the registration of the design.

4.   Are the registered designs open for public inspection?
Yes, registered designs are open for public inspection after they have been    published in the official gazette on payment of prescribed fee in the prescribed format.

5. What is the fee for filing of an application for the registration of the design?
The filing fee for filing of an application for one design is INR 1000     (approximately $25)

6.       Is it possible to transfer the rights in the design to another party?
Yes, it is possible to transfer the rights in the design to another party either through an assignment, transmission or license.

7. Can the rights holder file the application for registration of the design directly or does it have to be filed through an attorney?
The rights holder can file the application either directly or through an   attorney. However for foreign nationals or entities that do not have a principal place of business in India, the application has to be filed through their agent (i.e. the address for service has to be based in India).

8.    What are the artistic works that cannot be registered as a design in India?
The artistic works that fall within the purview of Section 2(c) of the Copyright Act, 1957 cannot be registered as a design. These artistic works mean:
- a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;
- a work of architecture; and
- any other work of artistic craftsmanship.

1 Source: http://www.patentoffice.nic.in/ipr/design/designs_filing.pdf
2 http://www.cbec.gov.in/customs/cs-act/notifications/notfns-2k7/csnt47-2k7.htm
3 See http://dipp.nic.in/design_policy/national_design_policy.pdf