By Garima Rai, Sr. Associate & Rachna Budhiraja, Associate

Feb 2016

Introduction

Whether it is the print on a sari, a spoon on the breakfast table, a mixer in the kitchen, the flower vase by the window, the automobile, a toy, soap, a mobile phone, everything has a shape, a pattern, configuration which is appealing to the human eye. Since a lot of human ingenuity goes into creation of a design, the creators of designs should be incentivized for their creation.

Definition of Design under the IDA:

According to Section 2(d) of The Designs Act, 2000[1], a design refers to the features of shape, configuration, pattern, ornamentation or composition of lines or color’s applied to any article, whether in two or three dimensional (or both) forms. The design may be applied by any industrial process or means (manual, mechanical or chemical) separately or by a combined process.

An important criteria for design is that when it is applied to an article, then the design in the finished article should appeal to and is judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state. For instance a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. Another example could be cross sectional views of an industrial design cannot be registered.

Further, a design does not include any mode or principle of construction or anything which is mere mechanical device. It also does not include any trade mark or any artistic work. For example, the shape of a car is registrable as a “Design” but the mechanism of the working of the car is not a matter for design.

Following is a case law which clarifies the concept of designs- In Bharat Glass Tube Limited Vs. Gopal Glass Works Limited[2], Appeal (civil) 3185 of 2008, the Hon’ble Supreme Court of India observed that the concept of design is that a particular figure conceived by its designer in his mind and reproduced in some identifiable manner should sought to be applied to an article which will have visual appeal. Therefore, whenever registration is required then that configuration has to be chosen for registration and that configuration is to be reproduced on an article. The idea is that the design can be registered if it is sought to be reproduced on an article. Therefore, both the design of the article and the article to which the design is applied are to be considered together.

In Glaxo Smithkline CH GmbH & Co. v. Anchor Health & Beautycare P. nag], 2004 (29) PTC 72 (Del), it was held that mere Mechanical contrivance does not qualify for design registration. In the matter of Glaxo Smithkline CH GmbH & Co. u. Anchor Health & Beautycare P. ltd, the subject design pertained to design of a tooth brush. The court was of the view that zig zag S bend was a utilitarian and functional part, and by merely putting rubber cushion in the gaps these part does not become a design so as to preclude others from using it. Broadly speaking, a design is registrable, if it has features which in the finished article appeal to and are judged solely by the eye. It is the eye of the consumer of the article who would actually buy the article by looking at the design which is the first impression to the consumer. The purpose of IDA is to preserve the owner of the design the commercial value resulting from the consumers preferring the appearance of the article. The design is therefore manipulated to attract the attention of the beholder regardless of whether or not it makes a favorable appeal to him

Registrability of Design

The IDA lays down the following conditions for registrability of a design seeking protection.

• The most basic and preliminary condition for the eligibility for registration of a design of/on an article is its novelty and originality. The idea of a design being “new” is assessed from the facts that it is not found anywhere else in the world in the form of published documents or usage in public prior to the filing of the application for registration.
• The design should be significantly distinguishable from the known designs or their combinations.
• It should not comprise or contain scandalous or obscene matter.

Design Registration Process in India:

GIP India – Process flow for Patent, TM, Design & Copyright_Page_3

The flow chart above explains the process of design registration in India. An application is filed to the Designs office for registration of design. The Designs office takes up the application for examination. Examination report is issued, communicating defects in the application to the applicant, these defects are corrected and the application is resubmitted to the Designs office for acceptance. Further, examination reports may be issued if the requirements are not met in the response or a hearing may be offered. An application is accepted when all the official requirements and objections are met. In case, the defects as required by the Controller are not rectified the application is abandoned. An application proceeds to registration, upon its acceptance certificate of registration is issued for the period of 10 years.

Fees for design filings

The fee to be paid in respect of any matter is prescribed in the First Schedule of The Design Rules, 2001.[4] The design filing fee is approx. USD 6o for single application in one class, in case of an entity who is not a small entity. For a natural person, the filing fee is approx. USD 15.

Multiclass applications as per Design Act[5]

As per the section 5(3) of the Act, “a design may be registered in not more than one class”. Section 6(1) of the Act reads as “A design may be registered in respect of any or all of the articles comprised in a prescribed class of articles”. Under the Designs Rules 2001 made under the Act, Rule 11(2) reads as “The application shall state the class in which the design is to be registered, and the article or articles to which the design is to be applied.” A reading of the above mentioned Sections of the Act and Rules clearly shows that one application can be made for any one or more or all of the articles comprised in a class.

Thus, these articles may come under any one or more sub- classes under the same class. Further, as provided for in Rule 11(3), that “If it is desired to register the same design in more than one class of article, a separate application shall be made in each class of article and the application shall contain the number or numbers of the registration or registrations already effected”. The official notice dated 20th August 2015 clarifies and mandates the applicants to file a design application in one single class. If they have to file the design in multiple class, then separate design applications are required to be filed in the intended classes.

Tenure of Registered Design in India & Rights Conferred:

In India, once a design is accepted and registered by the Indian Patent Office, the applicant can enjoy his exclusive rights for a period of ten years from the date of registration. This period may be extended for another five years by filing the application for extension along with prescribed fee.

If you have any questions about Design Registration in India, please feel free to contact us at mail@gip-india.in.

Authors:

“Garima Rai is an Associate at GIP India and a Registered Indian Patent Agent. She holds an engineering degree in Information Technology.”

“Rachna Budhiraja is an Associate at GIP India. She is a postgraduate and also a qualified lawyer from University of Delhi. She also has 4 + years of formal training in Japanese language.”