Design Registration - Entrepreneurs Guide

8/6/2019 Design Registration - Entrepreneurs Guide

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Design Registration Entrepreneurs Read

Designs are used in various distinct productions and across various business or commerce, such

as handicrafts, jewelry, garments, medical devices, and engineering appliances. Works of art, such as

paintings and sculptures, also have designs in the sense that the artists have decided how they will look

like and have used paint and brushes or a hammer and chisel to express their artistic intent. Therefore,

designs include intellectual creativity and can be considered as a type of intellectual property.

A design when applied to an article may make a product attractive and appealing, thereby

adding to the commercial value of the article and increasing its marketability. Since designs may be

exploited commercially, therefore, there is always a threat of imitation and copying. Accordingly, a

protection of designs by law is required.

Designs in India are protected under the Design Act, 2000. Object of the Designs Act is to protect

new or original designs so created to be applied or applicable to particular article to be manufactured by

industrial process or means. Sometimes purchase of articles for use is influenced not only by their

practical efficiency but also by their appearance. The important purpose of the Act is to see that the

artisan, creator, originator of a design having aesthetic look is not deprived of his bona fide reward by

others applying it to their goods. Further, the purpose of the act is to provide remedies in case such a

violation takes place.

One has to register the design under the Act to claim remedy against imitation and un-

authorized copying of the designs. However, it should be noted that a design is registered under the

Design Act, 2000 only when it fulfils certain criteria defined under the Act. For example, the design has

to be new or original to be registered under the Act.

A successful registration of design may act as an indispensible legal and strategic business tool.

Firstly, it provides exclusive rights to prevent others from copying the design on articles, for which

protection has been registered. This may give a strategic monopoly to you for the article. Secondly,

design registrations for your articles may act as a very good marketing tool for differentiating your

articles from the articles existing in market. Lastly, the design registration provides you the right to

approach any court seeking injunction or damages against any violation of your copyright on designs.


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Process of Design Registration

1. Who grants design registration and under which Act?

The Controller General of Patents, Designs and Trade Marks grants registration of a design

under the Designs Act, 2000. Any person can make an application to him who claims to be theproprietor of any new or original design.

2. What an applicant needs to do for submitting for design application?

An application in a format as per Form-1 under sections 5 or 44 of the Designs Act, 2000 is

submitted at the Patent Office. The application is accompanied by 5 copies of the design that is required

to be registered. Along with the application, a prescribed fee has to be paid to the patent office for the

registration process.

3. What happens after submitting a design application?

The controller before registration of the design refers the application for examination by anexaminer, who examines your application and prepares an examination report, which he sends to thecontroller. The controller may allow or refuse to register any design presented to him for registrationbased on the examination report. The grounds of refusal could be:

Design is not new or original It 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 It is not significantly distinguishable from known designs or combination of known designs Comprises or contains scandalous or obscene matter shall not be registered

In case a design is refused based on the examination report a legal advice is necessary. A refusalmay be challenged by responding to the grounds of objections in the examination reports. In case, thecontroller is still not satisfied, an appeal under section 5 sub-section 4 may be made to the High Court.

4. Can a registered design be cancelled?

A registered design may also be cancelled under section 19 of the Act if proper application ismade by a person interested before the Controller that

The design has been previously registered in India, or The design has been published in India or in any other country prior to the date of

registration, or The design is not a new or original design or that the design is not registerable under this

Act, or The design is not a design according to the definition of design under the act.


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5. What is the duration of registration of a design? Can it be extended?

The duration of registration of a design is initially ten years from the date of registration, but in

cases where claim to priority has been allowed the duration is ten years from the priority date.

This initial period of registration may be extended by further period of 5 years on an application

made in Form No.3 to the Controller before the expiry of the said initial period of Copyright. The

proprietor of a design may make application for such extension as soon as the design is registered.

6. International protection of designs

India is one of the countries party to the Paris Convention so the provisions for the right of

priority are applicable. On the basis of a regular first application filed in one of the contracting state, the

applicant may within the six months apply for protection in other contracting states; latter application

will be regarded as if it had been filed on the same day as the first application. There is no registration

authority that gives you a worldwide protection of your design.

7. Cost for obtaining Design protection

Minimum Government fee

A sum of ` 1000/- is the prescribed fee along for making an application for registration of one

single design.

Professional fess

Typical professionals may charge anywhere between ` 8,000/- to ` 25,000/- for registration of

one single design.

Issues in Design RegistrationThere are few potential roadblocks for registration of designs. Firstly, your design may fail

registration if the application of design is not made in a prescribed manner, in compliance with the

procedures prescribed in the Design Act, 2000. This highlights the importance of having a specialist

professional who knows how design registration works on your side.

Secondly, your design may fail registration because of the objections raised by the controller in

the examination report. The controller may refuse registration on one or more of the grounds as

described in section 3.3. The first and foremost thing that can be done to avoid this roadblock that is to


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ensure that the design is new or original before filing the design application. This can be done by

conducting a thorough search in design databases. An expert in design matter usually conducts the

search in PAID DATABASES, and other freely available databases. Accordingly, a thoroughly conducted

search can go a long way in understanding the register-ability of your design, and saving the future

official and professional costs.

Usually, objections of the controller may be traversed by vehemently arguing against such

refusal in the Response to the examination reports, especially challenging the applicability of the

sections of the Act in your case. This further highlights the importance of having good professional help

at your disposal. A good professional may easily counter such objections based on his prior experiences

and knowledge about the Design Act and procedures established under the Act.

Thirdly, the design may face hurdles from third party oppositions. Since design registrationprovides monopoly to the use of design, third parties always want to raise objections on the granted

design registration. Accordingly, they may make petitions for revoking your design registration with the

controller. A design once registered is usually difficult to be revoked. However, you may face such

hurdles during the course of your design registration. Again, considering the complexity of the matter, a

professional assistance to solve such problem may serve many purposes. Usually, a well prepared design

application goes a long way in negating future problems with respect to cancellation.


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About Us

We are an emerging Intellectual Property (IP) service company that specializes in serving the IPneeds of inventors, technology entrepreneurs and business owners by protecting inventions, designs,trademarks, copyrights, trade secrets, and other valuable intellectual property assets. We also workclosely in association with foreign IP attorneys, who help us in securing our clients IP in their respective jurisdictions at an affordable cost. We strongly believe in providing service to all, irrespective of theirsize. We encourage academics, individual scientists and entrepreneurs who are starting from scratch, toapproach us. We understand the constraint and limitations of each client and customize our feestructure accordingly.

Inohelp IPHelping you with your IP

Phone: +91-11-43614903Fax: +91-11-43614903Email: [email protected]

Primary (Delhi) Contact Info:310, Sector 18 B,Dwarka, New Delhi - 110075,India

Design Registration - Entrepreneurs Guide

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