Safeguarding Creativity: A Guide To Protecting Designs in India

What are designs and why protect a design: 

In the world of commerce, the impact of designs cannot be overstated. Whether it’s a luxury handbag, an automobile, a smartphone, or industrial machinery, products often become instantly recognizable through their distinctive designs.

A design, in legal terms, encompasses the features of shape, pattern, configuration, ornament, or composition of colors or lines. These features, applied in two or three dimensions through various processes, contribute to the visual appeal of the finished article, creating a unique and attractive identity.

Design is not merely about aesthetics; it embodies the essence of an article, making it stylish, appealing, and distinct. The uniqueness of a design is a key factor that sets a product apart, enhancing its market presence and commercial value. Design protection, achieved through registration, plays a crucial role in fostering fair competition within industries. By encouraging creativity, originality, and novelty, registered designs contribute to a vibrant marketplace.

Benefits of Registering a Design:

• Protection against Infringement:
  •  A registered design empowers the owner to take legal action against any unauthorized copying or imitation, providing a robust defense against infringement.
  •  In case of infringement, the owner can file a case to recover losses in sales and damage to goodwill, ensuring a swift response to protect market standing.

• Return on Investment (ROI):
  • Registration elevates the status of a design to an intangible asset, bolstering the owner’s intellectual property (IP) portfolio.
  • Registered designs create additional revenue streams, offering a tangible return on investment through sales, licensing, or use as collateral for financial transactions.

• Promotion of Novelty and Creativity:
  • Design protection encourages designers to create original and unique products, fostering a culture of innovation within industries.
  • The registered design imparts a unique and distinct character to the product, setting it apart from competitors and enhancing its market appeal.

• Product Differentiation and Licensing Opportunities:
  • A registered design gives the owner a competitive advantage by distinguishing their product from others in the market.
  • Owners gain the ability to license their designs to third-party producers, opening up opportunities for collaboration and expanding the reach of their creative endeavors.

Application Procedure in India: 

The application process in India is governed by the Design Rules 2001 and the Designs Act 2000. Submit design registration applications to the Office of the Controller General of Patents, Designs, and Trademarks in Kolkata.

Applying for Registration of Design:

Applicants can personally submit design registration applications or enlist the assistance of a professional, such as a patent agent or legal practitioner. Non-resident applicants, however, are required to engage the services of an agent residing in India. This ensures compliance with registration procedures and facilitates a smooth application process

Basic requirements of design registration:

For a design to qualify for registration and protection according to the Design Act, 2000, it must meet the following key criteria. The official languages for an Indian design application are English or Hindi.

• Novelty Requirement:

• • The design should not have been previously published or disclosed to the public, either in India or elsewhere, through use, prior publication, or any other means.

• Direct Application to the Article:

• • • The design must be applied directly to the article itself, ensuring a tangible connection between the design and the physical object.

• Adherence to Public Order and Morality:

• • • The design should not contravene public order, morality, or the security of India, ensuring it aligns with ethical standards.

• Non-Prohibition by Authorities:

• • The design should not be prohibited by the Government or any authorized institution. Designs conflicting with public morality or sentiments may not be eligible for registration.

Documents required for design registration: 

To secure a filing date and register a design with the Indian Patent Office, the following documents must be provided:

• Form 1 Submission:

• • • Complete Form 1 in the prescribed format, including the applicant’s name, detailed address, and nature/legal status (individual, company, etc.). Start-ups should include a certificate of registration.

• Article Description and Classification:

• • • File a description of the ‘article’ along with the identification of the class as per the Locarno classification.

• Images/Drawings:

• • • Submit a minimum of four images or drawings of the article from various angles, covering front, back, left, right, top, bottom, and perspective views.

• Power of Attorney:

• • • Provide the original Power of Attorney executed in favor of the authorized agent.

• Priority Documents:

• • • Include priority documents if applicable.

• Prescribed Filing Fee:

• • Accompany the application with the payment of the prescribed filing fee.

By furnishing these essential documents, applicants can initiate the design registration process, ensuring a comprehensive submission that aligns with the requirements of the Indian Patent Office.

Prerequisites to be adhered to before Filing: 

• Prior Usage Check:

• • • Before applying, conduct a search using resources like IP India’s online design search and WIPO’s Global Design database to ensure the design hasn’t been previously registered.

• Classification Clarity:

• • • Identify the precise Locarno class based on the article’s function. For designs spanning multiple classes, file separate applications for each.

• Representation Diagram:

• • • Prepare a clear representation on A4 size white paper, detailing the design and applicant information. Foreign applicants should provide an address for service in India.

• Statement of Novelty:

• • • Include a statement of novelty beneath the representation to highlight the unique aspects of the design.

• Disclaimer for Trademarks:

• • • Clarify that the registration doesn’t claim any trademark use to avoid confusion, particularly when designs may resemble trademarks.

• Fee Payment:

• • • Pay the registration fee, Rs. 1000, and renewal fee, Rs. 2000, either by cheque, draft, or in cash at the Kolkata head office.

• Priority Document Submission:

• • • If the Priority Document isn’t submitted initially, it can be provided within 1-3 months with the prescribed fee, and it must be in English.

• Application Filing:

• • Submit the application at the Design Office in Kolkata or its branches (Delhi, Mumbai, or Chennai). The examination, conducted by an examination officer, results in a report within 2 months.

Receiving Objections: 

Upon receiving formal objections, the applicant can address them by submitting a written response. If the examination officer remains unsatisfied, a hearing opportunity is provided. Failure to meet the requirements within six months from the filing date results in the design being declared non-registrable. Swift resolution ensures a timely and efficient process.

Final stage of registration and publication: 

Upon successful completion of all stages, the design application is registered, published in the patent office, and a registration certificate is issued. The design registration is initially valid for 10 years and can be extended for an additional 5 years through a Rs 2000 fee payment.

Online Filing: 

As of December 16, 2022, applicants are strongly encouraged to leverage the online portal for submitting forms and documents. Physical submissions are no longer mandatory, except for assignments, an attested/notarized copy of the original Power of Attorney, and an original affidavit (if applicable) for electronically filed applications. These physical documents should bear digital signatures. However, the option for offline filing remains available for those who prefer it.

Conclusion: 

The multitude of benefits highlighted above underscores the importance of design registration. Beyond securing legal safeguards, registering a design is essential for shielding a brand from infringement and augmenting its commercial worth. Filing for design protection becomes a strategic imperative for brand owners seeking comprehensive protection in the competitive market landscape.