Designs

78 What does the term 'Design' mean according to the Designs Act, 2000 ?
79 What are the designs not registrable under the Act?
80 What is meant by an article under the Designs Act, 2000?
81 What is the object of registration of designs?
82 What are the essential requirements for the registration of design under the Designs Act, 2000?
83 Can stamps, labels, tokens, cards, be considered an article for the purpose of registration of design?
84 When does the applicant for registration of design get the registration certificate?
85 What is a Register of Designs?
86 What is the duration of the registration of a design? Can it be extended?
87 Is it mandatory to make the article by industrial process or means before making an application for registration of design?
88 Why is it important for filing the application for registration of design at the earliest possible?
89 Can the same applicant make an application for the same design again, if the prior application has been abandoned?
90 Are the registered designs open for public inspection?
91 Can an applicant file the application for registration of design himself ?
92 Can appeal for cancellation of the registration of a design be made? What are the grounds for cancellation?
93 What is the penalty for the piracy of registered design?
94. What is the cost of filing design application in India?
95 What does Hague Agreement on Industrial Designs signify?
96 What are the changes made to the Hague Agreement?

78. What does the term 'Design' mean according to the Designs Act, 2000 ?

"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 chen-iical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device.

79.   What are the designs not registrable under the Act?

A design which

(a) is not new or original; or
(b) has been disclosed to the public any where in India or in any other country by publication in tangible form or by use in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or
(c) is not significantly distinguishable from known designs or combination of known designs; or
(d) comprise or contains scandalous or obscene matter, shall not he registered.

80. What is meant by an article under the Designs Act, 2000?

Article means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.

81. What is the object of registration of designs?

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 design registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.

82 What are the essential requirements for the registration of design under the Designs Act, 2000?

1. The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to new subject matter. However, if the design for which application is made does not involve any real mental activity for conception, then registration may not be considered.

2. The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Thus, designs of industrial plans, layouts and installations are not registrable under the Act.

3. The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act.

4. The features of the designs in the finished article should appeal to and are 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.

5. Any mode or principle of construction or operation or any thing, which is in Substance a mere mechanical device, would not be registrable design. 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. However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect there of is required to be inserted on its representation, provided there are other registrable features in the design.
6. The design should not include any trade mark or property mark or artistic works.

83 Can stamps, labels, tokens, cards, be considered an article for the purpose of registration of design?

No. Because once the alleged design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the designs applied to it. So, the design as applied to an article should be integral with the article itself.

84 When does the applicant for registration of design get the registration certificate?

When an application for registration of a design is in order, it is accepted and registered, then a certificate of registration is issued to the applicant. However, a separate request should be made to the Controller for obtaining a certified copy of the certificate for legal proceeding with requisite fee.

85 What is a Register of Designs?

The Register of Designs is a document maintained by the Patent Office, Kolkata as a statutory requirement. It contains the design number, date of filing and reciprocity date (if any), name and address of proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee and extract from register may also be obtained on request with the prescribed fee.

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

The total time of a registered design is 15 years. Initially the right is granted for a period of 10 years, which can be extended, by another 5 years by making an application and paying a fee of Rs. 2000/- to the Controller before the expiry of initial 10 years period. The proprietor of design may make application for such extension even as soon as the design is registered.

87 Is it mandatory to make the article by industrial process or means before making an application for registration of design?

No, design means a conception or suggestion or idea of a shape or pattern, which can be applied to an article or intended to be applied by industrial process or means.

88 Why is it important for filing the application for registration of design at the earliest possible?

First to file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates, the first application will be considered for registration of design.

89 Can the same applicant make an application for the same design again, if the prior application has been abandoned?

Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.

90 Are the registered designs open for public inspection?

Yes, registered designs are open for public inspection only after publication in the official gazette on payment of prescribed fee of Rs. 500/- on a request in Form -5.

91 Can the applicant file the application for registration of design himself ?

The application for registration of design can be filed by the applicant himself or through a professional person (i.e patent agent, legal practitioner). However, for the applicants not resident of India, an agent residing in India has to be employed.

92 Can appeal for cancellation of the registration of a design be made? What are the grounds for cancellation?

The registration of a design may be cancelled at any time after the registration of design on a petition for cancellation in Form 8 with a fee of Rs. 1500/- to the Controller of Designs on the following grounds:

1. That the design has been previously registered in India;
2. That it has been published in India or elsewhere prior to the date of registration
3. That the design is not new or original;
4. That design is not registrable;
5. That it is not a design under Clause (d) of Section 2.

93. What is the penalty for the piracy of registered design?

If anyone contravenes the copyright in a design he is liable for every offence to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design.

94. What is the cost of filing design application in India?

The fee for filing application for registration of design in India is Rs.1,000/-.

95. What does Hague Agreement on Industrial Designs signify?

The Hague Agreement Concerning the International Deposit of Industrial Designs first came into existence in 1925. The Agreement aims at providing a mechanism for securing protection of an industrial design in all the member countries by means of an international deposit. The international deposit could be in the form of the industrial product or drawing or photograph or any other graphic representation of the said design. The duration of protection was 15 years from the date of deposit, this term is divided in two periods namely, one period of five years and the other of ten years. This Agreement is now being implemented by the WIPO.

96 What are the changes made to the Hague Agreement?

A Diplomatic Conference was held in June and July 1999 to bring out some amendments in the Hague Agreement. The revised agreement will come into effect after it has been ratified by six of the initial signatory nations to the Agreement. The idea is to provide a way through which a single design application can give rights to protection for that design in member countries. The international design application must designate countries where protection will be sought. The designated countries can refuse to award design rights, if the application does not meet the requirements of national laws. The Agreement does not lay down any particular standards for registrability of the design, leaving this to national laws. Once registered the international registration will have the same effect as a national design registration in those designated countries that have not refused grant for national registration. Other main features of the revised agreement/ treaty are:-

1. International design protection will be available to nationals of a contracting country, domiciled in a contracting country or have industrial or commercial establishment in a contracting state.
2. An international design application may be filed either at the applicant's national office or directly with the International Bureau of WIPO.

3. Two-dimensional designs (textile designs) would be eligible for protection.

4. A formalities examination will be carried out by the International Bureau and then the application will be published if it is found to satisfy the formalities. The publication will be made six months after the registration. This can be deferred to 30 months in some special cases.

5. The International Bureau will, after the registration, send a copy of the

application to each of the designated countries. These countries have to inform the Bureau within six months if national requirements are not met. However, countries that examine design applications for novelty or where opposition system exists, this time is increased to 12 months.

6. Multiple designs may be included in the same application. It is however, required that all products to which such designs relate must be in the same class under the Locarno classification.

It can be seen that there are some similarities with the PCT system for patent applications. India is not yet a member of the Hague Agreement and hence, the above provisions or description may not be of immediate relevance to us. However, there is a strong need to monitor the developments in this area.

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