DESIGNS ACT 2000

DESIGNS ACT 2000

 -KGKRISHNAMURTHY, Asst. professor, MKLC, Hassan

 ‘Design’ under Designs Act, 2000

    A design must be some 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 chemical, 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.

•Article under the Designs Act, 2000

- 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.

Designs not registrable under the Act

  A design which- i) is not new or original; or

 ii) 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

iii)  is not significantly distinguishable from known designs or combination of known designs; or

iv) comprise or contains scandalous or obscene matter, shall not he registered. 

Duration of the registration of a design

•A design registration will initially last for 10 years from the filing date of the application and may be extended to further for a second period of 5 years. Thus the maximum period of registered design is 15 years.

Object of registration of designs

- 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.

- 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.

Advantages of a design registration

   Designs should not be seen as an alternative to patents but as a complementary protection. Design registration is cheaper to obtain than patent protection and the application procedure is far shorter.

• If the expected life-time of a product is short, and the product will be simple to produce, the design registration may be more useful than patents.

•Action can be taken against an infringer and, unlike with copyright, actual copying of the protected design is not required to be proved.

Disadvantages of a design registration

•Design protection does not protect a method of operation. It only protects features which are apparent in the normal use of the article. A design registration does not prevent others from producing a product having the same or similar functions to a product embodying the design but it prevents others from applying the same design features to products.

Rights conferred by registration

 The registered owner of the design gains the copyright in the design, ie he has the exclusive right to apply the design to any article in the class in which it is registered.

-Subject to the following conditions:

  i) He must supply the exact representation/specifications, as required by the controller . If this is not done, the controller may erase his name from the register.

 ii) The articles on which the design is applied should be marked with the word “registered” or “regd” or “rd”, followed by the registration number. The exceptions to this rule are in the case of designs registered for lace and printed or woven textile goods.

Essential requirements for the registration

i) 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.

ii) The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article.

iii)  The design should be applied or applicable to any article by any industrial process.

iv) The features of the design in the finished article should appeal to and are judged solely by the eye.

v) Any mode or principle of construction or operation or anything which is in substance a mere mechanical device, would not be registrable design.

vi) The design should not include any Trade Mark or property mark or artistic works as define under the Copyright Act, 1957. 

Procedure for registration of designs

-Any person, who claims to be the owner of a new or original design that is not previously published in India, can apply for registration of design.

• For the purpose of registration, goods are classified into fourteen classes.

•The applicant may include in the application, a brief statement of the novelty he claims for the design.

• If the application is in order and satisfies all requirements of the Designs Act and the Rules, the Controller will register the design.

Registration certificate

-Normally, it takes 6- 9 months to complete the Registration Procedure.

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 only first application will be considered for registration of design. 

Register of Designs

- a document maintained by the Patent Office 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.

Application for the same design again, if the prior application has been abandoned

-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.

Date of registration 

-except in case of priority, is the actual date of filing of the application.

- In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.

Transfer of the right of ownership

- it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc.

Cancellation of registration

-at any time after the registration of design on a petition for cancellation in Form 8 with a prescribed fee to the Controller of Designs on the following grounds:

   i) That the design has been previously registered in India;

   ii) That it has been published in India or elsewhere prior to the date of registration;

  iii) That the design is not new or original;

   iv) That design is not registrable;

   v) That it is not a design under Clause (d) of Section 2 of The Designs Act. 

Difference between a Patent and a Design

A patent covers the function, operation or construction of a new creation. To be patentable, a function must be innovative, have an industrial application and be described in such a fashion that a man of the art is capable of reproducing the process.

• A design covers the appearance only of a product. A design cannot protect the function of a product. If protecting a product with both a patent and a design registration (i.e. a new product can perfectly include both new functions and a new appearance), the timing of the applications will be crucial, as it must be ensured that the publishing of one or other of the rights does not destroy the novelty of the other application.

Protection of industrial design as an “artistic work” under the Copyright Act

If a design is registered under the Designs Act, it will not be granted protection under the Copyright Act, even though it is an original artistic work. In case the design is not registered under the Designs Act and it is an original artistic work, copyright protection under the Copyright Act will automatically subsist. However, copyright protection under the Copyright Act, will cease to exist as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the copyright owner. Therefore, it is highly recommended that industrial designs are registered under the Designs Act.

Artistic work which are not subject matter of registration

    i) An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration which reads as follows: “Artistic works” means: -

   ' A painting, a sculpture, a drawing (including a diagram, map, chart or plan) or engraving or a photograph whether or not such work possesses artistic quality'.

   ii) A work of architecture and

   iii) Any other work of artistic craftsmanship. 

Classification of goods under the Design Rules,2001

• III Schedule - the classification of goods has been mentioned. Only one class number is to be mentioned in one particular application. This classification has been made on the basis of Articles on which the design is applied.

•Example: If the design is applied to a fruits and vegetables it will be classified under class 01-02. Similarly if the design is applied to a Fan, it will be classified in class 03-04. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible, but period of registration will be valid only upto period of previous registration of same design.
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.

Cost of filing design application in India

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