By Konpal Rae & Sunil Tyagi
Scope of protection of design registration
The aesthetics of any article or product of manufacture
are protected and registered in India under the Designs Act, 2000 (“the Act”
for short) and Designs Rules, 2001, as amended in 2008. A “Design,” according
to Section 2 (d) of the Act, is defined as features
of shape, configuration, pattern, ornament or composition of lines or colors
applied to any article by any industrial process or means. The article can
be a two-dimensional or three-dimensional article, and should be capable of
being made and sold separately. The design in the finished article should appeal
to and be judged solely by the eye.
Protection of design does not include any mode or
principle of construction or anything, which is in substance a mere mechanical
device, and does not include any trademark or property mark or artistic work. Thus,
the Act provides protection or registration right only to the designs that are aesthetic
in nature, applied to articles, and not to the designs dictated by a functional
can apply for design registration?
As per Section 5 of the Act, any person who claims to be
the proprietor of any new or original design can apply for registration of such
design. The term ‘proprietor’ has been defined in Section 2(j) to mean a person
for whom author of the design has executed the work in return for good
consideration, or a person who has acquired the design or the right to apply
the design to any article, or the author of the design and any other person
upon whom the right in the design has devolved.
priority be claimed from a foreign application?
As per Section 44, priority can be claimed from a
convention application if the design application in India is filed within six months of the priority date. India
is a member of the Paris Convention and hence, priority can be claimed from
applications filed in any country or group of countries or member of
inter-governmental organizations to which the Paris Convention applies. It is
to be noted that India is currently not a member of the Hague Convention.
The essential requirements
for registration of a design are:
to be provided when applying for a registration
- Should be judged solely by the eye and the
features of the design should be visible.
- Should be new or original.
- Should not be disclosed to the public in India or
elsewhere in the world by prior publication or by prior use or in any other way.
- Should be significantly distinguishable from designs or
combination of designs that are already registered or pre-existing or disclosed
to the public.
not include any scandalous or obscene matter.
- Should be applied to an article by an
- Should not include any feature that is purely
- Should not include any trademark or property mark or
artistic work as defined under the Copyright Act.
The following forms/
documents need to be submitted to apply for registration of a design:
of protection under design registration
- Application Form-1
- Power of Attorney (POA)
- Representation sheets including different perspective
views of the article clearly showing the novel design. The representation
sheets can include photographs, line diagrams, or sketches.
- Details of Class of articles for which design
protection is sought
- Details of Applicant
copy of priority document if priority is claimed from a foreign application
- Additional documents may be required on a case-to-case
Once the design application meets the stipulated
requirements, registration is granted by the Patent Office. The registration
provides the applicant with copyright in the design for an initial term of ten years, extendible to fifteen years.
associated with design registration
Section 22 of the Act provides for legal proceedings
against piracy of a registered design. It stipulates that it would be unlawful
for any person to, for the purpose of sale and without a license or written
permission of the proprietor, apply the
design itself or any fraudulent or obvious imitation thereof to any article
in the class of articles in which the design is registered or import any such
article or knowingly publish that the article is for sale.
a design registration be opposed?
As per Section 19, any person interested can file a petition for cancellation of the
registration of a design to the Controller at any time after the registration of the design on grounds
specified in Section 19(1). The grounds specified are:
design has been previously registered in India;
design has been published in India or in any other
country prior to the date of
design is not new or original;
design is not registrable under the Act and
e. It is
not a design as defined in Section 2(d) of the Act.
of a design registration
Design registrations are particularly useful since, many
a time, a customer’s purchase decision is based on the product aesthetics, i.e.
shape, look, color combination, ornamentation, etc. Customers may also
associate a product with a particular company or with a particular quality
standard based on the product aesthetics. For companies, the design is the
simplest way of differentiating ones products from competing products. Further,
companies manufacturing imitation products usually copy the design, i.e., look
and feel of a product, to gain market share. As a result, it becomes important
to protect the design from being copied.
registration vis-a-vis product patents
Patent protection is provided to inventive features of a
product that are the result of technological advancement. Such features, which
are functional and/or structural in nature, make the product novel and
inventive. Design registration, on the other hand, is provided for the aesthetic
features and visual appeal of the product. The design registration, by
definition, specifically excludes any functional feature. Thus, patent and
design registrations cover different types of IP.
registration vis-a-vis copyright protection
When considering protection of aesthetic features, businesses
typically look towards copyright protection. However, it is important to note
that the registration of designs and copyrights cannot exist concurrently due
to Section 15(1) of the Copyright Act, 1957. Also, if an article that can be
registered under both design as well as copyright protection is reproduced more
than fifty times by an industrial process, then, as per Section 15(2) of the
Copyright Act, copyright protection to the article automatically ceases. In
such a case, if the design is not registered in India, then it no longer has
any protection against imitation by competitors.
registration vis-a-vis trade mark registration
In general, a design registration can be used to stop
others from copying the registered design irrespective of the mark under which
it is traded. There is some overlap possible between trade marks and designs,
especially with three-dimensional (3D) trade marks. However, there are a number
of issues, such as distinctiveness and association of the 3D trade mark with
the producer of the goods, because of which 3D trade marks are generally
objected to by Patent Offices. Hence, it may be prudent to obtain a design registration
to secure exclusivity at least in the initial period of a product launch.
Further, since there is no restriction on the use of a trade mark before it is
registered, companies may take a call on whether to register a 3D trade mark
for a product or not, after the product is launched and depending on whether it
succeeds in the market.
[The authors are with IPR Division, Lakshmikumaran & Sridharan, New Delhi]