Frequently asked questions

Designs are for goods and articles that appeal to the eye of an individual or to his esthetic. Functional features are not protected under the Law of Designs. For it to qualify for design protection, it must relate to the shape and appearance of the goods or articles and it must be applied by a mechanical or chemical process. Design of garden or the petrol pump cannot be subject matters of design protection. The eligibility for design registration will be judged solely by the appeal to the eye. Section 2(d) read with Section 2(a) and Section 5(1) of the Design Act lays down the definition of the Design.

Section 2 (a) makes it clear that only an article of manufacture and any substance which is artificial or partly artificial and partly natural and includes any part of an article capable of being made and sold separately.

Yes, only if the part of an article is such that it is capable of being made and sold separately.

Designs and patent are statutory rights and the statute prescribes registration as condition precedent for protection. Trade Mark and copyrights where originally common law rights and it is possible to have an unregistered copyright or an unregistered trade mark.

Unlike the Law of Trade Marks that specifically permits multi class registration, Designs Law discourages Multi Class Application. Section 5 (3) provides that a Design may be registered in not more than one class. However we are of the opinion that this is only directory and not mandatory as the Section uses the word ‘may’ instead of the word ‘shall’. Therefore it might be possible to file separate application for each classes. If the Patent and Design Office refuses, then to overcome the prohibition an appeal to the High Court against the Order of the Controller in this regard could be filed.

No. It is not possible to have concurrent registration of both Design and Copyright to cover the shape and appearance of the goods. Normally, an Applicant would be tempted to protect the shape and appearance of the goods by declaring the goods either as an artistic work or a sculpture because of the easier method of acquisition longer duration of protection and no obligation to pay renewal fee. However Section 15 (1) of the Copyright Act makes it clear that Copyright shall not subsists concurrently with design. Section 15 (2) further makes it clear that if an article is capable of being registered under the Designs Act but which has not been so registered, the copyright protection shall cease as soon as the article has been reproduced more that 50 times by an industrial or mechanical process.

Prior to the enactment of Trademarks Act, 1999, the Law did not permit even non-functional shape of a good under the trademarks law. Now it is possible to obtain trade mark registration for goods that have a special shape which does not have any bearing on the functionality. The Trademarks Act does not insist novelty as a requirement for registration. So we are of the opinion that it is possible for an Applicant to obtain Design registration first and when the design registration is about to expire, apply for a trade mark registration claiming prior use from the date of design registration and convert the design registration into a trade mark registration. By this method, the Applicant can protect his novel design in perpetuity. However, before adopting this course of action consult your attorney.

The Registration of following design is prohibited under law: A design which is not novel or original; The design which is anticipated by prior publication or prior public use; A design which is not significantly distinguishable from known designs or combination of known designs; Comprises scandalous or obscene matter.

The definition of design under the Indian Act includes designs with respect to lines or colours, the same being applied to an article whether in a two-dimensional or three-dimensional form.

(i) A statement to the effect as to what part of the Design has been claimed for protection, such as ornamentation, shape, composition of lines and colour, etc. (ii) A statement as to the claim of novelty. (iii) A statement as to the claim of priority.

Yes, one design of a set of articles is allowed to be included in an application.

Yes, a substantive examination is conducted and the following are examined:- (a) Novelty (b) Prior publication in any tangible form anywhere in the world and (c) Should not be against public order and morality (d) Should be significantly distinguishable from other known design or combination of design (e) Should be capable of being applied to a vendible article (f) Whether the classification of the design is proper (g) Whether the application has been filed in the prescribed format and along with the prescribed fee

3 months are provided to respond to the Office Action.

It takes 6-9 months from the filing to the issue of registration certificate.

The term of a design registration right is 15 years (First Registration continues for the period of 10 years. However, the same can be renewed for another 5 years).

Yes. Any time during the subsistence of Design registration, any person can seek cancellation of design registration by filing an Application before the Controller under Section 19 and 31 of the Designs Act, 2000 in Form 17 by paying the prescribed fee of Rs. 500/-.

Section 22 of the Designs Act, 2000 provides that any fraudulent or obvious imitation of a registered design without the consent of the proprietor is unlawful and also prohibits the import of such material which closely resembles a registered Design. The section very specifically provides that in a civil case compensation payable shall not exceed Rs. 50,000/- in respect of infringement of one registered Design. Because the compensation payable is statutorily limited, this is a good ground of insisting an interim injunction even before the commencement of trial.

Copyrights Act and Trademarks Act which provide that the infringements of these rights are cognizable offences where a Police Officer not below the Rank of the Inspector can conduct a search and even arrest without a warrant. Section 22 of the Designs Act, 2000 does not expressly provide for criminal remedies in case of design infringement. The same Section does not specifically bar criminal remedies in case of Design infringement. It might be possible in some cases to prosecute the design infringers under Indian Penal Code for various offences such as conspiracy, fraud and cheating. We strongly advise that you consult an Attorney before initiation of such proceedings.