Registering Industrial Design- protecting your business

Introduction

People decide based on the appearance of the product whether to purchase the product or not. We buy smartphones manufactured by Apple Company because it has superior aesthetic value along with high functionality. So, given the importance of the design, it is necessary to protect original and unique designs that are associated with the various products. This article will talk about the registering of industrial design, what designs are entitled to be registered, registration, and cancellation of design. It will also introduce the reader to provisions of the Copyright Act as applied to Design. It will also show some light on the assignment of design and piracy of the registered design.

Meaning of Design

Design or Industrial design relates to the aesthetic aspect of any product. The more attractive the physical appearance is, the more it will appeal to the sense of sight. Section 3(d) of the DESIGNS ACT, 2000defines the term ‘Design’ as only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional orthree dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article is appealed to and is judged solely by the eye.[1] This actin section 3(d) only specifies things thatdo not qualify as design. As per the provision,the 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 as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined inclause (c) of section 2 of the Copyright Act, 1957.[2]

Which Design is registrable

Section 4 of the design act of 2000 provides that a design must be new and original. It should not be published or used anywhere in India or in any other country in a tangible form, before the date of filing. This is the clause for the novelty of the design. Clause 2 of this provision mandates the originality of the design provides that the design should be significantly distinguishable from other known designs or combinations of known designs. The design should not contain any scandalous or obscene matter.The novelty of the design is also dealt in section 16 of this act, it says that design shall not be considered as published if:

The disclosure of a design by the proprietor to any other person, in such circumstances, as would make it contrary to good faith for that other person to use or publish the design. However, that person discloses the design and breaches the good faith.
The acceptance of first and confidential orders for articles bearing a new or original textile design intended for registration.

Further, section 21 of the act also provides the circumstances where the design is considered asnew and original and is registerable. The circumstances are:[3]

The exhibition of a design, or of any article to which a design is applied, at an industrial or other exhibition to which the provisions of this section have been extended by the Central Government bynotification in the Official Gazette.
The publication of a description of the design, during or after the period of the holding of theexhibition.
If any person without the consent of the proprietor exhibits the design or the article which has the design on it orpublishes a description of the design anywhere during or after the period of the holding of the exhibition.

Registering industrial design

Registering industrial design provides a monopoly period of ten years. Registration of design provides the owner with the option of claiming his/her rights through suit or proceeding in a court of law if the design is copied by any other person. Now let us understand the registering Industrial Design. An application for registering industrial design can be filed before the Controller General of Patents, Designs and Trade Marks. The application shall be filed in the patent office in a prescribed manner along with the fee. The application for registering industrial design is subject to examination by the examiner appointed under section 3 sub-section(2) that whether the design is capable of being registered. If there is any defect then the applicant is given notice of the defect. The defects in the application shall be corrected within six months from the date of application. The controller shall publish the design before registration for public inspection. If the controller is satisfied that there is no issue in respect of the application, then he shall register the design. As per section 9 of the act, the registrar shall grant a certificate of registration to the proprietor of the design. Section 10 of the act provides that the names and addresses of proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and such other matter as may be prescribed must be entered into the register of design kept in the Patent Office. If the application is rejected by the controller, then the applicant can move to the high court for appeal within three months from the date of the controller’s decision.

The documents needed for registering industrial design are four copies of Representation of the design on A4 size paper which shall be exactly similar drawings, photographs, tracings, or other representations of the design. Documentary proof of priority i.e. any previous registration or application for registration. List of countries to claim the priority, if any, where the applications for design have been filed, along with the date and application number.[4]

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Cancellation of registered design

Section 19 deals with the cancellation of the registered design. Under this provision, any person can submit a petition to the controllerfor cancellation of registration of a design. The grounds for filing the petition are:

The design is previously registered in India.
The design has been published in India or in any other country before the date of registration.
The design is not registerable under the Design Act 2000 in India.
The design does not fulfil the condition for a registerable design given under section 2 clause.

An appeal against the order of the controller released under this section can be filed before the High Court.

Rights in lapsed design

Section 14 of the act deals with the rights in lapsed design which has been registered. According to the provision, ifthe registration of a design is restored then the rights of the registered proprietor is subject to the provisions as the controller thinks fit to impose for the protection or compensation of following persons:

Personswhohave begun to availthemselves of the benefit of applying the design between the date when the registration of the design ceased to have an effect and the date of restoration of the registration of the design.
People who have taken definite steps by contract or otherwise to avail themselves of, thebenefit of applying the design between the date when the registration of thedesign ceased to have an effect and the date of restoration of the registration of the design.[5]

After the design is registered, it is entitled to copyright as per section 11 of the act after a design is registered. The registered proprietor of the design is entitled to have copyright in the design for ten years from the date of registration. This provision also provides that if before the expiration of the given term, an application for the extension of the period of copyright is submitted before the controller in the prescribed manner and on payment of the prescribed fee. The controller can extend the period of copyright for the second period of five years from the expiration of the original period of ten years.[6]

Subsequent assignment of design

After registration, on the subsequent assignment of the design, it will be necessary to apply for entry of subsequent ownership under Rule 33 of Designs Rules, 2001. The application for subsequent assignment shall be made to the controller in Form 11. As per Rule 37, Design Rules, 2001, the instrument of assignment has to be submittedin original or notarized copy. The document assigning the right on design has to be in writing. After the agreement between the parties for assignment, an instrument embodying all the terms and conditions governing their rights and obligations regarding the assignment shall be prepared. If anyof therequirements is not met then it will render the instrument invalid.[7]

Registration of assignments:

A person who:

Through assignment becomes entitled to a patent or to a share in a patent.
As a mortgagee becomes entitled to patent.
As a licensee is entitled to any other interest in a patent.

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Such person may apply in writing in Form-16 to the controller General of Patents, Designs and Trademark (CGPDTM) for the registration of his title.

After such an application is made for patent assignment, the CGPDTM will enter in theregister the particulars of assignment of the trademark but only upon satisfaction about the proof of title.[8]

Piracy of design

This act also provides for the piracy of the design under section 22. As per this provision if a person during a period in copyright for that design subsists perform the following acts then it shall be piracy of a design:[9]

If a person without the license or written consent of the registered proprietor applies the design or any fraudulent or obvious imitation to any article in any class of articles in which the design isregistered, or to do anything with a view to enable the design to be so applied for the purpose ofsale.
Imports for the purposes of sale any article belonging to the class in which the design has beenregistered, and have applied to it the design or any fraudulent or obviousimitation, without the consent of the registeredproprietor.
If is known that the design or any fraudulent or obvious imitationhas been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

Penalties for piracy are also provided in the act. Section 22 sub-section (2) provides that if a person commits the offence of piracy, then he shall be liable:[10]

To pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt.
If the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition. Then such a person has to pay such damages as may be awarded and to be restrained by injunction accordingly.
The registered proprietor of the design can file an application under section 53 of the Copyright Act, 1957 before the Registrar of Copyright for stopping the import of products which are subjected to infringement of his right under the Copyright Act, 1957 wherein, after necessary examination, may confiscate such products which are likely to infringe the rights of the registered proprietor.[11]

Conclusion

So,a product is attributed to some aesthetic value. This aesthetic aspect of a product is known as the Design. Design is the ornamental features of the shape, configuration, pattern, or combination of colour applied to the product. The Design act of 2000 is enacted to protect the design created by a person. The exclusive right for the design given to the owner enables him/her to have a monopoly in the market for a period of ten years. The design is protected when it is registered in the Patent office. The process of registration is the same asthe registration of a patent. Penalties are also specified where any infringement of the design rights is committed. Industrial Design is, to some extent, governed by the Copyright Act. The process of assignment of the design is similar to the process of assignment of Patent. Infringement like an act of piracy is specified in this act. The remedies are similar to the remedies available for the copyright. The design act also provides for the cancellation of the registered design. Therefore, it is evident that the design needs to be protected because it can attract consumers to purchase the product. Thus the Design Act 2000 protects the designs. It also protects the owner of the design and his/her business.

References:

[1] Section 3(d) of the Design Act 2000

[2] Ibid.

[3] Section 21 of the Design Act 2000

[4]Registration of Designs in India, http://www.sethassociates.com/registration-of-designs-in-india.html

[5] Section 14 of the Design Act 2000.

[6] Section 11 of the Design Act 2000.

[7] Assignment of Intellectual Property Rights in India,

https://blog.ipleaders.in/assignment-of-intellectual property-rights-in india/#:~:text=Assignment%20of%20Design%20One%20can%20obtain%20copyright%20protection,using%20an%20industrial%20process.%20%28Section%2015%20Copyright%20Act%29

[8] Patent Assignment in India, https://www.ssrana.in/ip-laws/patents/patent-assignment-cost-india-inr-1600/#:~:text=The%20term%20%E2%80%9Cpatent%20assignment%E2%80%9D%20is%20not%20defined%20in,parties%20is%20in%20the%20form%20of%20a%20document.

[9] Section 22 of the Design Act 2000.

[10] Section 22 of the Design Act 2000.

[11] Infringement of Copyright in a Design, By Uzair Ahmad Khan, https://blog.ipleaders.in/infringement-copyright-design/