Any good business man would tell you that the success of any product in the market depends a lot on its aesthetics almost as much as its function. A lot of the times it has so happened that a more aesthetically pleasing product has done better in the market, as compared to competing products that have a higher functional value, merely because of its appearance. Therefore, when it comes to consumer products, appearance plays a huge role and has the effect of influencing the buyer’s decision. This means that in an extremely competitive market it becomes increasingly important for a business to make sure that their unique and original design for their product is protected from competitors who might want to steal or copy their idea, thereby confusing the buyer, and taking advantage of the market.
What is industrial design?
According to the Indian Designs Act, 2000, the term “design” refers to the specific features of an article, whether two or three dimensional. A design of an article may include its shape, configuration, pattern, ornament or composition of lines or colours applied to an article. These features may be applied on the article using any industrial process or means, whether manual, mechanical or chemical. However it may be, the “design” of the article refers to what can be judged solely by the eye.
What does a design protection entail?
The point of a design protection is to reward and encourage original product designs by protecting the creativity and labor of product designers. Although the case may be that the design of an article is directly contributing to its function, or vice versa, the design protection only extends to that of its aesthetic features, not its functions.
The purpose of the design law is not to reward advances in function. Advances in function may come under the patent law, which is separate from the design law. The designs act shows predominance and pre-eminence of the aesthetic elements over the functional elements of an article. [1] However, one may note that there is no stipulation in the legislation about functionality being an impediment to the registration of a design.
Why should I protect my industrial design?
If you’re a business entity launching a brand new product into the market, a smart thing to do would be to register the design of your product before launching it. This is a great and sure way to curb your competition. The proprietor of a registered design is conferred with exclusive rights to apply a design to the article in the class in which the design copyright has been registered. This means that once you’ve registered your design you are entitled for protection of your intellectual property, and therefore, if anyone else infringes on your right you can take legal action against them. You will also have the right to license or sell your design as a legal property for a consideration or royalty.
How is this different from taking a patent or a copyright?
Although the line may seem very thin, a design protection is very different from a patent or a copyright. For starters, patents are registered for protection of new “inventions”. This means that the focus while registering a patent would be on its functionality and content, not its appearance or aesthetic value. Copyrights, on the other hand, don’t even need to be registered. A copyright comes into being the moment a “copyrightable subject matter” (i.e., creative/ artistic work) is created.
What are the essential requirements for registering an industrial design?
An application for registration of a design must be filed before the design has been published.
In order to get a design protection there are certain requirements that your product/design must satisfy. If your design doesn’t fulfill these requirements your application may be rejected. These essential requirements are as follows:
- Novelty or Originality
The design must be “significantly distinguishable from existing designs”. Even designs that are just a modification of an existing design may be protected, but these modifications should be substantial. Trivial modifications made to existing designs will not be granted protection.
- Not previously published
The design that you seek to register must not be a published one. There shouldn’t be any tangible copy of the design already available in the market. However, private or secret use of the design does not amount to publication. Even disclosure of the design by the proprietor to any third person may not amount to publication, as long as it is made in good faith.[2]
- Not contrary to public order, morality or security of India
The design you seek to register must not be contrary to public order, morality or the security of the country. There are sections (s.35, 46) in the Designs Act 2000 which gives the Controller of Designs some discretion regarding what would be contrary to public order, morality or security of the country.
How do I register my design?
Design Applications can now be filed online through the IP India Online portal. The process of registering a design is commonly perceived to be a long and arduous process, but the main reason for such a delay in registering is because of non-compliance of formalities, or error in procedure. Having said that, obtaining a design registration is certainly much faster and cheaper than obtaining a registration for other forms of IP. Although you can apply for a registration on your own, it is always best to hire an attorney or patent agent to ease through the process.
The process of registering a design can be divided into 7 steps:
1.Design Search
Before applying for registration it is recommended to find out whether a registration for any similar design already exists. There are various design databases that help with this search, such as – IP India’s online public design search platform, as well as WIPO’s Global Design Database. Further, if the registration number is known, Form No.6 may be filed along with the prescribed fees of Rs. 500. If the representation of the article or the specimen of the article is filed, Form No.7 along with the prescribed fees of Rs. 1,000 may be filed.
2. Design Representation and Classification
A representation is the exact portrayal of the article for which the design is applied. The pictorial representation/diagram should be prepared on white A4 size paper of durable quality, and must indicate details of the design and applicant clearly. Further the correct class of the design, i.e., the internationally accepted classification of Industrial Designs, must be identified based on the function of the article and provided in the same sheet. This list of classifications may be found in the third schedule of the Designs Rules, 2001.
3. Novelty Statement and Disclaimer
The representation sheet must also include a statement of novelty of the design in order to specify the claim, i.e., whether the applicant is claiming protection over the shape/configuration/ colour combination, etc. This will help provide protection over specific aspects of the design. In case the ornamental pattern of the article is likely to be confused with a trademark, or suggests any mechanical action or contains words, letters, numerals etc., a disclaimer should also be included.
4. Filing of Application
All required documents must be enclosed, including the payable fees must be attached, when filing the application. The application can be filed in either, the Designs Office in Kolkata or the branch offices of the Patent office in Delhi, Mumbai or Chennai. Application fee must be paid through cheque or draft payable at Kolkata, or in cash (if filed in Design Office, Kolkata). Application fee for registration varies from rupees 1,000 to 4,000 depending on the type of the applicant (Individual or small entity or large entity.
5. Examination of Application
After the application has been filed, it is examined by the Controller of Designs. The Design Office conducts a formal evaluation, as well as detailed evaluation of the application.
At the formal evaluation, the formal compliances are checked, i.e., whether the article falls in the claimed class or not, whether the applicant’s identification and particulars are correct or not, or any column which ought to have been filled while filing the application has been left out or not. Considering that applications are filed online by applicants directly, it makes sense to have a formal evaluation so that minor defects can be cured at the early stage itself.
In the detailed evaluation, it is verified whether the applied design is registerable. The novelty statement in the application is mapped with the article. It is also seen whether other parameters of the Act are met by the article in question or not, after which the Design Office may prepare an examination report and send it to the applicant.
6. Response to Examination Report
The applicant is given an opportunity to file a written response to the examination report / office objection and make amendments to overcome the objection. If the Controller is satisfied with the written response, the application is accepted. If the Controller has any objection, generally, an opportunity of hearing is given. If the Controller is not convinced that the industrial design is registerable, it is rejected at the hearing.
Once the design is accepted, it is published in the Official Gazette, so that the public becomes aware that an industrial design has been registered. Registration initially confers a right for ten years from the date of application. It is renewable for a further period of five years. If the fee for extension is not paid for the further period of registration within the period of initial registration, this right will cease.
Authored by Namitha Saju, Jr. IP Associate, BananaIP Counsels
[1]Anuradha Doval v. The Controller of Patents & Designs, 2017(71) PTC 288 (Cal)
[2]Kemp and company v. Prima Plastics Ltd.,1999 (1) BomCR 239
