“Design” as per Indian Designs Act, 2000, means only the features of 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 principal of construction or anything which is in substance a mere mechanical device and does not include any trademark, property mark and copyright as defined under the Indian laws.
What are Registrable Designs
Only those designs that are new or original are subject matter of registration in India. Designs which have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration. Further no copyright in the design shall vest in Applicant if more than 50 copies of the design has been manufactured commercially. A design is not registrable if it is not significantly distinguishable from known designs or combination of designs or if it comprises scandalous or obscene matter.
Types of Design Applications in India
Design application in India can be classified under two categories depending upon their priority claim:
Ordinary design application without any priority
Conventional design application- has to be filed within 6 months from date of filing of conventional application
Design offices in India
There are four design office in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before the design office within whose territorial jurisdiction the agent/ attorney for applicant is located.
Design filing requirements in India
Following are the basic requirements for filing of a Copyright application in India:
Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
Class & Subclass according to Locarno classification
Title of the Article
Nature of applicant’s interest in copyrighting the work
4 sets of Photographs/ drawings/ tracing with various views (top, bottom, front, back, side/s and perspective views) of size at least 13 by 10 cms, if by provided by print, in case of by email only one se
Statement as to novelty
Representations illustrating the views of the article wherein the originality resides
Power of authority in favour of Indian Attorney/ Advocate, to be stamped in India. It may be filed later (before or along responding to official letter). Notarisation or legalisation is not mandatory
Conventional Design filing requirements in India
Following are the basic requirements for filing of a Copyright application in India:
Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
Class & Subclass according to Locarno classification
Title of the Article
Nature of applicant’s interest in copyrighting the work
4 sets of Photographs/ drawings/ tracing with various views (top, bottom, front, back, side/s and perspective views) of size at least 13 by 10 cms, if by provided by print, in case of by email only one se
Statement as to novelty
Representations illustrating the views of the article wherein the originality resides
Details of priority, if any, including application number, date of filing and country of filing. Certified copy of the priority document has to be filed within 3 months from the date of filing of application in India
Power of authority in favour of Indian Attorney/ Advocate, to be stamped in India. It may be filed later (before or along responding to official letter). Notarisation or legalisation is not mandatory
Original or certified copy of assignment document, where the Applicant is assignee and/or where the Priority Application was filed in name of inventor or any other person
Design prosecution in India
Design prosecution in India involves following stages:
Filing of application & issuance of receipt of fee along with application number
Issuance of Examination report with objections, if any ordinarily within 1-2 months of filing of application
Responding to Examination report within 6 months from date of filing of application in India which can be extended further by 3 months on payment of additional fees and request before expiry of 6 months from date of filing
Hearing, if any
Acceptance of application
Issuance of Registration certificate
Term of Design
The term of registration of copyright in Design is for 15 years in total. The registration is valid initially for a term of 10 years and can be renewed for a further period of another 5 years.
Renewal of designs
A registration of design can be renewed for a further period of 5 years after expiry of initial registration of 10 years.
Licensing and Assignment
Owner of the Copyright in Design can license as well as assign his work. The assignment has to be in writing and must clearly identify the work, duration and territorial extent of such assignment.
Appropriate forum for piracy of design
A suit for piracy of design has to be filed in a District court within whose territorial jurisdiction the cause of action has arisen. However, as soon as any ground as to cancellation of design is taken in said suit or any other proceedings, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to High Court for decision.
Acts constituting piracy of a Design
Following acts without consent or license from the registered proprietor amount to piracy of registered design:
Apply or cause of apply to any article in any class in which design is registered, the design or fraudulent or obvious intimation thereof for sale
Import any article in any class in which design is registered, the design or fraudulent or obvious intimation thereof
Knowingly publish or expose or cause of publish or expose for sale an article in any class in which design is registered where design or fraudulent or obvious intimation thereof has been applied
Damages towards piracy of design
For any piracy of registered design the defendant has to pay sum up to Rs. 25,000 towards the contravention. However maximum damages allowed are Rs. 50,000 in respect of a single design.
Injunction
Besides awarding the damages the proprietor may also seek injunction against repetition of contravention.
Defences to piracy of design in India
The defences available for defence in piracy of design are any of the grounds under which design can be cancelled.
