Frequently Asked Questions

Filing Designs in India

A detailed overview of the processes involved in the application and grant of an Indian design from stages, timelines to registration. This section also looks at the restoration of a lapsed design, fee reduction criteria, prosecution and design marking.

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1Design Marking in India: Essential or Avoidable?

Design Marking in India: Essential or Avoidable?

Design marking is a method used by proprietors to signal that their article is protected by design rights. It entails “marking” an article in a manner that informs the public at large that the article in question is the subject matter of a registered design. The issue of whether design marking is necessary or not has come up on occasion before Indian courts, who have tackled how such marking acts as an indicator of registration, and explained the rights that follow. This note discusses some of the questions around design marking in the context of the law and court decisions.

Marking under the Designs Act

Section 15(1)(b) of the Indian Designs Act, 2000 (“the Act) lists the rights of a proprietor to use a design mark. It states:

Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall… cause each such article to be marked with the prescribed mark, or with the prescribed words or figures denoting that the design is registered; and, if he fails to do so, the proprietor shall not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design unless he shows that he took all proper steps to ensure the marking of the article, or unless he shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

This clause establishes that the proprietor of a registered design has the right to “mark” the design in a manner to denote that the design is registered.

The clause also states what happens if such marking is NOT clearly present. It provides that if such marking is not present on a registered design, the proprietor may not be allowed to recover any penalty or damages if there is any infringement of the design. Further, the proprietor may have to additionally prove having taken steps to ensure the marking of the article, or that the infringement took place after the alleged infringer knew or received notice of the design registration.

This provision continues substantively unchanged from its predecessor provision contained in Section 48(1)(b) of the Designs Act, 1911 (“the 1911 Act”), that was repealed by the current Act.

Is design marking mandatory?

A plain reading of Section 15(1)(b) of the Act suggests that design marking is an essential prerequisite if a proprietor wishes to enforce rights pertaining to the infringement of a registered design.

In Herbertsons Ltd. v. Crag Martin Distillery Private Limited (CS No. 2/2003, 14 October 2016), the High Court of Bombay at Goa provides some clarification on whether it is mandatory to “mark” designs. In this case, Herbertsons Ltd. had registered a design for their “bottle” under the 1911 Act, and sued Crag Martin Distillery for copying this design. In August 2001, Herbertsons claimed to have come across a brandy sold by Crag Martin in a bottle with a design identical to its own registered design. An infringement suit was filed in October 2001. The court observed that Herbertsons’ design registration was granted in August 2000, but it started marking its bottles only at the end of 2001. This delay in marking, till at least the end of 2001, amounted to a non-compliance of Section 15(1)(b), and consequently, the court held that Herbertsons was not entitled to claim any penalty or damages in respect of the alleged infringement.

Critically, Herbertsons also failed to establish that the infringement took place after the guilty party knew of the existing copyright in the design. The court observed that, to the contrary, immediately after Herbertsons sent a notice, Crag Martin sought details of the registration and on receipt of the same, started marketing their brandy in bottles of a different shape. This weakened Herbertson’s infringement allegations further, leading the court to eventually rule that the company had failed to successfully make out a case for compensation.

Key features of design markings

The manner and features of a design mark are also important to the act of design marking. Rule 26 of the Designs Rules, 2001 provides that to mark the article, any of the following words can be stated or embossed on the article, REGISTERED, REGD., RD, and the registration number. However, it is not necessary to mark the articles in textile goods where the design is printed or woven, other than handkerchiefs; and articles made of charcoal dust, which are brittle and not sold in a single piece.

In The Pilot Pen Co. (India) Pvt Ltd v. The Gujarat Industries Pvt Ltd (AIR 1967 Mad 215), the Madras High Court said that when there is a little scope to mark the article, the plaintiff-company should have shown that it had taken all proper steps to make known the registration, and that the several defendants had notice of the existence of the copyright in the design. A failure to do so was a “drawback”, according to the court, and it would be difficult to sustain the infringement action or grant relief.

Good practices in marking designs

The issue of design marking has not really come up before courts in India, other than in occasional cases, as discussed in this note, and thus the jurisprudence on this issue remains relatively underdeveloped. Notwithstanding the absence of detailed judicial clarification, it is generally advisable to mark articles appropriately to indicate that the article is subject to design protection.

It is also advisable that in situations where it may not be possible to mark the article itself, e.g., due to size constraints, etc., the proprietor should take alternate steps, such as marking the product packaging, to ensure that the public is aware of the design registration.

Traditional marking methods include embossing the article with relevant words/ registration number, e.g., by stamping, engraving, labelling etc. Although traditional marking has been a common practice for years, with changing times, virtual marking is also slowly gaining popularity. Virtual marking of the product entails providing a link to a relevant webpage on the product. It offers many advantages, especially the fact that updating details on a webpage is a much simpler and efficient process than updating physical markings on the products themselves.

Conclusion

Clearly, any failure to comply with the requirements of Section 15(1)(b) of the Act can become a costly oversight for the proprietor. Both the law and judicial precedents clarify that marking the article with registration information is necessary if the proprietor of a registered design seeks damages against an infringing party. Thus, design marking is both advantageous and recommended for any proprietor as, besides entitling the proprietor to collect damages in the event of infringement, it gives a constructive notice to the public of the registration of the design. This proactive marking and signalling also protects against any accidental infringement by competitors, or even by “innocent infringers” who may otherwise claim to have no knowledge of registration.

2Designs Database goes Digital: Designs E-Register now available online

Designs Database goes Digital: Designs E-Register now available online

The Designs office has now made its register electronically available, thus joining the ranks of the Patents E-register, making the database of registered designs available in entirety. The Designs E-register went live on 5 August 2021, and is available here: https://search.ipindia.gov.in/DesignApplicationStatus/DesignEregister/index .

The Designs E-register is a step up from the online database of registered designs, which has been available on the website of the Intellectual Property Office for some time already. The database that was already available contained only cursory and limited information on registered designs. Previously, if a person needed any degree of detailed information regarding a registered design, they had to file a request for inspection of the physical Register of Designs, accompanied with the prescribed fee, to obtain the details.

With the availability of the Designs E-register, such additional information on registered designs is now accessible to any person in a few clicks, without going through the formal and sometimes tedious process of requesting for an inspection of the physical register. The additional information currently available includes the status of the design application (in force/ lapsed) and the address for service. It is also expected that additional details such as renewal of copyright, assignments, and transmissions of registered design will be available once the E-register becomes fully active. This additional information is in line with Section 10 of the Designs Act, 2000 (“the Act”), which provides for maintaining a register of designs which shall include the names and addresses of proprietors of registered designs, notifications of assignments and transmissions of registered designs, and such other matter as may be prescribed. It is useful to note that Section 26 of the Act allows for the inspection of the register by “any person”.

Critcally, however, and unlike the Patents E-register which gives access to the entire file wrapper (i.e., all the documents filed along with the application), the Designs E-register still does not include copies of the documents submitted in connection with the design application. Thus, if, for example, design representation sheets need to be accessed, one would still need to file a request for inspection at the Design Office.

The Designs E-Register is currently available for applications filed on or after 1 April 2009. For inspecting designs, applications for which were filed before this date, a request for inspection will still have to be filed at the Design Office. Over time, it is hoped that the entire register will become digitally available and will be included in the E-Register. Nevertheless, this is a huge step forward for the Indian IP Office, which is taking up the digitisation challenge enthusiastically.

3Application Stages And Timelines

Application Stages And Timelines

  1. What are the various stages and the timelines involved in the grant of an Indian design application?

An Indian design application goes through the following stages, till grant:

  1. Filing:
    • First application in India: It is recommended to file the first application in India as soon as possible after a design is conceived.
    • Convention design application: Within 6 months from the date of earliest filing in the country or countries under Paris convention/WTO.
  2. First Examination Report (FER) by the Indian Design Office:
    • A First Examination Report (FER) is generally issued within 1-3 months from the date of filing of the application in India.
  3. Reply to FER by the applicant:
    • Reply to FER must be filed within six months from the date of filing. Extension of 3 months is available upon payment of the prescribed fee.
  4. Hearing:
    • If some objections remain pending, a hearing may be offered.
  5. Registration:
    • The application proceeds to registration if no objections remain pending.
    • After the registration of the design, the period of the registration of the design is initially ten years from the date of registration.
    • “Date of registration” refers to date of filing of the application in India in case of an ordinary application; and the date of filing of the application in a convention country, in case of convention application.
  6. Publication:
    • Once an application is registered, it is published in the Journal ordinarily within one month.
  7. Extension of period of copyright:
    • The initial period of registration (ten years) may be extended for an additional period of five years, by filing a request for extension. This request must be filed before the expiry of the said initial period of ten years.
  1. What is the timeline for filing a convention design application in India?

A convention design application must be filed in India within six months from the date of filing the application in a convention country.

  1. How long does it take for obtaining a design registration in India?

It takes 4-10 months for obtaining a design registration in India.

  1. How can the applicant expedite the design registration at the Indian Design Office?

The Designs Act does not provide any specific provision for expediting the registration of a design. However, the applicant could expedite the registration by:

  • Submitting the formal documents along with the application; and
  • Submitting a response to the FER as soon as possible after receiving the first examination report.

4What Can Be Protected In A Design Application

What Can Be Protected In A Design Application

  1. What includes ‘Design’ under the Designs Act, 2000?

As per Section 2(d) of the Designs Act, 2000, “design” includes the following features in two dimensional or three dimensional or both forms:

  • Shape;
  • Configuration;
  • Pattern;
  • Ornament;
  • Composition of lines;
  • Composition of colours;

The aforesaid features must be applied to an article. Further, all the above are required to be the result of an industrial process, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.

Exceptions: The following are expressly excluded from being a design:

  • Mode or principle of construction;
  • A mere mechanical device; (i.e., the functional elements)
  • A trade mark;
  • A property mark;
  • An artistic work.
  1. What includes ‘Article’ under the Designs Act, 2000?

As per Section 2(a) of the Designs Act, 2000, the “article” includes any article of manufacture.

Such an article could be any substance, artificial, or partly artificial and partly natural. Also, such an article should be capable of being made and sold separately.

  1. What are the criteria for registration of a ‘design’?
  1. Design must be in accordance with Section 2(d) of the Designs Act. As per Section 2(d), “design” includes the following features in two dimensional or three dimensional or both forms:
  • Shape;
  • Configuration;
  • Pattern;
  • Ornament;
  • Composition of lines;
  • Composition of colours;

The aforesaid features must be applied to an article. Further, all the above are required to be the result of an industrial process, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.

Exceptions: The following are expressly excluded from being a design:

  • Mode or principle of construction;
  • A mere mechanical device; (i.e., the functional elements)
  • A trade mark;
  • A property mark;
  • An artistic work.
  1. Design should be new or original,
  2. Design should not be previously published or used in any country before the date of application,
  3. Design should not be registered prior to the date of application.
  1. Can multiple designs or multiple embodiments of a design be filed in a single design application in India?

No. Multiple designs or multiple embodiments cannot be filed in a single design application. A separate design application for each embodiment or design of the article will have to be filed.

  1. What are the criteria for deciding the novelty of a design in India?

For a design to be novel, the design must be:

  1. not disclosed to the public, anywhere in India or in any other country, by publication or by use or in any other way, prior to the filing date or priority date (if any); and
  2. significantly distinguishable from known designs or a combination of known designs.
  1. Are dotted lines permissible in drawings?

Yes. The dotted lines may be used to identify elements which are not part of the claimed design. In such a case, features of the design for which protection is sought must be shown in solid lines in the drawing.

  1. Does Indian Design law follow any Design Classification System?

Yes. Indian Design law classifies designs in accordance with Locarno Classification under Locarno Agreement.

In the year 2008, Design rules were amended to provide for design classification based on 10th edition of Locarno classification. India was not a signatory to Locarno Agreement at that time and became a signatory only in June 2019. Subsequently, Design rules were amended in January 2021 to formally adopt the classification based on the current edition of Locarno Classification, published by the World Intellectual Property Organization (WIPO).

Although amended Rules adopt the Locarno Classification, this adoption is not without qualification. Amended Rule 10(1) includes a proviso – registration of any design would be subject to the fulfillment of provisions of the Designs Act, 2000 specifically Section 2(a) and 2(d) of the Designs Act, 2000. Thus, even if a subject matter is included in Locarno Classification, it does not inherently become a subject matter eligible for design protection under the Designs Act.

5Information and Documents Required for Filing

Information and Documents Required for Filing

1. Who can file a design application in India?

The following can file a design application:

  • One or more authors of a design,
  • One or more persons who have acquired the design,
  • One or more persons for whom the design was developed by the author, or
  • One or more persons on whom the right to apply for the design has devolved from the original proprietor.

 

2. What are the documents and information required for filing an ordinary or convention design application in India?

Following documents and information are required:

  • Name, nationality, and address of the applicant
  • Drawing(s)/ photographs in various views
  • Power of Attorney
  • Certified copy of the Priority application (only for convention application)
  • Verified English translation of priority application (when priority application is not in English)

3. Is it permissible to submit DAS codes instead of priority documents?

Yes, it is permissible to submit DAS codes instead of the certified copy of the priority application. Additionally, if the priority application is in a language other than English, a verified English translation of the priority application will have to be submitted along with the DAS code.

6Registration and Publication

Registration and Publication

1. What is the period of registration of a design in India?

After the registration of a design, the design registration subsists for a period of ten years from the date of registration.

The period of registration may be extended by additional five years by filing an application before the expiry of the said period of ten years.

2. What is the date of registration of a design?

In the case of an ordinary application, the date of registration is the date of filing of the application in India.

In the case of convention application, the date of registration is the date of filing of the application in the Convention Country.

3. Can an expired design be re-registered in India?  

No, a registered design, the copyright of which has expired cannot be re-registered.

4. When is a design application published in India?

Indian Design law does not provide for the publication of design applications. Only a registered design is published.

5. Can the publication of a design registration be deferred in India?

There is no provision to defer the publication of a registered design in India. Once an application is registered, it will be published in the Journal ordinarily within one month.

6. Will an abandoned or refused design application be published?

If a design application has been abandoned or refused, the related documents are not published and are not open to public inspection.

7. Are the registered designs open for public inspection?

Yes, the registered designs are open for public inspection. A registered design can be inspected by filing a request along with the prescribed fee at the Design Office.

7Fee Reduction

Fee Reduction

1.Can an applicant claim a reduction in official fee for a design application?

Yes, the applicant can claim a reduction in official fee if the applicant is:

  • a natural person
  • a startup
  • a small entity

2.How much fee reduction is available under Indian Design law?

75% reduction in official fee is available if the applicant is a natural person, a startup or a small entity.

3. Who can claim a startup status?

“Startup” means-

  1. For Indian entity: the entity must be recognised as a startup under Startup India Initiative.

Document required: The certificate of recognition as a “startup” from the Department for Promotion of Industrial Policy and Internal Trade.

  1. For foreign entity: An entity fulfilling the criteria for turnover and period of incorporation or registration as per Startup India Initiative.

According to Notification No. G.S.R. 127(E) by Ministry of Commerce and Industry, under Startup India Initiative an entity shall be considered as a Startup if the following conditions are met:

  • An entity shall be considered as a Startup for upto a period of 10 years from the date of incorporation/ registration.
  • The entity must be incorporated as a private limited company (as defined in the Companies Act, 2013) or registered as a partnership firm (registered under section 59 of the Partnership Act, 1932) or a limited liability partnership (under the Limited Liability Partnership Act, 2008) in India.
  • The turnover of the entity for any of the financial years since incorporation/ registration must not have exceeded one hundred crore rupees (approximately USD 13.7 million).
  • The entity must not have formed by splitting up or reconstruction of an existing business.

Document required: Declaration stating that the conditions under Startup initiative are met, along with appropriate evidence of being Startup.

4. Who can claim a small entity status?

A company/ firm which whose investment in Plant and Machinery or Equipment does not exceed fifty crore rupees and turnover does not exceed INR 50 crores (approximately USD 6.8 million and turnover does not exceed INR 250 crores (approximately USD 34 million).

Documents required:

  1. For an Indian Applicant: Registration certificate issued under the Micro, Small and Medium Enterprises Development Act, 2006
  2. For a foreign Applicant: Affidavit from an authorised representative of the Applicant stating that the Applicant is a small entity, along with appropriate evidence of being small entity as defined under the Act.

5. Can an applicant claim fee reduction in a design application even if the application is transferred from a natural person/ startup/small entity to an entity not eligible for fee reduction?

No, the fee shall be paid in accordance with the revised entity status.

Also, when an application is transferred from a natural person/ startup/ small entity to other entity not eligible for a fee reduction, the difference in official fee between that of a natural person/ startup/small entity and other entity must be paid for all the official fee paid at the Indian Design Office till the date of transfer of application.

6. Will the applicant be required to pay a difference in official fee for a design application if the startup/ small entity status ceases?

When a startup/ small entity status ceases, the difference in the official fee does not become payable. This includes a change in status of startup/ small entity due to the lapse of the period during which it is so recognized, or its turnover subsequently crosses the financial threshold limit.

8Amendments and Alterations

Amendments and Alterations

1. What are the permissible amendments under Indian Design law?

 

Document/ information which could be amended When
Name and address of Applicant address for service – Anytime during the pendency of application;

– after registration

Any document for the amendment of which no special provision is made in the Act may be amended (including class of design, drawings, novelty statement and disclaimers in the representation sheet) – Anytime during the pendency of application;

– after registration

 

2. Can name and/ or address of the Applicant be amended after filing the design application?

Yes. The name and/ or address of the Applicant can be amended after filing the application. Also, a proof of change in name and/ or address needs to be furnished at the Design Office.

3. Can name and/ or address of the proprietor of design be amended after registration of design?

Yes. The name and/ or address of the proprietor of the design can be amended after the registration of a design. Also, a proof of change in name and/ or address needs to be furnished at the Design Office.

4. Can the class, drawings, novelty statement and disclaimers in the representation sheet of a design application be amended after filing the application?

Yes. The applicant can file a request for amendment of class, drawings, novelty statement and disclaimers in the representation sheet of a design application. While considering such requests, only such an irregularity is allowed to be corrected which does not cause any detriment to the interests of any person.

5. Is it mandatory to submit an assignment / mortgage / license deed for a design application or a registered design at the Design Office?

It is mandatory to record any partial/ complete transfer in ownership of a design at the Design Office.

If said transfer is not recorded at the Design Office, the Design Office or the Court may not admit the same to be a proof of title to copyright at a later stage.

6. What is the prescribed timeline for submitting an assignment / mortgage / license deed at the Design Office?

An application for recording a transfer of ownership of a design shall be filed within six months from the date of execution of the assignment/mortgage/ license deed. This period is extendable by a maximum of six months.

7. Will the Design Office publish the name of new assignee/ licensee after recording the transfer of ownership of a design?

Yes. The Design Office will publish the name of new assignee/ licensee upon recordal of the assignment/ license, respectively.

9Prosecution

Prosecution

1. Will a design application be examined for “novelty”?

Yes. The Examiner conducts a novelty search to identify any relevant prior published design.

2. What is the due date for filing a response to the first examination report in a design application?

The due date for filing the response to the first examination report is six months from the date of filing the application in India.

3. Are any extensions available for filing the response to the first examination report in a design application?

An extension of three months is available for filing the response to the first examination report. The request for extension must be filed on or before the six months’ due date for filing the response to the first examination report.

4. Is it possible to conduct a telephonic hearing with the Controller in a design application?

Yes, the Design Office allows telephonic hearing. However, it is subject to the discretion of the Controller.

5. Can the Applicant amend the application in response to the examination report or hearing notice in a design application?

Yes, the applicant can amend the application within permissible limits, to meet the registration requirements.

6. Can the applicant file an appeal against a Controller’s refusal order in a design application?

Yes, the applicant can file an appeal against a Controller’s refusal order. Such an appeal must be filed at the Calcutta High Court within three months of the date of the order of the Controller.

10Restoration

Restoration

1. Can a lapsed design be restored?

A design registration will lapse on termination of ten years’ period from the date of registration if the extension fee for a further term of five years is not paid before the expiry of the original period of ten years.

A lapsed design could be restored for a further period of five years by filing an application within one year from the date of lapse. However, the applicant must provide sufficient reasons for non-payment of extension fee within the ten years’ period.

11Cancellation of Designs

Cancellation of Designs

1. Can a design application or a registered design be opposed?

Only a registered design can be opposed. There is no provision to oppose a design application.

2. What are the grounds for cancellation of a registered design?

Cancellation petitions are filed under Section 19 of the Designs Act, 2000. Following grounds are available:

  • the design has been previously registered in India;
  • the design has been published in India or in any other country prior to the date of registration;
  • the design is not a new or original;
  • the design is not registrable under this Designs Act;
  • design is not in accordance with “design” as defined under Section 2(d).

3. What is the prescribed time for opposing a design?

A design may be opposed by filing a cancellation petition anytime during the subsistence of copyright in the design.

4. Will the Design Office publish the cancellation of design?

Yes. The Design Office publishes the outcome of a cancellation proceeding of a design.

5. Requirements Before Delivery on Sales

  1. Should the design registration number be marked or embossed on the product?

Yes, it is recommended to identify the design registration number on the product. If the registered proprietor fails to mark an article, he may not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design.

Also, if the proprietor fails to mark the product, he may have to additionally prove that he took all proper steps to ensure the marking of the article, or that the infringement took place after the alleged infringer knew or had already received a notice of the existence of copyright in the design.

  1. How should the proprietor mark the articles to indicate design registration?

To mark the article, any of the following words can be stated or embossed on the article:

  • REGISTERED;
  • ;
  • RD, and
  • the registration number

However, it is not necessary to mark the articles as required above in:

  • textile goods in which the design is printed or woven, other than handkerchiefs; and
  • articles made of charcoal dust, which are brittle and which are not sold in a single piece.


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