1. What
are Designs and are they protected in India?
2. What can be protected under Law of Designs?
3. Is a design for part of an article(s)
registrable?
4. Is registration compulsory for obtaining
design protection?
5. Is it possible for an Applicant to obtain
design registration in all the classes of goods narrated
in the IIIrd Schedule of the Design Rules?
6. What is the inter-relationship between
copyright and designs? Can one have both copyrights
and designs at the same time?
7. What is the inter-relationship between
registered design and trade mark? Can the shape of the
article be covered under the Trademarks Act?
8. Will all designs qualify for registration
under the Deigns Act, 2000?
9. How are colors handled under the DesignRegistration
Act?
10. Is any claim statement required?
11. Is one design of a set of articles,
such as a set of cups and saucers, allowed to be included
in an application?
12. Is a substantive examination conducted?
13. How many days are provided to respond
to the Office Action?
14. How long does it usually take from
the filing to the issue of registration?
15. How long is the term of a design registration
right?
16. Can a registered design subsequently
revoked by Controller?
17. What are the remedies available for
infringement of a registered design?
18. Can criminal remedies be availed in
case of design infringement?
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1.
What are Designs and are they protected in India?
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.
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2.
What can be protected under Law of Designs?
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.
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3.
Is a design for part of an article(s) registrable?
Yes, only if the part
of an article is such that it is capable of being made
and sold separately.
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4.
Is registration compulsory for obtaining design protection?
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.
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5.
Is it possible for an Applicant to obtain design registration
in all the classes of goods narrated in the IIIrd Schedule
of the Design Rules?
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.
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6.
What is the inter-relationship between copyright and
designs? Can one have both copyrights and designs at
the same time?
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.
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7.
What is the inter-relationship between registered design
and trade mark? Can the shape of the article be covered
under the Trademarks Act?
Prior to the enactment of Trademarks Act,
1999, the Law did not permit even non-functional shape
of a good under the trade marks 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 insists 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.
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8.
Will all designs qualify for registration under the
Deigns Act, 2000?
The Registration of following design is prohibited
under law:
a. A design which is not novel or original;
b. The design which is anticipated
by prior publication or prior public use;
c. A design which is not significantly
distinguishable from known designs or combination of
known designs;
d. Comprises scandalous or obscene
matter.
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9.
How are colors handled under the design registration
act?
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.
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10.
Is any claim statement required?
(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.
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11.
Is one design of a set of articles, such as a set of
cups and saucers, allowed to be included in an application?
Yes, one design of a set of articles is allowed
to be included in an application.
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12.
Is a substantive examination conducted?
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
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13.
How many days are provided to respond to the Office
Action?
3 months are provided
to respond to the Office Action.
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14.
How long does it usually take from the filing to the
issue of registration?
It takes 6-9 months
from the filing to the issue of registration certificate.
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15.
How long is the term of a design registration right?
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).
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16.
Can a registered design subsequently revoked by Controller?
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/-.
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17.
What are the remedies available for infringement of
a registered design?
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.
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18.
Can criminal remedies be availed in case of design infringement?
Copyrights Act and
Trademarks Act which provide that the infringement 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.
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