By Aastha Aggarwal and Konpal Rae
The registration of designs in India is governed by the Designs Act, 2000, which was made effective from May 11, 2001, and the Design Rules, 2001. As per the Act, a design registration protects the features of shape, configuration, pattern, ornamentation or composition of lines or colors applied to articles. Since a design registration seeks to protect only the visual appeal of a design, it does not include in its scope any feature that is a mode of construction or mere mechanical device or any artistic work covered under the Copyright Act or any trademark covered under the Trademarks Act [see end note 1].
Further, each design registration is directed to a single class of articles [see end note 2], the class being selected based on a classification system provided in the Third schedule of the Act. The classification system is based on the International Classification System (Locarno Classification). A design registration exists for an initial period of ten years from the date of registration, which can be further extended for five years upon request [see end note 3]. The date of registration is the date of application for registration [see end note 4] except in the case of an application that claims priority from an application filed previously in a convention country, in which case the date of registration is the date of filing of the priority application [see end note 5].
The design applications have to be filed with the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) at Kolkata, under the Department of Industrial Policy and Promotion (DIPP) in the Ministry of Commerce and Industry. This office conducts an examination and grants the registration if the application meets all formal and substantive requirements of the Designs Act, 2000. The applicant is provided with sufficient opportunity, including a hearing, to amend their application, within permissible limits, to conform to the registration requirements.
Trends in filing and registration
With the growing awareness about the strength of protection afforded by a design registration in India, there has been a significant growth in the number of applications over the past decade. The fact that the examination procedure for designs in India is relatively fast, with the process being generally completed within 1-2 years from the date of application, has further added to its attractiveness as an IP asset.
The industrial sectors in which the leading filers of design applications operate is also varied. Some of the industries in which the major filers operate include automobiles, heavy industries, consumer electrical and electronic goods, software and information technology products, fast moving consumer goods, apparels, commercial vehicles, construction, and sanitary ware.
While it is clear that the awareness about Design registration in India is growing, there is still considerable scope for further increasing the usage and efficiency of the design registration system. With this in mind, the Office of the CGPDTM is taking a number of steps, such as digitization of applications, online publication of information regarding registered designs, development of a public search platform, conducting public awareness programs, and the like [see end note 6]. Hence it is expected that the number of design applications filed and registered will keep showing an upward trend even in the near future.
Highlights of the Design (Amendments) Rules 2014
In line with the on-going efforts towards improvement of the IP protection and enforcement ecosystem in India, Design (Amendment) Rules, 2014 were notified on 30 December 2014 by the DIPP and have been made effective from that date. Many of the amendments are similar to those brought into effect by the Patent (Amendment) Rules, 2014, and which had been discussed in IPR Amicus issue of March 2014. Some of the highlights of the Design (Amendments) Rules 2014 are listed here.
Categories of applicants
While the previous Design Rules did not distinguish between different categories of applicants, the Design (Amendment) Rules 2014, notified two main categories of applicants i.e. ‘natural person’, and ‘other than natural person’. The category of ‘other than natural person’ is further divided into ‘small entity’ and ‘others except small entity’. It was also notified that each of the three categories would have varying fees. Thus, the categories of design applicants with varying fees now includes: ‘natural person’, ‘small entity’ and ‘others except small entity’.
The identification/ meaning of who would qualify as a ‘small entity’ is the same as discussed in the article ‘Patent (Amendment) Rules, 2014 - Certain issues with the definition of small entities’, in the IPR Amicus issue of March, 2014, and is based on clauses under Micro, Small and Medium Enterprise Development Act, 2006 and Industries (Development and Regulation) Act, 1951.
Fee schedule and fee payable by joint applicants of different categories
With the notification of the different categories of applicants, the fee for each category has also been specified. The earlier fee schedule has been retained for ‘natural person’. The fee for ‘small entity’ has been made twice that of the fee for ‘natural person’ and fee for ‘other than small entity’ has been made four times of the fee for ‘natural person’. Even with this change in fee for ‘small entity’ and ‘other than small entity’, the filing and prosecution of a design application in India remains inexpensive as compared to other jurisdictions. Further, in case of joint applicants of different categories, it has been clarified that the highest fee category of the applicant among the joint applicants will be applicable.
Differential fee payment on change in category of applicant
The amended rules also prescribe the requirements for payment of difference in fees in a scenario when an application processed by a natural person is transferred to other than a natural person or from a small entity to other than a small entity.
Small entity claim for foreign applicants
The Design (Amendment) Rules 2014 has tried to add clarity to a grey area that was left in the Patents (Amendment) Rules, 2014, with respect to documentary evidence required by a foreign applicant to qualify as a small entity and enjoy lower fees.
Form 24 of the Design Act, 2000 which is to be submitted for claiming the status of a small entity, needs to be submitted with every document for which a fee has been prescribed, in accordance with a new proviso under Rule 6. Further, as per Form 24, particulars of the document to be deposed by a foreign applicant include an affidavit by the applicant or authorized signatory in accordance with Rule 42 of the Designs Rules, 2001.
In a nutshell
Design registration provides an additional means for protecting IP and is gaining competitive advantage in the increasingly commoditized market environment that most organizations are operating in. In India, the registration procedure is relatively fast and less expensive, and the rights obtained are equally effective as the other forms of IP rights. Proprietors of new designs are taking notice of this and the administration is responding to their requirements by upgrading the systems and processes for greater transparency, predictability, and efficiency.
[The authors are respectively Associate and Joint Director, IPR Practice, Lakshmikumaran & Sridharan, New Delhi
- Section 2 (d), Designs Act, 2000
- Section 5(3), Designs Act, 2000
- Section 11, Designs Act, 2000
- Section 5(6), Designs Act, 2000
- Rule 30(3), Design Rules, 2001
- Annual Report 2012-2013 of the Office of CGPDTM