Industrial Design
DIVINE LOGICS
What is a Design?
The Designs Act 2000, defines: ‘Design’ means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether 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 principle or construction or any thing which is in substance a mere mechanical device, and does not include any trade mark, as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.
Requirements for filing Application
As regards the requirements of a Design application are concerned we require from you post card size Photographs (if photographs are not possible-drawings) of the article to be registered as a design from different views. The photographs/drawings should bring out the novelty of the design from the Top, Bottom, Side, Front, Back, Prescriptive and any other view which brings out the novelty in the design. We require from you Six (6) copies of the photographs/drawings for each view. Four copies are filed with the Patent and Design Office. One copy is retained for our file and a copy is sent back to you along with the documents as filed. Please also let us have a statement as to where the novelty resides in the article for Design registration.
Please note that novelty of the Design is adjudged with respect to the publication or prior public knowledge in India only.
What is covered under Design?
An article is distinguished not only by its utility but also by its visual appeal which too usually play an important role in shaping the buyer’s preference for the article. Therefore, the design of an article and even design of its packaging is important from the commercial point of view.
The Designs Act, 2000 aims at the protecting the designs which serve the purpose of visual appeal. A design to be registrable under the Designs Act must be some shape, configuration, pattern or ornamentation. Only ornamental design can be registered under the Act. The design must be capable of being applied to an article in such a way that the article to which it is applied will appeal to the eye.
Designs which are functional are not registrable under the Designs Act.
A design can be registrable only when it is new or original and not previously published in India, what is essential is that the design must be now with respect to the class of article to which it has been applied.
A combination of previously know designs can be registered if the combination produces a new visual appeal.
A colour may form a part of design but the colour by itself cannot constitute a subject matter of design.
The novelty or originality is to be judged on the evidence of experts in the trade. An expert who is aware of what is common trade knowledge and usage in the class of goods (Class 1 - 14) to which the design is applied would be the one entitled to pass the verdict on the novelty and originality. The design must not be previously published in India.
A design must be incorporated in the article itself as in the case of a shape or configuration which is three dimensional, e.g. shape of a bottle or flower vase or the case of design which is two dimensional, e.g. design on a bed sheet, wall paper which serves the purpose of decoration.
The design must appeal to the eye. The visual appeal of the article must be to the eye of the consumer.
Rights conferred by Design Registration
1) The right to exclusive use of the design.
2) When the process of registration is complete then the article on which the design is applied must carry the work ‘ Registered’ or “RD” along with the Registration number.
Duration of a Design Registration
Section 47 lays down that the term of the copyright in design is five years from registration which may be extended to further period of another two successive five years terms. Thus the maximum period of copyright in designs is fifteen years.
Transfer of Ownership
it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc. An application in Form-10, with requsite fee in respect of design, for registration of the transfer documents is required to be made by the beneficiary to the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarized copy of the instrument to be registered is required to be enclosed with the application.
Copyright Ó 2001 - 2006. All Rights Reserved.
www.divinelogics.com
Classification of Design
In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. This classification has been made on the basis of Articles on which the design is applied.
If the design is applied to a toothbrush it will be classified under Class 04-02. Similarly if the design is applied to a calculator, it will be classified in Class 18-01. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible, but period of registration will be valid only upto period of previous registration of same design.
Industrial Design protected as a Artistic work under Copyright Act
If a design is registered under the Designs Act, it will not be granted protection under the Copyright Act, even though it is an original artistic work. In case the design is not registered under the Designs Act and it is an original artistic work, copyright protection under the Copyright Act will automatically subsist. However, copyright protection under the Copyright Act, will cease to exist as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the copyright owner. Therefore, it is highly recommended that industrial designs are registered under the Designs Act.
Piracy of Design & Penalty
Piracy of a design means the application of a design or its imitation to any article belonging to class of articles in which the design has been registered for the purpose of sale or importation of such articles without the written consent of the registered proprietor. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.
If anyone contravenes the copyright in a design he is liable for every offence to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for injunction against repetition of the same. Total sum recoverable shall not exceed Rs. 50,000/-as contract debt as stated in Section 22(2)(a). The suit for infringement, recovery of damage etc should not be filed in any court below the court of District Judge.
â
