Ever wanted to get something you designed registered but never knew how to go about it? Surprisingly, the procedure to get your design registered is fairly easy and guess what? You can get your design registered in about 8-12 months! Trust me, getting anything registered with an Intellectual Property office in India under 12 months is nothing less than a miracle. So here is how you go about filing a design application in India.

Where to apply?

In India, the Patent Office is located at four locations viz. Delhi, Mumbai, Kolkata & Chennai. All four patent offices take in design applications but all subsequent actions like responses and hearings are done only in Kolkata.

What is a Design?

Defined under section 2 (d) of the Designs Act 2000, designs are:

  • Features of shape, configuration, Pattern, Ornament, Composition of lines or colours or combination;
  • Which can be applied to an article;
  • In either 2D or 3D forms;
  • By any industrial process (it could be manual, mechanical or chemical or any of the processes combined);
  • Which should be appealing and judged solely by the eye
  • And should not be a trademark or an artistic work under the law of copyright.

Types of design applications:

a) Ordinary application – No priority claim;

b) Reciprocity application – Application filed previously in a convention country shall be filed in India within 6 months from the date of filing in convention Country. This period is not extendable. However an application can be filed without the certified copy of the priority application and the documents have to be filed within 3 months of filing the application in India. An application to extend this deadline has to be filed.

Who may apply?

Anyone who claims to be the proprietor of any new or original design may apply. A proprietor may be an author of the design, or someone who has acquired it or a person for whom the design has been developed or someone on whom the design has devolved. Name of an applicant can also be subsequently substituted.

Procedure:

1.Finding out whether any registration already exists

In order to do so, a request needs to be made to the Designs Office in the following manner;

a) if the registration number is known, an application along with INR 500 needs to be filed;

b) if you don’t know the number of the similar design you can submit an image along with an official fee of INR 1000

2. Application procedure

a) Design Application form

An application has to be made along with the prescribed fee which is INR 1000 stating the full name, address, nationality, name of the article, class number and address for service in India. Foreign applicants are compulsorily required to give an address for service in India, else the application will not be processed. In India, only a registered patent agent or legal practitioner can be appointed as an authorised agent.

Class:

India adopts the Locarno classification which contains 31 main classes and numerous sub-classes under each class. Each class refers to a particular type of product like fabrics, jewellery, cosmetics etc. There is a separate class 99 that includes all products not included in the 31 classes. If a person wishes to apply for a design in more than one class, a separate application has to be filed for each of the design applications.

Representation of designs:

Representation means the exact representation of the article for which registration is sought which includes drawings, photographs, and tracings including computer graphics or specimens of design. In general it’s best to include photographic representations. The photographic representations have to be of various views of the product taken from above, below, the left, the right and a perspective view.

Statement of novelty and disclaimer

This is probably the most important part of the application. In the representation sheet, below the photographs or drawings, you are supposed to declare the novelty of your design.

For example, if your design is some sort of floral pattern which forms part of a dress, then along with the photograph of the dress, the following statement should be inserted;

“The novelty resides in the floral pattern marked as ‘A’ of the article as illustrated”

Further, if that pattern is likely to be confused as a trademark, then a disclaimer needs to be added as well which should convey that by virtue of this registration, no claim is made to any right to the use as a trademark. Likewise, if the representations suggests any mechanical action of the article or includes any numerals, words or letters a disclaimer has to be made.

Power of attorney (if any)

Priority documents (if any)

b) Initial processing of application

At this stage, the application gets accorded a date and a serial number which eventually becomes the registration number of the design post-registration. If there are any defects in the representation sheet or the form, it is sent back to the applicant for fulfilment of the basic requirement. If there are no defects, the application is then stored for further processing.

c) Examination

Once the application is files, the examination report is issued within 2 months. At this stage, the Examiner of designs does a formality check to determine if the application has fulfilled the prescribed criteria and a substantive examination where the examiner sees if the design and novel and if there are any similar designs already on the Register.

d) Acceptance and notification

If there are no objections, the design will be registered. However, if there are objections then it is communicated to the applicant who is required to comply with the objections within 6 months from the date of filing of the application.

e) Abandonment

In case the applicant fails to respond to the objections or does not comply with the objections raised, then the design shall be deemed to have been abandoned.

f) Hearing

In case the applicant contests the objections, and the Controller is not yet satisfied, a hearing will be appointed within 1-2 months, the result of which will determine if the application is accepted or not. The applicant can appeal to the High Court if not satisfied by the outcome of the hearing.

g) Registration and publication

The application is registered once all the requirements are fulfilled by the applicant after which it is published in the Patent Office Journal which is published every Friday.

h) The design is then entered in the Register and a certificate of registration is issued.

i) Validity – a design registration lasts for a period of 10 years from the date of registration after which an extension can be filed for another 5 years.

As mentioned earlier, the whole process of filing a design in India takes only about 8-12 months. Typically, about 90% of the applications are objected based only on formality issues. Very few applications are objected on substantive grounds such as novelty and originality. So if you want a file a design in India, you can do so within 12 months, which is actually great when compared to registration of other intellectual properties in India.

This article has been authored by Durga Bhatt, an IP Law practitioner.