1.What is ‘Design’?

The concept of design has been defined under Section 2(d) of the Design Act, 2000 to mean 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 anything 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.

 2. What is not a Design?

As stated above Design does not include within its definition the following:

• any trademark, as defined in Section 2(zb) of the Trademarks Act, 1999, or
• any property mark, as defined in Section 479 of the Indian Penal Code, 1860, or
• any artistic work, as defined in Section 2(c) of the Copyright Act, [Artistic Work means
  • A painting, sculpture, drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic
  • Any work of architecture i.e. any building or structure having an artistic character or design or any mode for such building or
  • Any work of artistic craftsmanship (Section 2(c)).

An illustrative list of non-registrable designs is as under:

• book jackets, calendars, certificates, forms and other
• dress making patterns, greeting cards, leaflets, maps and plan
• post cards, stamps and
• labels, tokens, cards and
• any principle or mode of construction of an
• mere workshop alterations of components of an
• mere change in size of
• flags, emblems or signs of any
• layout designs of integrated

3. What is meant by an article under the Designs Act, 2000?

Under the Designs Act, 2000 the “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.

4. What is the object of registration of Designs?

Object of the Designs Act is to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.

5. Can stamps. Labels, tokens, cards be considered an article for the purpose of registration of Design?

No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to an article should be integral with the article itself.

6. What is the procedure for registration of Designs?

a. Where to apply?

Any person claiming to be the proprietor of any new design may apply for registration. An application for registration of a Design shall be addressed to the Controller of Designs, the Patent Office at Kolkatta, or at any of its Branch offices at New Delhi, Mumbai and Chennai. A proprietor may be from India or from a Convention Country.

b. Type of Applications:

1. Ordinary Application: An ordinary application does not claim priority.
2. Reciprocity Application: A reciprocity application claims priority of an application filed previously in a convention country. Such an application shall be filed in India within six month from the date of filing in Convention Country. This period of six months is not extendable.

c. Is substitution of Applicant or Joint claim permissible under Design Act?

Yes, the name of an applicant can be substituted or a joint claim can be made for an applied design, if the following requirements are met:

• The claim for substitution is made before the design has been registered; and
• Right of claimant shall be created only by:

1. An assignment
2. Agreement in writing made by the applicant or one of the applicants; or

• Operation of law
• The design under consideration shall be identified in the assignment or agreement specifically by reference to the number of application for registration; or
• The rights of the claimant in respect of the design have been finally established by a

A request for substitution of applicant shall be filed in Form-2 along with the required fee. If the above said requirements are fulfilled and the Controller is satisfied that upon registration of design, the claimant would be entitled to any interest in the design, the Controller may direct that the application shall proceed:

• in the names of the claimant(s); or
• in the names of the claimant(s) and the applicant or the other joint applicant(s), as the case may

However, in case of joint applicants, the Controller shall not pass such direction without the consent of the other joint applicant(s).

7. Requirements for filing an application for registration of Design

i. An application for registration of design shall be accompanied with the prescribed fees, stating the full name, address, nationality, name of the article, class number and address for service in India. Foreign applicants are also required to give an address for service in India, which could be the address of their Agent in India. In case of foreign applicants, it is mandatory to give an address for service in India. Unless, such an address is given, the Office shall not proceed with the

ii.The class to which the article belongs shall be mentioned correctly. It may be noted that for registering a design in more than one class, a separate application is required to be filed for each class.

iii. The application shall be signed either by the applicant or by his authorized agent/legal representative.

iv. In case, the applicant has already registered a design in any other class of articles, the fact of such registration along with the registration number shall be mentioned.

v. A reciprocity application shall be accompanied by a copy of the design application filed in the Convention Country. Such copy shall be duly certified by the Official Chief or Head of the Organisation in which it was filed. If the priority/ reciprocity document is not filed with the application the document can be filed anytime not latter than three months from the date of filing of original application for registration of Design in India.

vi. Four copies of exact representation of the Design i.e. Representation sheets representing exact representation of the article. Representation shall be exactly similar drawings, photographs, tracings including computer graphics or specimens of the design.

vii. For the purpose of registration of designs, articles have been classified into thirty one classes and a miscellaneous class 99. The appropriate class should be clearly identified and mentioned in the application seeking registration of Design.

8. When does the Applicant for Registration of Design get the registration certificate?

When an application for registration of a Design is in order, it is accepted and substantive examination is carried out to determine whether the design under consideration is:

1. A design under the Act.
2. New or original
3. Prejudicial to public order or morality
4. Prejudicial to the security of India

Once the design is deemed registrable it is registered and then a certificate of registration is issued to the applicant. However, a separate request should be made to the Controller for obtaining a certified copy of the certificate for legal proceeding with requisite fee.

9. What is a Register of Designs?

The Register of Designs is a document maintained by The Patent Office, Kolkata as a statutory requirement. It contains the design number, class number, date of filing (in this country) and reciprocity date (if any), name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.

10. What is the effect of registration of design?

The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.

11. What is the duration of the registration of a design? Can it be extended?

The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date. This initial period of registration may be extended by further period of 5 years on an application made in Form-3 accompanied by prescribed fees to the Controller before the expiry of the said initial period of ten years. The proprietor of a design may make application for such extension even as soon as the design is registered.

12. What is the date of registration?

The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.

13. Is it possible to re-register a design in respect of which Copyright has expired?

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

 14. How one can ascertain whether registration subsists in respect of any design?

For ascertaining whether registration subsists in respect of a design, a request should be made to the Patent Office, Kolkata. If the Design number is known, the request should be made on Form 6, otherwise on Form 7, together with prescribed fees. Each such request should be confined to information in respect of a single design.

15. Cancellation of Registration of Design

a. The registration of a design may be cancelled at any time after the registration of the design on a petition for cancellation.

b. Petition for cancellation of Design may be filed at any of the four Patent offices located in India however at present all further proceedings post filing of petition are carried out at the Patent Office, Kolkata.

c. The Petition for cancellation of Design may be filed on the following grounds:

• That the Design has been previously registered in India
• that it has been published in India or in any other country prior to the date of registration;
• that the design is not a new or original;

1. that the design is not registrable under this Designs Act;
2. that it is not a design as defined under Section 2(d).
3. Procedure for cancellation of Design is as stated herein below:

• The petition for cancellation shall be accompanied by a statement and evidence setting out the facts based upon which the petition is filed. The statement shall also state the nature of applicant‘s interest so as to determine, whether the petitioner is a person interested.
• The fact of filing of a petition for cancellation of registration of a design is published in the Official Journal.

• On receipt of a petition for cancellation, the Controller shall send a copy of the petition along with statement and evidence to the registered proprietor at the earliest.
• If the registered proprietor desires to oppose the petition, he shall file at Patent Office, Kolkata, a counter statement and evidence, if any, setting out fully the grounds upon which he intends to oppose the petition, within one month from the date of intimation by the Controller, and deliver a copy to the Petitioner, simultaneously. This period of one month is extendable by a maximum of three months, by filing a petition for extension with the required fee.
• After receipt of counter statement and evidence, if any, from the registered proprietor, the Petitioner may file his reply statement and evidence, by way of affidavits, within one month from the date of delivery of the registered proprietor‘s counter statement and evidence. Reply evidence of the petitioner shall be strictly confined to matters in the evidence of the registered proprietor. This period of one month is extendable by a maximum of three months, by filing a petition for extension with the required fee. The petitioner shall deliver a copy of his reply statement and evidence to the registered proprietor, simultaneously.
• No further evidence shall be delivered by either party, except with the leave or direction of Controller.

• Where a document is in a language other than English and is referred to in any statement or evidence, an attested translation thereof in duplicate in English should be furnished.
• After completion of the filing of statement and evidence by the Petitioner and Registered Proprietor, the Controller shall give at least ten days‘ notice for hearing.
• On receipt of the notice of hearing, if either party desires to be heard, a notice of intention to attend the hearing shall be filed.
• The Controller may refuse to hear any party which has not given such notice and fee.
• If either party intends to rely on any publication at the hearing, not already mentioned in the petition for cancellation, statement or evidence, he shall give to the other party and to the Controller a notice of his intention to do so, together with details of such publication. Such notice shall be given at least five days‘ in advance.
• After hearing the parties, or if neither party desires to be heard, then without a hearing, the Controller shall decide the petition and issue a speaking order. The decision of Controller shall be notified to the parties and shall be published in the Official Journal.
• Subsequent entries, if necessary, shall be made in the Register of Designs. [Section 19, Rule 29]

16. What is piracy of a Design?

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.

 17. What is the penalty for the piracy of a registered 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.

18. Is marking of an article compulsory in the cases of article to which a registered design has been applied?

Yes, it would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or unless the registered proprietor show that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

19. Why is it important for filing the application for registration of design at the earliest possible?First-to-file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates only first application will be considered for registration of design.

20. Can the same applicant make an application for the same design again, if the prior application has been abandoned ?

Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.

21. Whether it is possible to transfer the right of ownership?

Yes, 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 prescribed fees in respect of one design and appropriate fees for each additional 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.

22. What is an artistic work which is not subject matter of registration?

An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration which reads as follows:

“Artistic works” means: –

• A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality.
• An work of architecture and
• Any other work of artistic craftsmanship.

23. What is meant by Property mark as per the Indian Penal Code, Sec. 479?

A mark used for denoting that movable property belongs to a particular person is called a property mark. It means that marking any movable property or goods, or any case, package or receptacle containing goods; or using any case, package or receptacle, with any mark thereon. Practical example: The mark used by the Indian Railway on their goods may be termed as a Property Mark for the purpose of easy identification of the owner.