1. Emerging Trends In
Emerging Trends In
Design Registration:
Design Registration:
A Marketing Tool for
A Marketing Tool for
Industry
Industry
P.Srinivasa Rao,
Assistant Controller of Patents&Designs
2. CATEGORIES OF INTELLECTUAL PROPERTY
1. Patents
2. Industrial Designs
3. Trade marks
4. Copyright
5. Geographical Indications
6. Layout Designs of Integrated Circuits
7. Protection of undisclosed
information/Trade secrets.
3. Industrial designs is one of the categories of IPR
where the design system focuses on the aesthetic
feature of an article derived from its visual
appearance. Relevant aspects are the shape,
configuration, surface pattern, the colour or line or
a combination thereof as applied to an article which
produces an aesthetic impression on the sense of
sight.
INDUSTRIAL DESIGNS
4. Fifteen years
Fifteen years ago, Companies:
Price
Today
Today It’s Quality
Design
Tomorrow
Tomorrow It’s
Competed on
5. Importance of Industrial Design
„ It Makes A Product Attractive &
Appealing To Customer & May Even Be
Its Unique Selling Point.
„ An Industrial Design Adds Value To A
Product.
„ Fair Return On Investment.
„ Business Assets.
„ Fair Competition.
6. WHY REGISTRATION OF DESIGN IS
REQUIRED?
‰ To protect any new / original shape,
configuration,surface pattern
combination of lines or colours applied
to any article which is a creation of
human intellect by way of registration.
‰To prevent the imitation of
innovator’s design.
Contd …
7. ‰To prevent the commercial
exploitation of the innovator’s design
by the third party without the
proprietor's consent.
‰To obtain bonafide reward by
commercial exploiting the design as
well as assigning the same to other
parties.
‰To increase interest in innovating
more designs in the field of consumer
products
8. ÌTo make Efficient and user friendly
Legal System for Protection of
Industrial Designs
ÌTo Promote creativity and protection
ÌCompliance of TRIPs Agreements
and accession to the Paris
Convention
Need of The Designs Act, 2000
9. Article:
Means any article of manufacture and
any substance, artificial or partly
artificial and partly natural and
includes any part of article capable of
being made and sold separately
Definitions under The Designs Act, 2000
11. The number of Sections of the Designs Act,
1911 were modified with the introduction of
11 new Sections out of 48 Sections of the
new Act.
ˆEnlarging the scope of definition of
Article & Design
ˆIntroduction of delegation of powers to
Examiners & other Officers by Controller
ˆIdentification of non-registerable
Designs
Salient Feature of the Designs Act, 2000
12. ˆ Substitution of classification system
(introducing Locarno classification)
ˆ Elimination of Secrecy period of two
years for a registered Design
ˆ Provision of public inspection after
notification
ˆ Introduction of Rights of Registered
Proprietor
13. ˆ Conferring initial term of Protection for 10
years followed by further period of 05 years
on request
ˆ Provision of Restoration of Lapsed Design
ˆ Providing the provision for preferring
Appeal on the Controller’s order before
High Court
ˆ Substitution of Applicants before
Registration of Design
ˆ Introduction of additional grounds in the
Cancellation proceedings of Design
14. ˆ Providing mandatory provision for
creating interest in Registered Design
ˆ Enhancement of quantum of penalty for
infringement of Registered Design
ˆ Enlargement of allowance of priority to
other Paris Convention Countries apart
from Commonwealth Countries
ˆ Avoidance of certain restricted
conditions
15. Prohibition of registration of certain design
Prohibition of registration of certain design
(Section 4)
(Section 4)
A design shall not be registered if the design:
(a) is not new or original
not new or original; or
(b) has been disclosed to the public
has been disclosed to the public any where in
India or in any other country by publication in
tangible form or by use or in any other way prior
to the filing date, or where applicable, the
priority date of the application for registration; or
(c) is not significantly distinguishable
not significantly distinguishable from known
designs or combination of known designs; or
(d) comprises or contains scandalous or obscene
comprises or contains scandalous or obscene
matter
matter.
16. THE FOLLOWING ARTICLES
THE FOLLOWING ARTICLES
ARE NOT REGISTRABLE
ARE NOT REGISTRABLE
„ Calendar, certificates,forms, greeting cards,leaflets,
maps, building plan,medals
„ Labels,tokens,cards,stamps
„ Texts, religious symbols
„ Any principle or mode of construction of article
„ Mere mechanical contrivance
„ Buildings and Structures
„ Parts of articles not manufactured and sold separately
„ Basic shape, variations commonly used in the trade
„ Mere workshop alterations of components of an
assembly
„ Mere change in size of article
„ Flags,emblems,or signs of any country, computer icons
„ Layout designs of integrated circuits
17. IMPORTANT SECTIONS & RULES
IMPORTANT SECTIONS & RULES
Section
Section Rule
Rule Description
Description
2(d) --- Definition of “Design”
4 --- Novelty, Prohibition of registration of
certain designs
5 & 44 --- Application for registration of
design(Form1)
5(5) 21 Grounds for Abandonment
11 --- Copyright on registration
12 24 Restoration of lapsed design
19 29 Cancellation of registration
22 --- Piracy of registered design
44 15 Reciprocal arrangement for Priority
--- 46 General power of amendment
--- 47 General power to enlarge time
18. •
•Filing of Design Application
Filing of Design Application
*WHO CAN APPLY FOR REGISTRATION OF
DESIGN
•ANY PERSON
•INDIVIDUAL
•LEGAL ENTITY
•LEGAL REPRESENTIVE OF DECEASED
PERSON
19. •Person (individual or legal entity)
claiming to be the proprietor.
•New or original design not previously
published in India or any other country.
•Not contrary to public order or morality.
20. Particulars required for application
(i) Application Form 1 with requisite Fee of Rs.
1,000/-, should contain full name, nationality,
address, class No., article name and address
for service in India.
(ii) Four sets of Representation sheets in
durable paper of A4 size, pasted with the
photographs/drawings of the article from
different views.
(iii) Power of attorney (if required)
(iv) Priority document (for convention
application).
21. 0 21
A design is generally registered in a
specific class. International system
classifies designs into 31 classes and
one miscellaneous class (99) which are
further sub divided into subclasses based
on the nature of the goods. It should be
noted that an article for which a design
may be registered includes “any part of an
article if that part is made and sold
separately”. Thus more than one
registration may be obtained for the same
article where a different novelty is stated
for each.
22. „ A4 SIZE WHITE DURABLE PAPER
„ SHEET NO. TO BE MENTIONED IN EACH
SHEET
„ PHOTOGRAPHS/LINE
DIAGRAMS/COMPUTER GRAPHICS OF THE
ARTICLE
„ NAME OF THE VIEWS
„ STATEMENT OF NOVELTY
„ DISCLAIMER
„ SIGNATURE OF THE APPLICANT/AGENT
„ DATE
PREPARATION OF THE
PREPARATION OF THE
REPRESENTION SHEET
REPRESENTION SHEET
23. Representation Sheets should be signed and dated.
They should be endorsed with novelty statement
and disclaimer statements.
e.g.
Novelty resides in the shape and configuration of
the “flower Vase” as illustrated.
Or
Novelty resides in the shape and configuration
particularly in the portions marked ‘A’ & ‘B’ of the
“flower vase” as illustrated.
Or
Novelty resides in the ornamental surface pattern of
the “carpet” as illustrated.
24. The novelty resides in the shape & configuration of the 'CHAIR' as illustrated.
No claim is made by virtue of this registration in respect of any mechanical or
other action of any mechanism whatever or in respect of any mode or principle
of construction of the Article.
No claim is made by virtue of this registration to any right to the exclusive use
of the words, letters, numbers, or trade marks appearing in the representation.
Dated: Signature of the applicant/agent
(Name of the Signatory)
(SPECIMEN OF REPRESENTATION SHEETS)
25. (SPECIMEN OF REPRESENTATION SHEETS)
The novelty resides in the shape & configuration of the 'CHAIR' as illustrated.
No claim is made by virtue of this registration in respect of any mechanical or
other action of any mechanism whatever or in respect of any mode or principle
of construction of the Article.
No claim is made by virtue of this registration to any right to the exclusive use
of the words, letters, numbers, or trade marks appearing in the representation.
Dated: Signature of the applicant/agent
(Name of the Signatory)
RIGHT SIDE VIEW LEFT SIDE VIEW
26. No. of
entry
On What possible Form
No.
Fee (Rs.)
1 On application for registration of Design under
Sections 5 & 44
1 1000.00
2 On claim under Section 8(1 ) &(5) to proceed as
an applicant or joint applicant
2 500.00
3 On application for extension of copyright under
Section 11(2)
3 2000.00
4 On Application for Restoration of lapsed design
under Section 12(2)
4 1000.00
5 Additional fee for Restoration --- 1000.00
6 Inspection of Registered design under Section
17(1)
5 500.00
7 On request for information of design when
registration No. is given under Section 18.
6 500.00
8 On request for information of design when
registration No. not given .
7 1000.00
THE FIRST SCHEDULE
THE FIRST SCHEDULE
FEES
FEES
Contd …
27. No. of
entry
On What possible Form
No.
Fee (Rs.)
9 On application for cancellation of design under
Section 19
8 1500.00
10 Notice of intended exhibition or publication of an
unregistered design under Section 21
9 500.00
11 Application for registration of a document in
Register of Designs under Section 30(3):
(i) In respect of one Design;
(ii) For each additional Design
10
500.00
200.00
12 On application for entry of name of proprietor or part
proprietor in Register of Designs under Section 30:
(i) In respect of one Design;
(ii) For each additional Design
11
500.00
200.00
13 On application for entry of mortgage or license in
Register of designs under Section 30:
(i) In respect of one Design;
(ii) For each additional Design
12
500.00
200.00
THE FIRST SCHEDULE
THE FIRST SCHEDULE
FEES
FEES
(Contd from previous slide…)
28. No. of
entry
On What possible Form
No.
Fee (Rs.)
14 Application for entry of notification of a document in
the Register of designs under Section 30 and Rule
37:
(i) In respect of one Design;
(ii) For each additional Design
13
500.00
200.00
15 On request for correction of clerical error under
Section 29
14 500.00
16 On request for certificate under Section 26 and
Rule 42
15 500.00
17 On application for certified copy of Registered
design Under Section 17(2)
16 500.00
18 On application for rectification of Register of
design Under Section 31
17 500.00
19 On application for extension of time for filing
priority Document under Rule 15 & Rule18.
18 200.00
(per month)
20 On Notice of opposition under Rule 40 19 100.00
THE FIRST SCHEDULE
THE FIRST SCHEDULE
FEES
FEES
(Contd from previous slide…)
29. No. of
entry
On What possible Form
No.
Fee (Rs.)
21 Notice of intention to attend hearing under Rules
29 and 40
20 500.00
22 Form for authorization of agent or other person. 21 ----
23 On request to alter name or address or address
for Service in the Register of design under Rule
31.
22 200.00
24 On request for entries of two addresses in the
Register of Design.
23 200.00
25 On petition under Rule 46 for amendment of any
document
--- 500.00
26 On petition under Rules 29,40,47 for enlargement
of time
--- 500.00
27 Inspection of Register of Design under Rule 38 (in
respect of each design).
--- 250.00
THE FIRST SCHEDULE
THE FIRST SCHEDULE
FEES
FEES
(Contd from previous slide…)
30. Flow Chart of Design Application up to Acceptance
Flow Chart of Design Application up to Acceptance
Filing of
Applications
Numbering &
Dating of
Applications
Examination of
Applications
Abandoned
Non compliance
of Objection(s)
Communication
of Objection(s)
Removal of
Objection(s)
Hearing if
objection (s) is
/are contested
Refusal
Refusal Compliance of
Objection(s)
Re- Examination
Appeal to
High Court
Waiving /
removal of
Objection(s)
Acceptance
In case of allowance
of appeal
Publication in the
Official Journal of
the Patent Office
Issue of Certificate
34. Application of Design in Industries
Small Scale Industries:
Ò Shoe, Chappal, Pen, Textile Goods, Carpet, Wall Clock,
Ceramic Tiles, Plumbing Equipments, Sanitary Goods,
Package, Chairs, Tables, Photo - Frame, Tiffin Box,
Water Jug, Casserole, Water Bottle, Bags, Suitcase,
Flower Vase, Ash-Tray, Tooth-Brush, Toy, Fan etc.
Medium Scale Industries:
Ò Washing Machine, Refrigerator, Television, Computer,
A.C. Machine, Wrist Watch, Mixer-Grinder, Vacuum
Cleaner
35. More articles
More articles
„ Textiles dress materials,mobiles set,cycle,
electrical controlling devices and
appliances,containers,sport appliances
36. Utilization of Industrial Designs
„ Industry should effectively utilize Design
Registration in a large number of sectors to
retain their competitiveness, this IPR tool is
relatively cheaper and easy to register as
compared to Patents
0 36
40. Example with a toothbrush
Example with a toothbrush
Shape & Configuration signify something solid
Shape & Configuration signify something solid
where an idea has been incorporated into the
where an idea has been incorporated into the
article.
article.
Contd.
41. Example with a toothbrush
Example with a toothbrush
Pattern or ornament or composition of colour /
Pattern or ornament or composition of colour /
lines relates to something two dimensional
lines relates to something two dimensional.
.
Contd.
42. Example with a toothbrush
Example with a toothbrush
Contd.
When a figure, showing the feature of the design of
When a figure, showing the feature of the design of
an article, is drawn on a paper it will be regarded as
an article, is drawn on a paper it will be regarded as
if design has been applied to the article sought to be
if design has been applied to the article sought to be
registered.
registered.
43. Example with a toothbrush
Example with a toothbrush
A new shape applied to toothbrush which
A new shape applied to toothbrush which
produces a new visual appearance on the
produces a new visual appearance on the
article.
article.
Contd.
44. Example with a toothbrush
Example with a toothbrush
Design means a conception or suggestion or idea
Design means a conception or suggestion or idea
of a shape or pattern which can be applied to an
of a shape or pattern which can be applied to an
article by industrial process or means.
article by industrial process or means.
Contd.
45. Example with a toothbrush
Example with a toothbrush
Any mode or principle of construction or
Any mode or principle of construction or
operation or anything which is in substance a
operation or anything which is in substance a
mere mechanical device, would not be design.
mere mechanical device, would not be design.
Contd.
46. Example with a toothbrush
Example with a toothbrush
The features of the design in the finished article
The features of the design in the finished article
should appeal to and are judged solely by the
should appeal to and are judged solely by the
eye.
eye.
Contd.
47. Example with a toothbrush
Example with a toothbrush
The design should be applied or applicable to
The design should be applied or applicable to
any article by any industrial process.
any article by any industrial process.
Contd.
48. Example with a toothbrush
Example with a toothbrush
Designs of artistic nature like paintings,
Designs of artistic nature like paintings,
sculptures and the like which are not produced
sculptures and the like which are not produced
in bulk by any industrial process are excluded
in bulk by any industrial process are excluded
from registration under the Act.
from registration under the Act.
49. Applications with prescribed fees on the following
proceedings may be deposited in the Head Office at
Kolkata and its Branch Offices at Delhi, Mumbai &
Chennai. Branch Offices will transmit the documents to
Head Office for Processing and Prosecuting the same
Ò Registration of Designs(Form1)
Ò Request for Extension of Copyrights(Form3)
Ò Petition for Cancellation of Designs,Form8
Ò Application for Rectification of Register of
Designs(Form17)
Jurisdiction of Filing Application
50. Filing of Design Application
KOLKATA
H.O.
Receiving & Examination
Delhi Chennai
Mumbai
Receiving Center
Receiving Center
Receiving Center
51. 0 0
Designs Wing of the Patent Office
The Patent Office(Designs Wing), Intellectual Property Office,CP-2 Sector V, Salt Lake City,
Kolkata-700091
Phone No. 033-23671945-46, 23671987
FAX-033-23671988, Email:- kolkata-patent@nic.in
Note : Application for Design can also be received by any of the Patent Office located
at New Delhi, Chennai & Mumbai.
52. Rights of the Registered Proprietor
Rights of the Registered Proprietor
¾ The rights as granted by the industrial design protection are
guided by Sec11 and Sec 2(c) of The Designs Act’2000.
¾ When a design is registered the registered proprietor of the
design shall, subject to the provision of the act, have a
copyright in the design during ten years from the date of
registration, extendible for another five years.
¾ Copyright means the exclusive right to apply a design to any
article in any class in which the design is registered.
¾ Copyright in the designs lasts for a maximum period of fifteen
years. Thereafter it becomes public property and any body
can use it.
53. Extension of copyright
A design is registered for a period of 10 years
and which is extendable for another 5 years
if an application in Form-3 with a fee of Rs.
2,000/- is filed before the expiry of above
period.
54. A petition in Form-8 with fee of Rs. 1,500/- by an interested
person may file for cancellation of registration at any time
after the registration on the following grounds to the
Controller:
ˆ Previously registered in India
ˆ Published in India or other Countries prior to the date of
registration
ˆ Not a new or original Design
ˆ Not a Registerable Design under this Act
ˆ Not a Design under Section 2(d) of this Act
Cancellation of Registered Design
55. ˆ Controller’s Orders Appealable before
High Court.
ˆ Controller may refer such Petition at
any time to High Court.
ˆ High Court shall decide any Petition so
referred
56. Piracy of Registered Design
•Unlawful Use, Sale, Imitation, Import, Publication
for the purpose of sale of any article belonging to
the class in which design has been registered shall
be liable for Punishable offence
•Infringer to pay for every contravention to the
registered proprietor a sum not exceeding
Rs.25000/-
•Total sum recoverable for any one design shall not
exceed Rs. 50,000/-
•Relief on the suit or any other proceedings shall be
in any Court not below the Court of District Judge
57. LESSONS
( Registration of Design – a must
( Design not to be disclosed to the
public prior to registration
( Should not be published in India
or in other countries
58. Concept of Partial Design and Infringement
Concept of Partial Design and Infringement
Infringement
Infringement
No Infringement
No Infringement
Contd….
67. Registered Designs in force
„ The number of registered Designs in force at
the end of the financial year 2006-2007 was
43045 of which 40059 designs were
registered in the names of Indians.
0 0
68. Share of Designs by Selected Countries
Korea
16%
Japan
21%
Other
21%
UK
5%
Germany
5% USA
8%
Australia
2%
France
4%
Austria
3%
India
2%
China
13%
