THE DESIGNS ACT, 2000

SALIENT FEATURES  OF THE DESIGNS ACT,2000

• It enlarges the scope of definition of “ article” and “ design” and introduces

          definition of “original”. 

• It amplifies scope of ‘ prior publication’. 

• It incorporates the provisions for identification of non-registrable designs.     

• It contains provision for substitution of application before registration of a   design.        

• It introduces Locarno of classification in the place of Indian classification. 

• It contains provision for maintaining the Register of design in electronic form.

• It contains provision for restoration of lapsed designs due to non-payment of     extension fees within prescribed time.

• It provides for compulsory registration of any document for transfer of right in the registered design.

• It introduces additional grounds in cancellation proceedings and makes     provision for initiating the cancellation proceedings before Controller in     place of High Court without any restriction of time- limit.

• It enhances the quantum of penalty imposed for infringement of registered      design.

• It contains provisions for grounds of cancellation to be taken as defense in the      infringement proceedings to be initiated in any court not below the court of       the District Judge.

• It enhances initial period of registration from 5 to 10 years, followed by a further extension of a period of five years.

• It contains provisions for allowing of priority to other convention countries     and countries belonging to group of countries or inter- governmental     organizations apart from United Kingdom and other Commonwealth countries.

SUBJECT-MATTER OF DESIGNS

• Under the Designs Act, 2000 designs of articles, which serve the purpose of visual appeal, are registrable. The designs should represent a shape, configuration, pattern, or ornamentation of an article. The design should be capable of being applied to an article to enhance its appeal to the eye e.g. shape of pen, combs, pressure cooker or ornamentation on carpet etc. which add only aesthetic value of the article.
• Design should be incorporated to the article by an industrial process or means.
  Therefore mere painting of natural scene will not be considered as a subject matter for registration.
• Designs, which are solely functional, or the principle or the mode of construction of an article shall not be the subject matter of registration.

CLASSIFICATION OF GOODS FOR REGISTRATION:

• In the Third Schedule of Designs Rules, 2001 the classification of goods has been mentioned. Classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application.
• The classification of goods is on the basis of articles. Articles are grouped into 32 classes and further divided into sub-classes. The classification of articles is function oriented (e.g. class 1- Foodstuffs, class 2- Articles of clothing and haberdashery class 3- Travel goods, cases, parasols and personal belongings etc.)
• A design cannot be registered in more than one class.
  
  REQUISITES FOR A REGISTRABLE DESIGN
• The design should be new or original, not previously published or used in any country before application for registration. The novelty may reside in application of known design to a new subject matter. (E.g. shape of a rose when applied to cakes is registrable.)
• The design should relate to the feature of a shape, configuration, pattern or ornamentation applied or applicable to any article.
• The design should be applied or applicable to any article by way of any industrial process or means.
• The design should be visible on the finished article.
• The design should not be a mode or principle of construction or operation or anything, which is a functional component of the device.
• The design should not comprise of a trademark or property mark or artistic work as defined under the Copyright Act.
• The design should not be contrary to public order or morality.
  
  REQUIREMENTS FOR FILING
• Name, address & nationality of applicant.
• Name of the article.
• Particulars of priority application (where applicable).
• Priority Document (when priority claimed)
• Photographs or drawings showing views of the article from all sides. (Photographs preferred by the Patent Office)
  
  STAGES UPTO GRANT
• Application for registration to the Controller of Designs.
• Examination.
  During the examination the Controller of Designs shall examine

·         whether the design filed for registration is novel or original,

·         whether there has been prior registration or publication

·         whether the design meets all the requisites for registrable design

·         if all the relevant documents have been properly filed.

• Examination report. The examination report would include certain objections or defects (if any) in respect of the application for registration.
• Objections raised should be met within a maximum period of six months from the date of filing of application.
• The Controller shall accept or refuse the design. Before refusing an application he should give a hearing to the applicant.
• If accepted the design shall be registered and the information of registration published in the Official Gazette and a certificate of registration shall be issued.
• If refused an appeal within 3 months from the order of refusal for the same shall lie before the High Court.
  
  
  RIGHT GRANTED
• Registration of a design confers upon the registered proprietor copyright on the design i.e. an exclusive right to apply in India the design to any article in the class in which the design is registered.
  
  DURATION
  
  TERM OF REGISTRATION
• The registration of a design is valid for a period of 10 years from the date of application.
  
  RENEWAL / EXTENSION
• The term of registration can be extended for a further period of 5years by filing an application for extension before the expiry of the initial period of copyright.
• The application for extension can even be made immediately after registration.
  
  LAPSATION / RESTORATION
• If extension fees for the further term of 5 years is not paid within initial 10 years copyright on design lapses.
• In case a design registration ceases to have effect due to failure to pay fees for extension an application for restoration may be filed within one year from the date of lapse.
  
  CANCELLATION OF REGISTRATION
• Petition for the cancellation of registered designs can be filed at any time during the term of registration before the Controller of Designs on grounds of prior publication, prior registration in India, lack of novelty and originality, and on the grounds which are essential for the for the registration of the Design.

TRANSFER OF RIGHT OF OWNERSHIP

• Ownership in a registered design can be transferred by means of assignment, transmission or operation of law.
• The instrument of transfer must be in writing.
• The person entitled under the transfer must within 6 months from the execution of instrument make an application for registration of his title.
  
  PIRACY OF A REGISTERED DESIGN
• Use of a registered design or its obvious imitation belonging to the same class in which the design has been registered, without the consent/ permission of the registered proprietor, for purpose of sale or importation or publishing such articles or exposing them for sale with the knowledge of illegal use of design amounts to piracy of registered design.
  
  JUDICIAL RELIEF
• A suit for infringement, injunction and recovery of damages etc. can be instituted by the registered proprietor of design. Any person infringing the copyright of design is liable to pay to registered proprietor of design for every instance of infringement a sum not exceeding Rs.25,000/- subject to a maximum of Rs.50,000/- for any one design recoverable as a contract debt.
• There is no criminal remedy.
  
  JURISDICTION
• Any suit for infringement, injunction and recovery of damages not to be instituted in any Court below the Court of District Judge. It can also be in a High Court having original jurisdiction.
  
  REMEMBER
• The design should not be made available to the public before application for design registration.
• Article to be denoted with prescribed words, mark or figures denoting that the design is registered.
• Always watch the registrations obtained by others in your product line. Otherwise someone can take you by surprise.

Always take prompt steps against any unauthorized use of your registered designs.