Design registration is a crucial aspect of intellectual property protection, which shields a newly created design applied to an article created under an industrial process from counterfeiting. The registration provides an owner with authority to use the design for ten years, which can be further extended for another five years. This article delves into the procedure of design registration in India, its definition, eligibility criteria, essential requirements, advantages, protection, validity, exclusion from the scope of design registration, cancellation, and restoration of design registration.

Design is defined under Section 2(d) of the Designs Act 2001, as only the features of a shape, pattern, configuration, composition, or ornament of lines or colors that are applied to any article that is two-dimensional, three-dimensional, or both by an industrial process or any means whether mechanical, manual or chemical, separated or combined, which in the finished article are judged solely by the eye; but is not taken into account upon the principle of construction or anything which is in substance a merely mechanical device.

Design registration has numerous advantages for the owner, including exclusive rights over the new and original design, an asset of the proprietor/owner, the ability to initiate a legal proceeding in case of infringement by a third-party, serve as a prima facie evidence in an infringement suit, the right to sell, transfer and license the design with ease.

For a design to be registered and protected under the Design Act, 2000, the following essential requirements must be fulfilled: the design should be original and new, significantly distinguishable from known designs or a combination of known designs, should not comprise or contain scandalous or obscene matter, should not be a mere mechanical contrivance, should be applied to an article and should appeal to the eye, and should not be contrary to public order or morality.

Any person, legal representative, or assignee can apply separately or jointly for design registration. The term “person” includes a firm, partnership, small entity, and a body corporate. In the case of an NRI, his agent or legal representative needs to apply for design registration.

The following documents are required for design registration: a certified copy of the original or certified copies of extracts from the disclaimer, affidavits, declarations, and other public documents that can be made available on payment of a fee. The affidavit should be in paragraph form and should contain a declaration of truth and verifiability. However, the controller may regulate the cost involved in design registration according to the fourth schedule.

When a design is registered, copyright is bestowed upon the registered design for a period of ten years, which can be extended by five years. Through this, the proprietor enjoys an exclusive right over the use of the design in the class in which it’s been registered.

Design registration does not protect any literary or artistic work like books, calendars, stamps, tokens, buildings and structures, and maps. Moreover, an application cannot be made for designs similar to the national flags, emblems, or signs of any country.

Design registration is valid for ten years and can be extended for a further term of five years with the payment of the necessary fees. The design will lapse if the extension is not done in time, but can be restored. The application for restoration must be made within one year from the date of the lapse of the design via Form 4, only in the case of non-payment of the extension fees. Once the application for restoration is approved, the necessary extension fees are to be paid.

The application to register a design may be applied to five different authorities, including the Controller Designs Patent Office in Kolkata, the patent office in Delhi, the patent office in Ahmedabad, the Patent Office in Mumbai, and the patent office in Chennai.

The application for design registration must be filed with Form:

1. Name of the Applicant The name of the applicant must be provided in the application form. If the applicant is a natural person, the full name along with the initials and surname should be mentioned. In the case of a legal entity, the name of the company or organization must be mentioned.

2. Address of the Applicant The address of the applicant, including the postal code, must be mentioned in the application form. In the case of a legal entity, the registered office address of the company or organization must be provided.

3. Nationality of the Applicant The nationality of the applicant must be mentioned in the application form. If the applicant is an individual, the nationality of the person should be mentioned. In the case of a legal entity, the country of incorporation or registration must be mentioned.

4. Information regarding the place of incorporation and legal status of the entity In the case of a legal entity, information regarding the place of incorporation and the legal status of the entity must be provided in the application form.

5. Fee The required fee for design registration must be paid at the time of filing the application. The fee varies depending on the type of applicant (individual, small entity, or large entity) and the number of designs applied for registration.

6. Class and Sub-Class of the Article The class and sub-class of the article under the Locarno Classification, of the article embodying the design, must be mentioned in the application form.

7. Name of the Article to which the Design is Applied The name of the article to which the design is applied upon must be mentioned in the application form.

8. Representation of the Design The representation of the design must be submitted along with the application form. In the case of a two-dimensional design, two copies of the design must be submitted. In the case of a three-dimensional design, two copies of the design from the viewpoint of the front, back, top, bottom, and the two sides must be submitted.

9. Unique Features of the Design The applicant must highlight the unique features of the design that sets it apart from any other existing designs.

10. Separate Application for Each Class of Registration If the application is to register the design in more than one class, each class of registration must have a separate application.

11. Statement of Disclaimer or Novelty A statement of disclaimer or novelty must be attached to each representation with respect to mechanical processes, trademark, numbers, letters, etc. It should also be endorsed and duly signed and dated on each representation by the applicant or the authorized person on behalf of the applicant.

After submission of the application, the patent office will examine the application and raise objections, if any. Upon the clearance or removal of all objections, the design shall be granted a copyright certificate by the patent office.

Cancellation of Design Registration Under the provisions of Section 10 of the Design Act, 2000, registration can be cancelled on the following grounds:

1. The design has been published prior to the date of registration.
2. The design is not new or original.
3. The design is not significantly distinguishable from known designs or a combination of known designs.
4. The design contains scandalous or obscene matter.
5. The design is contrary to public order or morality.

Renewal of Design Registration The registration of a design is valid for a period of ten years from the date of registration. It can be renewed for a further term of five years by paying the necessary renewal fee. An application for renewal must be made within six months before the expiration of the initial ten-year period or the last renewed period, as the case may be.

Restoration of Lapsed Design Registration:

If a design registration has lapsed due to the non-payment of renewal fees or any other reason, it may be restored by making an application for restoration within one year from the date of lapse. The application for restoration should be made on Form-13 along with a statement explaining the circumstances that led to the lapse and a request for restoration.

The Controller will consider the application for restoration and may allow it upon being satisfied that the failure to pay the renewal fee was unintentional or due to unavoidable circumstances. The applicant must pay the renewal fee along with the restoration fee within one month from the date of the order restoring the registration.

If the registration is not restored within one year from the date of lapse, the design becomes open to the public and anyone can use it without infringing the design registration. Therefore, it is important to ensure timely payment of renewal fees to avoid any unnecessary loss of rights.