1. Relevant Authorities and Legislation
1.1 What is the relevant Design authority in your jurisdiction?
The relevant design authority in India for granting registration to designs is the Office of the Controller General of Patents, Designs and Trade Marks, which regulates the Indian Design Office. The Design Office is headquartered in Kolkata, with the facility to file design applications at the other branches of the Indian IP Offices located in Chennai, Delhi and Mumbai. However, all design applications filed at any of the IP Offices are processed at the Design Office at Kolkata, where registered designs are maintained.
1.2 What is the relevant Design legislation in your jurisdiction?
The relevant pieces of design legislation in force in India are the Designs Act, 2000 and the Designs Rules, 2001 made thereunder.
2. Application for a Design
2.1 What can be registered as a Design?
“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” are protectable subject matter under designs law in India. A “design”, however, does not include any mode or principle of construction or anything that is, in substance, a mere mechanical device. Designs law also exclude from registrability any trademark or property mark or any artistic work under copyright law.
For protection, a design must be new and original. “New” in this context means that the subject design must not have been previously published anywhere in India or any other country in a tangible form or by use or in any other way. “Original” implies that the design should originate from the author of the design, but as a matter of fact, old designs that are new in terms of application are also considered “original”.
Indian designs law protects any new and original design that is capable of being applied to an article. The feature becomes eligible for registration, provided that it:
- is new or original;
- has not been disclosed by prior publication or use or in any other way;
- is sufficiently distinguishable from known designs or their combination; and
- contains no scandalous or obscene matter and is not contrary to public order or morality.
2.2 What cannot be registered as a Design?
A design cannot be registered if it:
- is not new or original, i.e. it has been disclosed to the public anywhere 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;
- is not significantly distinguishable from any known designs or a combination of known designs;
- comprises or contains scandalous or obscene matter;
- includes any mode or principle of construction or operation or anything that is, in substance, a mere mechanical device; or
- is a trademark, property mark or artistic work.
2.3 What information is needed to register a Design?
The following information is required to register a design:
- the name, address and nationality of the applicant;
- the title and nature of the article;
- the class and subclass under the Locarno Classification;
- priority details and a certified copy of the priority document, along with an English translation, in case the priority is claimed, or WIPO Digital Access Service (DAS) code; and
- a simply signed Power of Attorney in an original form signed by the authorised signatory of the applicant (no notarisation and legalisation is required.
2.4 What is the general procedure for Design registration?
Once a design application is filed, it is examined and if no objections are found, the design will be accepted and a certificate of registration will be issued within two to three months. In case of objection, a First Examination Report is issued within one month from the date of filing. A response to the Examination Report should be filed within six months from the filing date. An extension period of three months is available on a request filed with the Design Office and on payment of an official fee prior to the expiry of the said due date. In case any objection is outstanding after the filing of a response, the Design Office may call for a hearing to discuss and comply with the pending issues, if any. If all the objections are addressed in the response to the Examination Report to the satisfaction of the Controller of Designs/Examiner, the application is be accepted within six months from the date of filing and a certificate of registration is be issued within six to 10 months from the date of filing.
2.5 How is a Design adequately represented?
A design is adequately represented by seven photographic views of the article on which the design is applied, namely the: perspective; front; back; top; bottom; left; and right view. The representation can also be filed as drawings in clear solid lines with no extraneous matter in the background.
2.6 Are Designs registered for specific goods or products?
Yes, designs are registered for specific products. A design may be registered in respect of any or all of the articles prescribed in the class of articles under the Locarno Classification.
2.7 Is there a “grace period” in your jurisdiction, and if so, how long is it?
Yes, a six-month grace period is available, limited to the disclosure made in a notified exhibition or trade show and where prior notice of such public disclosure is given to the Controller of Designs. Prior publication without notification to the Controller of Designs disqualifies a claim for a grace period.
2.8 What territories (including dependents, colonies, etc.) are or can be covered by a Design in your jurisdiction?
The statutory rights of a design registered in India extend throughout the territory of India.
2.9 Who can own a Design in your jurisdiction?
Any person claiming to be the proprietor of any new or original design may apply for design registration and that person can be a natural or legal person, such as any company, association or body of individuals, whether incorporated or not, or society or partnership firm.
2.10 How long on average does registration take?
Registration of a design in India generally takes about four to five months from the date of filing the application, if no objections are found. In case an Examination Report is issued in the application, then registration of the design can take eight to 10 months from the date of filing the application.
2.11 What is the average cost of obtaining a Design in your jurisdiction?
The average cost of obtaining a design registration in India is between USD 500 and USD 1,000, depending on factors such as issuance of Examination Report or hearing, etc.
2.12 Is there more than one route to obtaining a registration in your jurisdiction?
No, as of now in India there is only one route to register a design, i.e. by filing a national application.
2.13 Is a Power of Attorney needed?
Yes, a Power of Attorney is required if the application is filed through an attorney/agent.
2.14 If so, does a Power of Attorney require notarisation and/or legalisation?
No, there is no need for legalisation or notarisation of the Power of Attorney. The Power of Attorney, however, should be hand/ink signed by the authorised signatory of the applicant and the original signed Power of Attorney is required to be filed with the Design Office.
2.15 How is priority claimed?
Priority can be claimed under the Paris Convention. To claim such priority, the applicant should file an Indian design application within six months from the date of filing the priority application. Indian applications must include filing details of the basic priority application, and the applicant is required to submit the certified copy of the priority document along with its verified English translation if the priority is not in the English language. The priority document can be filed at the time of filing the Indian application or within a period of three months from the date of Indian filing with additional fees.
2.16 Can you defer publication of Design applications in your jurisdiction? If so, for how long?
No, as of now there is no provision in Indian designs law to defer the publication of an application.
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Authors: Abhai Pandey and Swati Pathania