Designs are concerned with the appearance of a product - features of e.g. shape, configuration, texture or materials not dictated by functional considerations.
The design right resulting from registration confers on the proprietor (for a limited time) the exclusive right to use the design and to authorize others to use it. It also includes the right to make, offer, put on the market, import, export, or use a product in which the design is incorporated or to which it is applied, or to stock such a product for those purposes.
A design means the appearance of part or of the whole product. It may consist of two-dimensional features, such as patterns, lines or colour or of three-dimensional features, such as shape, texture or surface of an article.
Essentially any features, which relate purely to the appearance of the article and are not dictated by the way the article is required to function, fit into or match other components of a larger article. The maximum duration of design protection varies from country to country from 5 up to 25 years.
The design must be new. Details of it must not have been publicly disclosed prior to filing the application unless a grace period is permitted.
The design must have individual character i.e. an informed observer would readily form the overall impression that it can be distinguished from earlier designs.
Some countries in their national legislation and the EU Directive provide a short-term form of copyright protection for industrial designs. Registration is not required and protection is deemed to start when the product is placed on the market. In comparison to registered design, copying of spare parts of unregistered design for e.g. repair purposes does not infringe such rights. So good practice suggests registering your design in order to benefit from a stronger protection.
Applying for a national design registration is generally a straightforward process. An application will have to meet certain minimum requirements. The applicant must be the proprietor i.e. the owner of the design. The proprietor can be the author of the design or the employer of the person who created the design if this was done in the course of the employment (subject to any contract or agreement to the contrary). Any number of representations of the design may be submitted but must be suitable for reproduction. One application may include more than one design, provided that they are intended to be incorporated in objects included in the same class of the international design classification. You should contact your national office which handles applications for design registrations in order to obtain an application form and details of the precise requirements, procedures and fees applicable in your country.
Any person who claims to be the proprietor of any new or original design, not previously published in any country can apply for registration of the design in India.
In case of a design claiming priority, the Applicant must be a person/entity who has applied for protection for any design in any other convention country or group of countries or countries which are members of inter-governmental organizations, or his legal representatives, alone or jointly with any other person. The Indian Design Laws provide for 6 months priority from the date of the earliest application.
The application for a design should be in the manner prescribed under the Designs Act, 2000 and the Designs Rules, 2001. The formal requirements are provided below. It has to be filed in the prescribed form and the official fee is to be paid. Separate application needs to be filed for each design. The same design can be registered in more than one class. The Schedule annexed to the Design Rules provides for the classes in which the application for design can be filed. This Schedule follows the Locarno Classification.
The date of registration of design will be the same as the date of the application for registration.
Upon filing the application for design, the Controller of Patents and Design will refer the matter to the Examiner of Designs. The Examiner will verify whether the application conforms to the formal and substantive requirements as legally prescribed.
After acceptance of the application the Design Office will proceed to grant registration.
The term of registration is for 15 years. The registration is valid for an initial term of 10 years and by renewal this term could be extended for another 5 years.
A design registration can be obtained within a period of 12 (Twelve) months. As regards the design rights, all what is required to be done is to prepare and file design specifications along with the formal documents (the details of which are given below) with the Indian Patent Office. In preparing the design specification, it is to be ensured that the various claims regarding the design in its entirety with all its modifications have been covered.
The Patents & Designs Office issues an official filing receipt as soon as the application has been filed. Thereafter the Patents & Designs Office issues the First Office Action, which may contain formal and/or substantive objections in respect of the application for registration.
In the European Community: Office for Harmonization in the Internal Market (OHIM)
If your market is limited to the European Community, you should consider acquiring design protection across all EU member states with a single application to OHIM.
If your market is outside the European community, you should be aware of the existence of an international design application procedure, created by the Treaty of The Hague. By filing a single international application to WIPO in Geneva you may be able to obtain the protection in several signatory States to the Treaty of The Hague. Usually a registered design is published on registration. However, it may be to your advantage to seek to defer publication of your design. For example applications for Community Design registration can be delayed for up to 30 months and your creation remains confidential until you are ready to disclose it. Your national office will be able to provide detailed information.
Filing and prosecuting applications for registration of Designs.
Infringement and validity opinion.
Litigation, opposition, rectification, appeals, civil suits for infringement.
Assignment and Licensing.
In order to protect and utilize features of shape, configuration, pattern and ornament The Legal Bank provides a full range of services to assist clients in developing and implementing strategic Intellectual capital programs based upon utilization, and enforcement of Design/ Industrial Design which complement their business strategies. We are particularly experienced in obtaining Design protection
Our patent attorneys counsel clients on the availability of design protection and then prosecute appropriate design applications. Our trial attorneys have extensive experience in design litigation should our clients be sued, or should they need to protect or assert their designs/ industrial design through litigation or in the India Patent Office.