What is protectable under Indian Design Act?
A design protection is provided for new or original features of shape, configuration pattern, ornamentation or composition of lines or colours as applied to an article. It is to be judged solely by appeal to the eye.
Can a priority be claimed based on an application outside India?
Yes a priority claim is allowed if an application in India is filed within six months from the date of filing of first application in the convention country.
How long does a Design Registration lasts in India?
A Design once registered is valid for 10 years from the date of registration. In cases where claim for priority is allowed, it is 10 years from the priority date. A design can be renewed for another five years on payment of prescribed fee.
Is there a Novelty requirement, If so what is its coverage?
The Design to be registered should be novel or original, not previously published or used in any country before the date of application for registration. The novelty requirement is absolute and no prior publication anywhere in the world is required under the Indian Design Act.
Is there a grace period for the novelty requirement?
There is a grace period of six months for disclosure of a design wherein the disclosure is restricted to an industrial or other exhibition and if a prior notice in this respect along with prescribed fee is given to the Controller. An application for such registration should be made within six months from the date of first exhibiting the design.
What types of representations are required for filing a design application?
The design application can be filed with line drawings or with photographs. The article must be shown in isolation and features of the design must be clearly accurately visible. The representations should be clear depicting various views of the article covering at least perspective view, front view, rear view, top view, bottom view, side view and another side view.
Can multiple images be included in a single application, and if so how many?
Multiple images of a design may be included in a single application provided said images relate to a single embodiment of the design in question as only different views of a single embodiment are allowable in an application. Separate applications are required to be filed for multiple or alternative embodiments, if any.
Is it necessary to record a Design Assignment with the authorities?
Design assignments must be registered with the authorities within six months of the date of execution or within an extended time period of six months.
Is there a time period for submitting priority document in case of applications claiming priority from an earlier filed application?
Yes, the priority document should be filed along with the application. However if not filed with the application it may be filed within three months along with prescribed fee from filing date in India.
What is the approximate time from filing to registration?
Generally, it takes 6-9 months from the filing to the issue of registration of design certificate. Generally, the examination is conducted within 3-4 months from the filing date of the design application. The applicant is required to comply with all the objections/requirements raised in the official action within the six months from the date of filing the application. It is possible to request for additional time of up to a maximum three months to comply with the objections. Thus, even with objections being raised the design registration is completed within 9 months of filing.
Can a registration be restored?
Yes, a Design registration can be restored within a year from its date of expiry.
Can the same applicant make an application for the same design again, if the prior application has been abandoned?
Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the intervening period.
Are any criminal remedies available in case of Design registration infringement?
No, there are no criminal remedies available in case of Design infringement.
What are civil remedies for design infringement?
In case of infringement of a design, the proprietor may bring a suit against the infringer for recovery of damages, injunction to stop there use and seizure of infringing products.
Can the registration of a Design be cancelled?
The cancellation of a registered design can be filed by an interested person anytime after registration of a design on the following grounds:
- That the design has been previously registered in India or
- That it has been published in India or elsewhere prior to date of registration; or
- The design is not new or original; or
- Design is not registrable; or
- It is not a design as defined under law i.e new or original features of shape, configuration pattern, ornamentation or composition of lines or colours as applied to articles which are judged solely by appeal to eye.