What is meant by Intellectual Property?
Intellectual Property is the Property, which has been created by exercise of
Intellectual Faculty. It is the result of persons Intellectual Activities. Thus
Intellectual Property refers to creation of mind such as inventions, designs for
industrial articles, literary, artistic work, symbols which are ultimately used
in commerce. Intellectual Property rights allow the creators or owners to have
the benefits from their works when these are exploited commercially. These
rights are statutory rights governed in accordance with the provisions of
corresponding legislations. Intellectual Property rights reward creativity &
human endeavor which fuel the progress of humankind. The intellectual property
is classified into seven categories i.e . (1) Patent (2) Industrial Design (3)
Trade Marks (4) Copyright (5) Geographical Indications (6) Lay out designs of
integrated circuits (7) Protection of undisclosed information/Trade Secret
according to TRIPs agreements.
What is meant by ‘Design’ under the Designs Act, 2000 ?
‘Design’ means only the 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, but
does not include any mode or principle or construction or any thing which is in
substance a mere mechanical device, and does not include any trade mark, as
define in clause (v) of sub-section of Section 2 of the Trade and Merchandise
Marks Act, 1958, property mark or artistic works as defined under Section 2(c)
of the Copyright Act, 1957.
What is meant by an article under the Designs Act, 2000 ?
the Designs Act, 2000 the "article" means any article of manufacture and any
substance, artificial, or partly artificial and partly natural; and includes any
part of an article capable of being made and sold separately;
What is the object of registration of Designs?
Object of the Designs Act to protect new or original designs so created to be
applied or applicable to particular article to be manufactured by Industrial
Process or means. Sometimes purchase of articles for use is influenced not only
by their practical efficiency but also by their appearance. The important
purpose of design Registration is to see that the artisan, creator, originator
of a design having aesthetic look is not deprived of his bonafide reward by
others applying it to their goods.
what are the essential requirements for the registration of ‘design’ under the
Designs Act, 2000?
The design should be new or original, not previously published or used in any
country before the date of application for registration. The novelty may reside
in the application of a known shape or pattern to new subject matter. Practical
shape of "Kutub Minar" when applied to a cigarette holder the same is
registrable. However, if the design for which application is made does not
involve any real mental activity for conception, then registration may not be
design should relate to features of shape, configuration, pattern or
ornamentation applied or applicable to an article. Thus, designs of industrial
plans, layouts and installations are not registrable under the Act. (3) The
design should be applied or applicable to any article by any industrial process.
Normally, designs of artistic nature like painting, sculptures and the like
which are not produced in bulk by any industrial process are excluded from
registration under the Act. (4) The features of the design in the finished
article should appeal to and are judged solely by the eye. This implies that the
design must appear and should be visible on the finished article, for which it
is meant. Thus, any design in the inside arrangement of a box, money purse or
almirah may not be considered for showing such articles in the open state, as
those articles are generally put in the market in the closed state. (5) Any mode
or principle of construction or operation or any thing which is in substance a
mere mechanical device, would not be registrable design. For instance a key
having its novelty only in the shape of its corrugation or bend at the portion
intended to engage with levers inside the lock associated with, cannot be
registered as a design under the Act. However, when any design suggests any mode
or principle of construction or mechanical or other action of a mechanism, a
suitable disclaimer in respect there of is required to be inserted on its
representation, provided there are other registrable features in the design. (6)
The design should not include any Trade Mark or property mark or artistic works
as define under the Copyright Act, 1957.
Q.6. Can stamps. Labels, tokens, cards, be considered an article for the purpose
Because once the alleged Design i.e., ornamentation is removed only a piece of
paper, metal or like material remains and the article referred ceases to exist.
Article must have its existence independent of the Designs applied to it.
[Design with respect to label was held not registrable, by an Order on civil
original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to
an article should be integral with the article itself.
When does the Applicant for Registration of Design get the registration
an application for registration of a Design is in order, it is accepted and
registered and then a certificate of registration is issued to the applicant.
separate request should be made to the Controller for obtaining a certified copy
of the certificate for legal proceeding with requisite fee.
What is a Register of Designs?
Register of Designs is a document maintained by The Patent Office, Kolkata as a
statutory requirement. It contains the design number, class number, date of
filing (in this country) and reciprocity date (if any), name and address of
Proprietor and such other matters as would affect the validity of proprietorship
of the design and it is open for public inspection on payment of prescribed fee
& extract from register may also be obtained on request with the prescribed fee.
What is the effect of registration of design?
registration of a design confers upon the registered proprietor ‘Copyright’ in
the design for the period of registration. ‘Copyright’ means the exclusive right
to apply a design to the article belonging to the class in which it is
What is the duration of the registration of a design? Can it be extended?
duration of the registration of a design is initially ten years from the date of
registration, but in cases where claim to priority has been allowed the duration
is ten years from the priority date.
initial period of registration may be extended by further period of 5 years on
an application made in Form-3 accompanied by a fee of Rs. 2,000/- to the
Controller before the expiry of the said initial period of Copyright.
proprietor of a design may make application for such extension even as soon as
the design is registered.
What is the date of registration?
date of registration except in case of priority is the actual date of filing of
the application. In case of registration of design with priority, the date of
registration is the date of making an application in the reciprocal country.
Is it possible to re-register a design in respect of which Copyright has
Ans. No. A
registered design, the copyright of which has expired cannot be re-registered.
How one can ascertain whether registration subsists in respect of any design?
ascertaining whether registration subsists in respect of a design, a request
should be made to the Patent Office, Kolkata. If the serial number of the
registered design is known, the request should be made on Form 6, otherwise on
Form 7, together with fee of Rs. 500/- or Rs. 1,000/- respectively. Each such
request should be confined to information in respect of a single design.
What is piracy of a Design?
Piracy of a design means the application of a design or its imitation to any
article belonging to class of articles in which the design has been registered
for the purpose of sale or importation of such articles without the written
consent of the registered proprietor. Publishing such articles or exposing terms
for sale with knowledge of the unauthorized application of the design to them
also involves piracy of the design.
What is the penalty for the piracy of a registered Design?
anyone contravenes the copyright in a design he is liable for every offence to
pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a
maximum of Rs. 50,000/- recoverable as contract debt in respect of any one
design. The registered proprietor may bring a suit for the recovery of the
damages for any such contravention and for injunction against repetition of the
same. Total sum recoverable shall not exceed Rs. 50,000/-as contract debt as
stated in Section 22(2)(a). The suit for infringement, recovery of damage etc
should not be filed in any court below the court of District Judge.
Is marking of an article compulsory in the cases of article to which a
registered design has been applied?
it would be always advantageous to the registered proprietors to mark the
article so as to indicate the number of the registered design except in the case
of Textile designs. Otherwise, the registered proprietor would not be entitled
to claim damages from any infringer unless the registered proprietor establishes
that the registered proprietor took all proper steps to ensure the marking of
the article, or unless the registered proprietor show that the infringement took
place after the person guilty thereof knew or had received notice of the
existence of the copyright in the design.
Can the Registration of a Design be cancelled ?
registration of a design may be cancelled at any time after the registration of
design on a petition for cancellation in form 8 with a fee of Rs. 1,500/-to the
Controller of Designs on the following grounds:
the design has been previously registered in India or
it has been published in India or elsewhere prior to date of registration or
design is not new or original or
is not registrable or
not a design under Clause (d) of Section 2.
Is it mandatory to make the article by industrial process or means before making
an application for registration of design ?
design means a conception or suggestion or idea of a shape or pattern which can
be applied to an article or intended to be applied by industrial process or
means. Example- a new shape which can be applied to a pen thus capable of
producing a new appearance of a pen on the visual appearance. It is not
mandatory to produce the pen first and then make an application.
Why is it important for filing the application for registration of design at the
earliest possible ?
First-to-file rule is applicable for registrability of design. If two or more
applications relating to an identical or a similar design are filed on different
dates only first application will be considered for registration of design.
Can the same applicant make an application for the same design again, if the
prior application has been abandoned ?
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 meanwhile.
How to get information on registration of design?
After registration of designs the most relevant view(s) of the article alongwith
other bibliographic data will be available in the official gazette, which is
being published on every Saturday. However, such provision cannot be implemented
at this stage due to insufficient infrastructure.
Whether it is possible to transfer the right of ownership ?
it is possible to transfer the right through assignment, agreement, transmission
with terms and condition in writing or by operation of law. However, certain
restrictive conditions not being the subject matter of protection relating to
registration of design should not be included in the terms and condition of the
contract/agreement etc. An application in form-10, with a fee of Rs. 500/- in
respect of one design and Rs. 200/- for each additional design, for registration
of the transfer documents is required to be made by the beneficiary to the
Controller within six months from the date of execution of the instruments or
within further period not exceeding six months in aggregate. An
original/notarized copy of the instrument to be registered is required to be
enclosed with the application.
What is meant by priority claim ?
is one of the countries party to the Paris Convention so the provisions for the
right of priority are applicable. On the basis of a regular first application
filed in one of the contracting state, the applicant may within the six months
apply for protection in other contracting states, latter application will be
regarded as if it had been filed on the same day as the first application.
How it is possible to restore the lapse design due to non-payment of extension
fee within prescribed time ?
registration of design will cease to be effective on non-payment of extension
fee for further term of five years if the same is not paid before the expiry of
original period of 10 years. However, new provision has been incorporated in the
Act so that lapsed designs may be restored provided the following conditions are
Application for restoration in Form-4 with fee of Rs. 1,000/- is filed
within one year from the date of lapsed stating the ground for such
non-payment of extension fee with sufficient reasons.
application for restoration is allowed the proprietor is required to pay the
extension fee of Rs. 2,000/- and an additional fee of Rs. 1,000/- and
finally the lapsed registration is restored.
Can the name, address of proprietor or address for service be altered in the
register of design ?
of the registered proprietor, address or address for service can be altered in
the register of designs provided this alteration is not made by way of change of
ownership through conveyance i.e. deed of assignment, transmission, licence
agreement or by any operation of law, for which reference may be made to the
answer against Q. 21. Application in form-22 with a fee of Rs. 200/- should be
filed to the Controller of Designs with all necessary documents in support of
the application as required.
Are the registered designs open for public inspection ?
registered designs are open for public inspection only after publication in the
official gazette on payment of prescribed fee of Rs. 500/- on a request in
Can the application for registration of design be filed by the applicant himself
through a professional person ?
application for registration of design can be filed by the applicant himself or
through a professional person (i.e. patent agent, legal practitioner). However,
for the applicants not resident of India an agent residing in India has to be
How does a registration of design stop other people from exploiting ?
a design is registered, it gives the legal right to bring an action against
those persons (natural/legal entity) who infringe the design right, in the Court
not lower than District Court in order to stop such exploitation and to claim
any damage to which the registered proprietor is legally entitled. However, it
may please be noted that if the design is not registered under the Designs Act,
2000 there will be no legal right to take any action against the infringer under
the provisions of the Designs Act, 2000.
Office does not become involved with any issue relating to enforcement of right
accured by registration, similarly The Patent Office does not involve itself
with any issue relating to exploitation or commercialization of the registered
What are the important criteria for determining a "set of article" ?
Ans.: If a
group of articles meets the following requirements then that group of articles
may be regarded as a set of articles under the Designs Act, 2000:
Ordinarily on sale or intended to be used together.
having common design even though articles are different (same class).
an article having the same design and sold in different sizes is not considered
as a set of articles. Practical example: "Tea set", "Pen set", "Knife set" etc.
What is an artistic work which are not subject matter of registration ?
artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a
subject matter for registration which reads as follows:
works" means: -
painting, a sculpture, a drawing (including a diagram, map, chart or plan)
on engraving or a photograph, whether or not such work possesses artistic
work of architecture and
other work of artistic craftsmanship.
What is meant by classification of goods mentioned in the Third Schedule?
the third Schedule of Design Rules, 2001 the classification of goods has been
mentioned. The classification is based on Locarno Agreement. Only one class
number is to be mentioned in one particular application. It is mandatory under
the Rules. This classification has been made on the basis of Articles on which
the design is applied.
Example: If the design is applied to a toothbrush it will be classified under
class 04-02. Similarly if the design is applied to a calculator, it will be
classified in class 18-01. Subsequent application by the same proprietor for
registration of same or similar design applied to any article of the same class
is possible, but period of registration will be valid only upto period of
previous registration of same design.
What is meant by Property mark as per the Indian Penal Code (Sec. 479)?
mark used for denoting that movable property belongs to a particular person is
called a property mark. It means that marking any movable property or goods, or
any case, package or receptacle containing goods; or using any case, package or
receptacle, with any mark thereon.
example: The mark used by the Indian Railway on their goods may be termed as a
Property Mark for the purpose of easy identification of the owner.