1. Can stamps, labels, tokens, cards be considered an article for the purpose of registration of Design?
No. 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.
2. 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 Design Office, provided the applicant does not publish the said design in the intervening period.
3. What happens if someone makes copies of the registered design? What is the penalty for such infringement?
The proprietor of the registered design can file a suit for infringement against the infringer and claim damages.
If any person commits piracy of a registered design, as defined in Section 22, he shall be liable to pay a sum not exceeding Rs.25,000 recoverable as a contract debt, provided that the total sum recoverable in respect of any one design shall not exceed Rs.50,000.
4. What are the advantages to business for protecting industrial designs?
The protection of industrial designs should form an integral part of any business strategy. The main reasons to protect industrial designs are the following:
- Return on investments: Protection contributes to obtaining a return on investments made in creating and marketing attractive and innovative products.
- Exclusive rights: Protection provides exclusive rights for at least 10 years, so as to prevent or stop others from commercially exploiting or copying the industrial design.
- Strengthen brands: Industrial designs can be an important element of a company’s brand. Protecting industrial designs contributes to protecting a company’s brand.
- Opportunity to license or sell: Protection provides rights that may be sold or licensed to another enterprise, which will then be a source of income for the owner of the rights.
- Positive image: Protection helps convey a positive image of a company, since industrial designs are business assets which may increase the market value of a company and its products.
- Reward: Protecting industrial designs rewards and encourages creativity.
5. 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.
6. What is the term of Protection if Design is registered?
The copyright in a registered design may be extended by a period of five years, from the expiration of original period of ten years. An application for extension of copyright shall be filed before the expiry of the original period of ten years. A registration of design ceases to be effective on non-payment of extension fee.
However, lapsed designs may be restored provided application for restoration with prescribed fees is filed within one year from the date of lapse stating the ground for such non-payment of extension fee with sufficient reasons. If the application for restoration is allowed the proprietor is required to pay the prescribed extension fee and requisite additional fee and finally the lapsed registration is restored.
7. Can the Refusal of Design Registration be appealed?
Yes, the jurisdiction lies with High Court.
8. Who may apply for Design Registration?
Any person claiming to be the proprietor of any new or original design may apply for registration. A proprietor may be from India or from a Convention Country.
A proprietor may be:
- an author of design,
- a person who has acquired the design,
- a person for whom the design has been developed by the author, or
- a person on whom the design has devolved.
9. Does registration of Design in India gives protection worldwide?
No. Design protection is a territorial right and therefore it is effective only within the territory o India. However, after filing an application in India, the applicant can file application for same design in convention countries, before expiry of twelve months from the filing date in India. Designs should be obtained in each country where the applicant requires protection of his article.
10. Can the name, address of proprietor or address for service be altered in the register of design?
Yes, name and address of the registered proprietor, 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.
Appropriate form with prescribed fees should be filed to the Controller of Designs with all necessary documents in support of the application as required. The changes will reflect in the application in a matter of few months.
11. 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 and vice-versa.
12. What are the jurisdictions for filing design application in India?
Applications can be filed in either the Design Office in Kolkata or the branch offices of the Patent office in Delhi, Mumbai or Chennai.
13. Is it necessary to have prototype article before applying for Design Registration?
No, it’s not mandatory to have prototype. However, Design must be capable of being applied to article by an Industrial Process.
14. What kind of protection does an industrial design right offer?
In principle, the owner of a registered industrial design or of a design patent has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy or substantially a copy of the protected design, when such acts are undertaken for commercial purposes.