Registered Designs
If Your Product's Appearance Drives Its Appeal, That Appearance Is Worth Protecting.
In many industries, consumer goods, packaging, furniture, fashion, electronics, and industrial products, how a product looks like, is as commercially significant as what it does. A distinctive shape, a recognisable surface pattern, or a unique configuration can be the primary reason a consumer chooses one product over another.
The Designs Act, 2000 provides the legal mechanism to protect these visual characteristics. Registration under the Act gives you the exclusive right to apply your design to an article in the registered class, and the legal standing to take action against any person who uses that design without your authorisation.
What is a Registered Design?
Under Section 2(d) of the Designs Act, 2000, a “design” means the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article — whether in two-dimensional or three-dimensional form or both — by any industrial process or means, that in the finished article appeal to and are judged solely by the eye.
In practical terms, this means registered design protection covers the visual and aesthetic qualities of a manufactured article. It should not be confused with protecting the functional or mechanical aspects of the article, those are addressed through patent law. What it protects is the way the article looks.
What Can Be Registered as a Design?
A design registration is available for any original, new design applied to an article that has not been previously published or used in India or elsewhere. The article must be capable of being made by an industrial process. The following are registrable:
The shape or configuration of a three dimensional article, such as the distinctive form of a container, a piece of furniture, a consumer product casing, or an industrial component.
A pattern or ornament applied to an article’s surface such as a textile print, a decorative surface finish on tiles, or a repeating motif applied to a product’s exterior.
A composition of lines or colours applied to an article, such as a particular arrangement of graphic elements on packaging.
Any combination of the above, provided it satisfies the criteria of novelty and originality.
What Cannot Be Registered?
The following are expressly excluded from design protection under the Act:
- Any design that is not new or original, i.e. novelty is assessed globally, and a design that has been published or used anywhere in the world prior to the date of application cannot be registered.
- Any design that consists solely of a mode or principle of construction, meaning purely functional designs that derive their form entirely from their function.
- Any design that is applied to an article that is not visible in the finished article, for example, internal components of a machine that are not visible once assembled.
- Flags, emblems, and official insignia protected under the Prevention of Improper Use Act, 1950.
- Any design that is contrary to public order or morality.
Who Can Apply for Design Registration?
The following may apply for registration of a design under the Designs Act, 2000:
- The original creator of the design, if they have not assigned it to another party.
- The employer of the creator, where the design was created in the course of employment and the employment agreement or the relevant law provides for ownership to vest in the employer.
- An assignee who has acquired the rights to the design by way of a formal assignment.
- A legal representative of any of the above.
Applications may be made by Indian nationals, foreign nationals, individuals, proprietorship firms, partnership firms, limited liability partnerships, and companies registered in India or abroad.
Classification of Designs
Design applications in India are classified under the Locarno Classification system, which divides products into 32 classes. The class under which an application is filed determines the scope of the protection granted. A single application may cover only one class of article. Where protection is sought across multiple classes, separate applications must be filed for each.
Selecting the correct class at the time of filing is important. An application filed in the wrong class cannot be amended to move it to another class after its filing. This is one of the reasons professional guidance at the application stage reduces the risk of registration failure.
Documents Required for Design Registration
The following documents are required to file a design registration application in India:
- Representations of the design typically with four to six views of the article (front, back, left, right, top, and bottom), prepared in accordance with the requirements of the Office of the Controller General of Patents, Designs and Trade Marks. These must be clear drawings, illustrations, or photographs that fully disclose every feature of the design for which protection is sought.
- A signed Power of Attorney, for example, authorising Gurman Chahal Chambers to file and prosecute the application on the applicant’s behalf.
- Identity and address proof of the applicant.
- If the applicant is a company or LLP, the incorporation documents and identity proof of the authorised signatory.
- A statement of novelty. This is a written statement, included in the application, specifying the features of the design that are claimed to be novel and original.
- A disclaimer, where the representation includes elements such as mechanical features or structural parts not intended to form part of the design claim.
The Registration Process
FILING THE APPLICATION
The design registration application is filed with the Office of the Controller General of Patents, Designs and Trade Marks. The application must specify the article to which the design is applied, the Locarno class, the representations, and the statement of novelty. As of the date of filing, the design receives provisional protection.
EXAMINATION
Once filed, the application is examined by an examiner at the Designs Office. The examiner reviews the application for compliance with the formal requirements of the Act and the Design Rules, 2001, and assesses whether the design appears to be new and original based on available records. If the examiner raises objections, these are communicated to the applicant in a formal examination report.
RESPONSE TO OBJECTIONS
Objections raised during examination must be addressed within the time prescribed under the Rules. Common grounds for objection include lack of novelty, incorrect classification, insufficient or unclear representations, and deficiencies in the statement of novelty. The response must address each objection with clarity and, where required, with supporting arguments or amended representations. Examination objections, if not addressed properly and within time, result in the application being treated as abandoned.
REGISTRATION AND CERTIFICATE
If the examiner is satisfied with the application and any response filed, the design is registered and a Registration Certificate is issued. The registration is recorded in the Register of Designs and the design becomes enforceable from the date of registration.
Duration of Protection and Renewal
A registered design is initially protected for a period of ten years from the date of registration. This initial period of protection may be extended by a further period of five years on payment of the prescribed renewal fee, giving a total maximum protection period of fifteen years from the date of registration.
Unlike trademarks, which can be renewed indefinitely, design protection has a fixed maximum term of fifteen years. After this period, the design enters the public domain and may be freely used by any party.
It is important to apply for renewal before the expiry of the initial ten-year term. Failure to do so results in the design being struck off the register, and the protection ceases.
Design Infringement and Enforcement
Registration of a design confers upon the registered proprietor the exclusive right to apply the design to the article in the relevant class. Any person who, without the licence of the registered proprietor, applies the registered design or any fraudulent or obvious imitation of it to any article for the purpose of sale, imports any article to which a registered design has been applied without licence, publishes such an article for sale, or knowingly aids or abets the doing of any of these acts, commits an act of piracy of the registered design under the Act.
The remedies available to a registered design owner include civil proceedings for an injunction restraining further infringement, recovery of damages or an account of profits, and delivery up or destruction of the infringing goods. The Designs Act also provides for specific monetary penalties for each contravention.
If your registered design is being used without authorisation whether by a competitor, an importer, or an online seller you can seek assistance of a qualified IP Attorney who can advise you on the appropriate enforcement mechanism, draft and issue the necessary legal correspondence, and represent you in infringement proceedings before the appropriate court.
Design Protection and Copyright:- Understand the Overlap
A common point of confusion is the relationship between design registration and copyright. An artistic work that is applied industrially to more than fifty articles loses its copyright protection under Section 15 of the Copyright Act, 1957, and thereafter the design can be protected only under the Designs Act if registered. If neither copyright nor design registration is in place, the design may be left without any enforceable protection.
This makes the timing of registration decisions important. If you are developing a design that you intend to apply to manufactured goods at scale, taking advice before commercial launch is advisable, not after the protection window has narrowed.
Discuss Your Design Protection Requirements
Whether you are protecting a product design before launch, responding to infringement of a registered design, or seeking to understand how design protection interacts with your broader IP position, contact chambers to arrange a consultation.
