DESIGN PROTECTION IN INDIA 

Following the article on US Design Patents in our October 2011 newsletter, this month we discuss the  protection of industrial designs in India. Designs are protected under the Designs Act 2000, along with the associated Design Rules 2001 and (Amendment) Rules 2008. Information on filing design applications in India can be obtained from the Manual of Designs Practice and Procedure of the Patent Office.  

DEFINITION

In India, a design is defined as “the features of shape, configuration, pattern, ornament or composition of lines or colors 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 of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.” A design is registered by filing one or more views of the design along with a statement of novelty claimed.
 
Differences with Respect to US Filing

Unlike in the United States, designs are subject to “registration” in India, i.e. a certificate of registration issued. However, apart from the difference in terminology, India, as signatory to the intellectual property treaty obligations under WIPO, has a strong legal framework for protecting industrial designs. Other differences include a 15 year term of validity (Sec 11 of the Designs Act) (10 year initial grant + 5-year renewal), while in the US system design patents are valid for 14 years. The term “copyright” is used in the Indian statute to mean the exclusive right to apply a design to any article in the class in which the design is registered.

Trends in Design Applications Filing

Trends in design application filings in India between 2004-2010 are shown in Fig. 1 and 2 based on data released in the Annual Reports of the Office of CGPDTM 2009-10.
 

As seen in Fig. 1, there is a general upward trend in applications filed and registered, except for a marginal decrease in 2009-10.
 

Fig. 2: Design filing trends by origin of filing as domestic/foreign

The number of design applications filed and registered by Indian applicants (Fig. 2) leads the foreign origin applications by 40-60%, which is contrary to the trend in utility patent applications, where over 80% of the filings in 2009-2010 (p.18) were filed by foreign nationals. These numbers show that design filings have perhaps been underutilized compared to utility patents, particularly in comparison with China where design filings exceed utility filings (WIPO, table A.4). With the growing interest in the Indian market, there is ample scope for growth of design filings in India.  As of 2010 some of the leading Indian design patent assignees were Crompton Greaves Ltd, MA Design India Pvt Ltd., Junaga Jewellery Pvt. Ltd., Tata Automobiles Ltd., Philips Electronics India Ltd., Anchor Electricals Pvt. Ltd., Tata Motors Ltd., Bajaj Auto Ltd., Eicher Goodearth Pvt. Ltd., Godrej & Boyce Mfg.Co. Ltd., Gold Medal Electricals Pvt. Ltd., Larsen & Toubro Ltd.

LITIGATION INVOLVING DESIGNS

In India, design litigation decisions are available through the official Govt. of India Website as well as through http://indiankanoon.org/. A compilation of Controller’s and court decisions is also given in Appendix 1 of the Manual of Designs Practice and Procedure.  The current position in interpreting design claims is based on the decision in GlaxoSmithkline Consumer Healthcare GmbH v Anchor Health & Beau.... Here, the Delhi High Court applied the “ordinary observer test” although the language used was slightly different. It was held that novelty should be capable of making a design different and distinctive “at first sight of the consumer”.
 
Other interesting cases include Reckitt Benckiser (India) Ltd (Plaintiff) v. Wyeth Ltd (Defendant). Reckitt appealed the dismissal of its petition for an injunction against Wyeth to a Division Bench of the Delhi High Court. The question on appeal was whether prior registration in foreign jurisdictions could be used as “prior disclosure” under Section 4(b) of the Designs Act, 2000 to cancel a design registration and thus be used as a defence in an infringement lawsuit. The Division Bench (DB) reversed the holding in favor of the appellants Reckitt, upholding the validity of their design registration. The DB ruled that a design remains new or original even if it is published in India or abroad within the six month period following the filing of an application for registration of such design in the specified country so long as an application for registration of the design is filed in India within this six-month period.

REQUIREMENTS FOR DESIGN REGISTRATION

Design registrations must fulfill the following conditions: 

• The design must be new or original - and should not have been disclosed to the public anywhere in any form before the filing date
• Must be distinguishable from known designs
• Must be applicable on an article such as paper and appeal to the eye
• Shall contain no scandalous or obscene matter
• Is not merely a mechanical contrivance
• Shall not be contrary to public order or morality

The novelty of the design should reside in the article taken as a whole instead of highlighting or pin-pointing any portion of the representation as novel. In addition to a statement of novelty, the Indian Patent Office requires disclaimers regarding the words, letters, numbers or trademarks present on the representation sheet(s), and with respect to any mechanical features, principle of action or operation of the article should be endorsed in all the representation sheets.

APPLICATION PROCEDURE

Applications should be duly filed using the prescribed form (Form-1) along with the prescribed fees, stating name in full, address, nationality, name of the article, class number, and address for service in India. The application shall also be signed either by the applicant or by his authorized agent.
 
Power of authority in Form 21 must accompany the application, if filed through an agent. Priority documents shall be filed along with the application in case of conventional application claimed under Section 44 of the Designs Act 2000. Currently the filing fee is Rs.1000 (about $20) per application.
 
An application for registration of a design under Section 5(2), 3(3), or 3(4) shall be addressed to the Controller of Designs, The Patent Office, CP-2, Sector-V, Salt Lake, Kolkata- 700091. (E-mail:controllerdesign.ipo (at) nic.in). Alternatively, the application can be filed with any of the other three Patent Offices at Delhi, Mumbai or Chennai. However, the examination and office actions are handled by the Kolkata office.
 
Design Classification System
 
India has adopted a new classification that conforms to the Locarno Classification of industrial designs.

Types of Design Applications

Two types of design applications are filed, a) ordinary applications that do not claim priority under section 5 or 44, and b) reciprocity applications. A reciprocity application claims priority to an application filed previously in a convention country. Such an application shall be filed in India within six months from the date of filing in a convention country, which is not extensible.
 
DESIGN PROSECUTION
 
The flow chart in Fig. 3 explains the following steps involved in design registration: 

1. The application for registration of design is filed complying with the requirements stated earlier
2. The filed application is examined by the Examiner of Designs to check whether the applicationand all the documents satisfy the formal requirements and whether such design as applied toan article is registrable as per section 5(1) and under the provisions of the Designs Act 2000and Design (Amendment) Rules 2008. After thorough formality check if the application is  deficient in any aspect, the Examiner reports the deficiency to the Controller, who communicates  the statement of objections to the applicant
3. The applicant should comply with rectification of the deficiencies within three months from thedate of communication of the objections failing which the application shall be treated aswithdrawn. The application will be taken up for substantive examination only after compliance ofthe objections to judge whether the design under consideration is a “design” under the Act;new or original; prejudicial to public order or morality and prejudicial to the security of India
4. After substantive examination a statement of objections (if any) is sent to the applicant. If theapplicant wishes to contest the objection(s) issued by the examiner, he may respond to theobjections clearly stating the reasons. Then the Controller shall give a hearing to decide thecase. In case of any decision adverse to the applicant, the Controller shall issue a speakingorder
5. Once the application is accepted after addressing the objections or after hearing the notice ofappeal from the court the controller issues notification in the Patent Office Journal as shown in  Fig. 4, after which the certificate of registration is issued

Fig. 3:  Design registration process in India

Fig. 4: A typical notification of design registration in the Patent Office Journal

Effect of Indian Design Registration 
 

1. When a design is registered, the proprietor of the registered design has copyright in the design for a period of ten years from the date of registration. It can be extended for another five years from the expiration of the original period of ten years by applying in the prescribed manner, i.e. by filing a renewal of registration in Form 3
2. Use of registered design except through license or written consent of the registered proprietor is illegal by any person during the validity of registration
3. A registered proprietor can sue for recovery of damages for any contravention of the design rights through copying of the registered design
4. A registered proprietor can effect assignments and transmissions of the registered design and the details of the same should be entered in the Register of Designs at the Patent Office, Kolkata
5. The person entitled by assignment, transmission or other operation of law to copyright in the registered design can register his title by filing an application in the prescribed form with the Controller of Designs
6. The exhibition of a design, or of any article to which a design is applied, will not prevent the design from being registered or invalidate the registration, provided the exhibitor gives prior notice to the Controller of Designs in the prescribed manner. Such application for registration is to be made within six months from the date of first exhibiting the design or article or publishing a description of the design
7. The provisions of the Patents Act 1970 with regard to certificates of validity of a patent and to the remedial action in case of groundless threats of action against infringement apply in the same manner in case of registered designs as in the case of patents