Law relating to Designs: formula sheet

Key formulas

Design (section 2(d))

Design = features of shape, configuration, pattern, ornament or composition of lines or colours + applied to an article + by an industrial process or means + finished article appeals to and is judged solely by the eye

Excludes mode or principle of construction, mere mechanical device, trade mark, property mark and artistic work under the Copyright Act, 1957.

Article (section 2(a))

Article = any article of manufacture + any substance, artificial or partly artificial and partly natural + any part of an article capable of being made and sold separately

A part counts only if it can be made and sold separately.

Original (section 2(g))

Original = originating from the author, including old designs that are new in their application

Originality here does not demand that the idea never existed before.

Proprietor (section 2(j))

(i) person for whom the author executes the design for good consideration; (ii) person who acquires the design or right to apply it; (iii) otherwise, the author; includes a person to whom it has devolved

Apply clause (i) or (ii) first. The author is proprietor only in other cases.

Copyright in design (section 2(c))

Copyright = exclusive right to apply the design to any article in any class in which the design is registered

Linked to the class of registration.

Controller (section 2(b))

Controller = Controller-General of Patents, Designs and Trade Marks referred to in section 3

Applications are filed in the Patent Office under section 5(2).

Who may apply (Section 5(1))

Person claiming to be proprietor + new or original design + not previously published in any country + not contrary to public order or morality

The Controller 'may' register, after referring the application to an examiner and considering the report.

Bars to registration (Section 4)

(a) not new or original; (b) prior disclosure; (c) not significantly distinguishable; (d) scandalous or obscene matter

Disclosure is tested against the filing date or, where applicable, the priority date.

Form of application (Section 5(2))

Prescribed form + filed in patent office in prescribed manner + prescribed fee

Missing any of the three makes the application defective.

One class only (Section 5(3))

A design may be registered in not more than one class

In case of doubt the Controller decides the class. Under Section 6(2) his decision on the class of an article is final.

Date of registration (Section 5(6))

Registered as of the date of the application

The registration date relates back to the application date.

Abandonment (Section 5(5))

Application not completed within prescribed time owing to applicant's default or neglect = deemed abandoned

Abandoned or refused applications are not open to public inspection (Section 28).

Refusal and appeal (Section 5(4))

Controller may refuse; aggrieved person may appeal to the High Court

The appeal lies to the High Court.

Register of designs (Section 10)

Kept at the patent office; prima facie evidence of matters directed or authorised to be entered

May be maintained wholly or partly on computer, subject to prescribed safeguards.

Term of copyright (Section 11)

10 years from registration + 1 extension of 5 years = 15 years maximum

Extension needs an application to the Controller before the ten years expire, with the prescribed fee.

Three acts of piracy (Section 22(1))

(a) apply design or obvious imitation for sale; (b) import for sale; (c) publish or expose for sale knowing it is pirated

Applies only to articles in the class in which the design is registered, and only during the existence of copyright.

Summary recovery (Section 22(2)(a))

Up to ₹25,000 per contravention; total up to ₹50,000 per design

Recoverable as a contract debt. The ₹50,000 cap applies to this route only.

Suit route (Section 22(2)(b))

Damages + injunction; court not below District Judge

The proprietor chooses either the sum route or the suit route.

Defence and transfer (Section 22(3) and (4))

Any Section 19 cancellation ground is a defence; the case then moves to the High Court

Section 19 grounds include prior registration, prior publication, lack of novelty or originality, and not being a design under Section 2(d).

Restored design (Section 14(2))

No suit for piracy committed between lapse and restoration

Acts done while the registration had ceased to have effect cannot be sued upon.

Fees (Section 24(1))

Fees are payable as prescribed for registration, applications and other matters

The Act fixes no amounts. They come from the rules.

Effect of non-payment (Section 24(2))

Fee payable + fee not paid ⇒ proceeding of no effect

Applies to any proceeding for which a fee is payable under the Act or rules.

Designs bind Government (Section 20)

Registered design: same effect against Government as against any person; Patents Act Chapter XVII applies

Chapter XVII applies to designs as it applies to patents.

Patent provisions applied (Section 23)

Patents Act rules on validity certificates and groundless threats apply to designs

Read patent as copyright in the design, patentee as proprietor, invention as design.

Security of India (Section 46)

Controller shall not disclose prejudicial information and shall act on cancellation as Central Government specifies

Security of India covers designs applied to articles for war, military establishments or international emergencies.

Rule-making (Section 47)

Rules by Central Government notification; previous publication; laid before Parliament for 30 days

Section 47(2)(t) covers fees under Section 24(1).

Convention priority (Section 44)

Application in India within 6 months of the foreign application ⇒ same date as foreign application

No damages for piracy before the actual date of registration in India.

Who can petition for cancellation

Any person interested → petition to the Controller → at any time after registration (Section 19(1))

No limitation period is stated in the section.

Grounds for cancellation (Section 19(1))

(a) previously registered in India; (b) published in India or elsewhere before registration date; (c) not new or original; (d) not registrable under the Act; (e) not a design under Section 2(d)

Five grounds only. Learn them as a list.

Appeal against Controller's order

Appeal to High Court within 3 months of the order (Section 36(1)); time for obtaining a copy excluded (Section 36(2))

High Court's decision is final (Section 36(3)).

Rectification of register (Section 31)

Aggrieved person applies → Controller may make, expunge or vary entry; no power to cancel as under Section 19

Appeal lies to the High Court; the Controller may also refer the application to it.

Security of India (Section 46)

Controller: (a) shall not disclose prejudicial information; (b) shall act on cancellation as notified by the Central Government

Applies to designs used on articles for war, military establishments or emergencies in international relations.

Exhibition protection (Section 21)

Prior notice to Controller + application within 6 months of first exhibiting or publishing

The exhibition must be one notified by the Central Government.

Quick revision

• The Designs Act, 2000 extends to the whole of India and came into force on 11 May 2001.
• A design means only features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article.
• The features must appeal to and be judged solely by the eye in the finished article.
• A design excludes any mode or principle of construction, a mere mechanical device, a trade mark, a property mark and an artistic work under the Copyright Act, 1957.
• Article means any article of manufacture or substance, and includes a part capable of being made and sold separately.
• Copyright in a design means the exclusive right to apply the design to any article in any class in which it is registered.
• Original means originating from the author, and includes old designs that are new in their application.
• The Controller may register a new or original design not previously published in any country and not contrary to public order or morality.
• A design is registered in only one class, and the Controller decides in case of doubt.
• Registration is as of the date of application; refusal can be appealed to the High Court.
• Copyright lasts ten years from registration, extendable by a second period of five years on application and fee.
• Cancellation can be sought by any person interested on grounds in Section 19; appeal lies to the High Court.

Common mistakes

• Saying design protects the function or working of a product. Fix: Remember the words 'judged solely by the eye'. Mode or principle of construction and mere mechanical devices are excluded.
• Treating the author as the proprietor in every case. Fix: Under section 2(j) the author is proprietor only in cases not covered by clauses (i) and (ii). A person who commissions for good consideration or who acquires the design is the proprietor.
• Ignoring prior disclosure by the applicant himself. Fix: Section 4(b) covers disclosure by publication, use or any other way before the filing or priority date, whoever did it.
• Saying the Controller must register every design applied for. Fix: Say the Controller may register after examiner's report, and may refuse, with an appeal to the High Court.
• Saying copyright in a registered design lasts for the author's life plus 60 years. Fix: For a registered design the term is ten years from registration, extendable once by five years (Section 11).
• Stating the ₹50,000 cap as the limit on all remedies. Fix: The ₹25,000 and ₹50,000 limits apply only to the summary recovery under Section 22(2)(a). A damages suit has no such cap.
• Quoting a fee amount in the answer. Fix: Say fees are as prescribed under the rules, made under Section 47. Do not invent amounts.
• Saying a proceeding is invalid or void when the fee is unpaid. Fix: Use the Act's words: the proceeding shall be of no effect unless the fee has been paid.
• Saying cancellation can be sought only within a fixed period after registration. Fix: Section 19(1) says 'at any time after the registration'. State this directly.
• Using Section 31 rectification to cancel a design. Fix: Remember Section 31(5): the Controller cannot cancel a registration under Section 31 as provided in Section 19. Cancellation goes through Section 19.

Exam tips

• Reproduce section 2(d) accurately. It is the most likely short-note or definition question.
• Cite the clause letter, such as section 2(a), 2(c), 2(g) or 2(j), in every answer.
• For proprietor problems, name the sub-clause and give the reason in one line.
• Contrast design with patent and artistic work briefly to show understanding: eye appeal versus function.
• Write the conclusion as the last line, even in a short note.
• Learn the four clauses of Section 4 in order, and cite the clause letter in your answer.
• In case studies, hunt for dates: display, sale, advertisement and filing. They decide Section 4(b).
• For procedure questions, write the sequence: application, examiner, Controller, refusal and appeal, registration as of application date.