CS Professional · Intellectual Property Rights - Law and Practice

Industrial Designs: formula sheet

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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 + judged solely by the eye; Exclusions: mode or principle of construction, mere mechanical device, trade mark, property mark, artistic work under the Copyright Act, 1957.
Article (section 2(a)): Article = any article of manufacture or substance (artificial or partly artificial and partly natural), including a part 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 is about source and new application, not absolute novelty alone.
Copyright in a design (section 2(c)): Copyright = exclusive right to apply the design to any article in any class in which it is registered; It is a right tied to the registered class, not a copyright under the Copyright Act.
Proprietor (section 2(j)): Proprietor = (i) person for whom the design is executed for good consideration; (ii) person who acquires the design or right; (iii) otherwise, the author; plus successors; Commissioner for consideration beats author as proprietor.
Commencement and extent (section 1): Extends to whole of India; in force from 11 May 2001; Commencement was by Central Government notification.
Section 4 grounds of prohibition: No registration if: (a) not new or original; (b) disclosed to the public before filing/priority date; (c) not significantly distinguishable from known designs or combinations; (d) scandalous or obscene matter; Any one ground is enough to bar registration. Learn the four as N-D-D-S: Novelty, Disclosure, Distinguishable, Scandalous.
Meaning of prior disclosure: Disclosure = publication in tangible form, or use, or any other way, anywhere in India or any other country, before the filing date or priority date; The territory is worldwide. The cut-off is the filing date or priority date, not the registration date.
Section 5(1) conditions: Applicant claims to be proprietor + design new or original + not previously published in any country + not contrary to public order or morality; The Controller refers the application to an examiner before registration and considers the examiner's report.
Section 35 public order or morality: Controller may refuse a design whose use would, in his opinion, be contrary to public order or morality; appeal to High Court; This is a discretionary power ('may refuse'). Do not confuse it with the scandalous or obscene ground in Section 4(d).
Date of registration and priority: Registered as of the date of application (s.5(6)); priority claim valid if filed within 6 months of first foreign application (s.44); Priority gives the design the same date as the foreign application. It does not give damages for piracy before the actual date of registration in India.
Cancellation on Section 4-type grounds: Any person interested may petition the Controller at any time after registration (s.19(1)); Grounds include prior registration in India, prior publication before registration, not new or original, not registrable, not a design under section 2(d). Appeal lies to the High Court.
Register of designs (Section 10(1)): Register = names and addresses of proprietors + notifications of assignments and transmissions + other prescribed matter; Kept at the patent office. May be maintained wholly or partly on computer, subject to prescribed safeguards.
Evidentiary value (Section 10(4)): Register = prima facie evidence of any matter the Act directs or authorises to be entered in it; Prima facie means rebuttable. It is not conclusive proof.
Publication (Section 7): Registration → Controller publishes prescribed particulars → design open to public inspection; Particulars and manner are prescribed by rules. Section 47(2)(d) gives the rule-making power.
Inspection of a registered design (Section 17): 17(1): inspection during the existence of copyright in the design, on identifying information and prescribed fee. 17(2): any person may obtain a certified copy of a registered design on application and fee; Section 17(1) is limited to the period when copyright exists in the design. Section 17(2) is open to any person.
Inspection of registers (Section 26): Every register open to the public at all convenient times + sealed certified copies of entries on prescribed fee; For a computer register, inspection is by the computer printout of the relevant entry.
Registration date (Section 5(6)): Registered as of the date of the application for registration; Useful when linking the register entry to the application.
Section 21 safe harbour: Notified exhibition + previous notice to Controller + application within 6 months of first exhibition/publication = no bar to registration, no invalidation; All three conditions must be met. The exhibition must be one to which Section 21 has been extended by Gazette notification.
Section 21 proviso (a): Exhibitor gives the Controller previous notice in the prescribed form; Notice must come before the exhibition, not after.
Section 21 proviso (b): Application filed ≤ 6 months from date of first exhibiting or first publishing a description; Count from the first exhibition or publication, not the last day of the exhibition.
Section 20: Registered design binds the Government like any person; Chapter XVII of the Patents Act, 1970 applies to designs as to patents; Do not say the Government is exempt from design rights.
Base rule in Section 4: Disclosure to the public before filing date or priority date = design not registrable; Section 21 is an exception to this rule.
Scope of Section 23: Patents Act provisions on (1) certificates of validity + (2) groundless threats of legal proceedings → apply to registered designs; Only these two areas are named in Section 23. Do not say that the whole Patents Act applies.
Substitution key: patent → copyright in a design; patentee → proprietor of a design; invention → the design; Use this when applying the patent provision to a design problem.
Section 20 (Government): Registered design binds the Government like any person; Chapter XVII of the Patents Act applies to designs as to patents; A separate borrowing from Section 23.
Section 32 (Controller's powers): Controller = powers of a civil court: receiving evidence, administering oaths, enforcing attendance of witnesses, compelling discovery and production of documents, issuing commissions, awarding costs; Costs awarded are executable in any court of jurisdiction as if a decree.
Section 17 (Inspection): During existence of copyright in a design: inspect on furnishing identifying information and prescribed fee; certified copy of any registered design on application and fee; Inspection is tied to the period of copyright. Certified copies are available to any person.

Quick revision

Section 4 bars a design that is not new or original, has been disclosed to the public before the filing or priority date, is not significantly distinguishable from known designs, or contains scandalous or obscene matter.
Disclosure under section 4 can be by publication in tangible form, by use, or in any other way, anywhere in India or in any other country.
Under section 5 the Controller refers the application to an examiner and considers the report before registering.
A design may be registered in not more than one class; the Controller decides in case of doubt.
If the Controller refuses to register a design, the aggrieved person may appeal to the High Court.
An application not completed within the prescribed time because of the applicant's default or neglect is deemed abandoned.
A registered design takes effect as of the date of the application for registration.
After registration the Controller publishes the prescribed particulars, and the design is then open to public inspection.
Abandoned or refused applications and their drawings are never open to inspection or published by the Controller.
Exhibition at a notified exhibition does not defeat registration if previous notice is given to the Controller and the application is made within six months of first exhibiting.
An assignment, mortgage or licence of a design is not valid unless it is in writing, in a single instrument with all terms, and filed for registration of title within six months, extendable to six months in aggregate.
A registered design binds the Government like any person, and the Act applies the patent rules on certificates of validity and groundless threats to designs.

Common mistakes

Saying a design protects how a product works. Fix: Design covers only features judged solely by the eye. Mode or principle of construction and mere mechanical devices are excluded.
Treating a logo or brand name as a registrable design. Fix: Section 2(d) excludes trade marks and property marks. Such matter belongs to trade mark law.
Treating the registration date as the cut-off for prior publication. Fix: Section 4(b) refers to the filing date or priority date. Disclosure before that date bars registration. For cancellation, Section 19(1)(b) separately refers to publication before the date of registration.
Thinking only publication in India defeats novelty. Fix: Section 4(b) says 'anywhere in India or in any other country'. Section 5(1) also says not previously published in any country.
Saying the register is conclusive proof. Fix: Write prima facie evidence, as Section 10(4) says. It is rebuttable.
Saying the design is published before registration, as in patents. Fix: Section 7 says publication happens after registration. Only then is the design open to public inspection.
Saying any exhibition protects the design. Fix: Always state that Section 21 applies only to exhibitions to which the Central Government has extended it by notification in the Official Gazette.
Ignoring the prior notice to the Controller. Fix: Treat the notice and the six-month filing as two separate mandatory conditions. Notice must be previous.
Saying the entire Patents Act applies to designs. Fix: Limit Section 23 to certificates of validity and groundless threats. Anything else needs its own section.
Crediting Section 23 for the Controller's civil court powers or inspection. Fix: Controller's powers are in Section 32 and inspection is in Section 17 of the Designs Act itself.

Exam tips

Learn section 2(d) almost word for word. It is the most tested provision in this topic.
In case-based questions, apply each element of the definition to the facts before concluding.
For ownership problems, always run through section 2(j) in its three limbs.
Keep Hague Agreement and TRIPS answers brief and general unless the question demands more.
Do not quote sections you are unsure of. Use the ones in this page.
Quote Section 4 clause by clause. Write (a), (b), (c), (d) with a few words each, then apply them to the facts.
In case questions, find the dates first. Disclosure before the filing or priority date is usually the hidden issue.
Mention the Section 16 and Section 44(2) safeguards when a facts-pattern includes confidential disclosure or exhibition in the six-month priority period.