Registration of Designs and Prohibited Designs under the Designs Act, 2000

Understand Registration of Designs and Prohibited Designs

Key rules to remember

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.

How to solve Registration of Designs and Prohibited Designs questions

1. 1Identify the issue: procedure of registration, the register, or a Section 4 bar.
2. 2State the rule: Section 5 for who may apply and how, Section 4 for bars, Section 10 for the register.
3. 3Pick out the key facts: who applied, whether the design was shown or sold earlier, whether it differs from known designs, and whether the content is offensive.
4. 4Test each Section 4 clause one by one against the facts. Name the clause that applies.
5. 5For procedure questions, walk through: application in prescribed form with fee, examiner reference, Controller's decision, refusal and High Court appeal, and registration as of the application date.
6. 6Close with a clear conclusion: registrable, not registrable, or registrable subject to a stated condition.

Quickest way: Four-clause Section 4 check

Common mistakes in Registration of Designs and Prohibited Designs

• Ignoring prior disclosure by the applicant himself.

  Students think only copying by others defeats novelty.

  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.

  The word 'may' in Section 5(1) is missed.

  Fix: Say the Controller may register after examiner's report, and may refuse, with an appeal to the High Court.

• Writing that appeal against refusal lies to the Controller or a tribunal.

  Confusion with other IP statutes.

  Fix: Section 5(4) as supplied says the aggrieved person may appeal to the High Court.

• Claiming a design can be registered in several classes.

  Mixing up classes with articles.

  Fix: One class only (Section 5(3)), though it may cover any or all articles in that class (Section 6(1)).

• Treating the register as conclusive proof.

  Overstating its value.

  Fix: Section 10(4) says only prima facie evidence of matters directed or authorised to be entered.

• Dropping the section number or the conclusion.

  Writing from memory without structure.

  Fix: Cite the section for each point and end with a one-line conclusion.

Worked examples