How to Register a Design or a Design Patent in India?

How to Register a Design or a Design Patent in India?

Design registration (also called Design patent) is a form of intellectual property protection that grants you the exclusive right to use, make, sell, or import an article or device that has a unique shape, configuration, pattern, ornament, or composition of lines or colors. A design registration can protect the aesthetic appeal and marketability of your product, as well as prevent others from copying or imitating it.

Comparison between Design Registration and Utility Patent:
Design registration protects the visual appearance or aesthetics of a product, focusing on its shape, configuration, pattern, or ornamentation. Unlike utility patents, which protect the functional aspects of an invention, design registration does not cover the technical or structural details. The primary aim of design registration is to safeguard the product’s visual appeal and prevent others from copying or imitating its appearance.

Video about Patent v/s design registration : 

The article titled “Design Registration in India: A Crucial Intellectual Property Asset for Industries and Product Manufacturers” explores the importance of design registration as a key intellectual property right (IPR) for industries, product manufacturers, and companies engaged in creating and developing unique product designs.

How design registration provides exclusive rights, enhances brand value, offers legal protection against imitation, and opens avenues for monetization through licensing and assignments. It further outlines the process of obtaining design registration in India, including eligibility checks, document preparation, application filing, and maintaining the rights post-registration. Real-life case examples are provided to illustrate the significant benefits that design registration can bring to businesses, emphasizing its role in safeguarding the aesthetic aspects of products and securing a competitive edge in the market.

Detailed Guideline on Design Registration in India

Design registration in India is a legal process through which the visual design of a product, particularly its shape, configuration, pattern, or ornamentation, is protected. This protection is granted under the Designs Act, 2000, ensuring that the registered design cannot be copied or imitated by others. Design registration is essential for industries, especially those located in MIDC (Maharashtra Industrial Development Corporation) areas, as it provides legal protection and fosters innovation by preventing competitors from exploiting the unique designs of their products.

Benefits of Design Registration for Industries and MIDC Area Firms

  1. Monopoly on Design:
    • Exclusive Rights: A registered design gives the owner exclusive rights to use it for 10 years, extendable by an additional 5 years. This exclusivity prevents competitors from using or replicating the design without permission.
    • Market Positioning: Unique and protected designs help in establishing a strong market position, making the product more recognizable and attractive to consumers.
  2. Competitive Advantage:
    • Brand Identity: In a crowded market, a distinctive design can become a part of a company’s brand identity. This differentiation is crucial in gaining a competitive edge.
    • Customer Loyalty: Consistent and recognizable designs help in building customer loyalty, as consumers tend to prefer familiar and aesthetically pleasing products.
  3. Legal Safeguard:
    • Preventing Imitation: Registered designs can be enforced against imitators and counterfeiters, ensuring that competitors cannot legally reproduce the design for their benefit.
    • Legal Recourse: In case of infringement, the design owner can seek legal recourse through civil suits, leading to injunctions, damages, or account of profits from the infringer.
  4. Commercialization Opportunities:
    • Licensing: The owner of a registered design can license it to others, providing a potential revenue stream. This is particularly useful in industries where design innovation is a significant competitive factor.
    • Franchising: Registered designs can be franchised, allowing other businesses to use the design in different geographical areas under specific terms.
  5. Increased Valuation:
    • Asset Creation: Registered designs become intellectual property assets, which can enhance the overall valuation of a company. This is particularly advantageous when seeking investment or during mergers and acquisitions.
  1. Scope of Protection:
    • The registered design is protected under the Designs Act, 2000. The protection covers the visual appearance of the product, including shape, configuration, pattern, and ornamentation.
    • Protection is territorial, meaning it is only applicable within India unless the design is registered in other jurisdictions.
  2. Infringement and Enforcement:
    • If a registered design is infringed upon, the owner can initiate legal proceedings against the infringer. The court may grant an injunction to stop the infringement, award damages, or order an account of profits.
    • The law also provides criminal remedies, including fines and imprisonment, for deliberate and willful infringement of registered designs.
  3. Validity and Renewal:
    • The design registration is valid for an initial period of 10 years, which can be renewed for an additional 5 years. If the renewal fee is not paid, the registration lapses, and the design falls into the public domain.
    • The registered design must be novel and original; otherwise, it may be challenged by third parties.

Relevance and Importance for Industrial Products

  1. Product Differentiation:
    • In industrial settings, where products may have similar functionalities, design becomes a critical differentiator. Registered designs allow companies to stand out in the market by offering visually distinct products.
  2. Protection Against Imitation in High-Volume Manufacturing:
    • For industries in MIDC areas engaged in high-volume manufacturing, protecting the design ensures that the aesthetic appeal of the product remains unique, preventing market dilution by copycats.
  3. Encouraging Innovation:
    • Design registration encourages industries to invest in innovative designs by providing assurance that their efforts will not be easily copied. This is crucial for industries focusing on R&D and product development.
  4. Boosting Exports:
    • Registered designs can enhance the appeal of Indian industrial products in international markets. The design registration can also be extended to other countries, providing global protection and facilitating export opportunities.

Real-Life Cases in India

  1. Moulded Furniture Case:
    • Case Overview: A leading Indian manufacturer of moulded plastic furniture registered the design of their unique chair pattern. A competitor started producing similar chairs with minor variations in design.
    • Outcome: The original manufacturer filed a case for design infringement. The court ruled in favor of the design owner, granting an injunction against the competitor and awarding damages for losses incurred.
  2. Automobile Parts Design:
    • Case Overview: An Indian auto parts manufacturer registered the design of a specific headlamp model used in two-wheelers. A rival company began manufacturing similar headlamps, causing confusion in the market.
    • Outcome: The court held that the rival company’s headlamp design was too similar to the registered design and constituted an infringement. The rival was ordered to cease production and pay compensation to the design owner.
  3. Household Appliances Case:
    • Case Overview: A company producing kitchen appliances registered the design of a mixer grinder with a unique ergonomic shape. Another company started selling a grinder with an almost identical design.
    • Outcome: The original design owner sued for infringement, and the court ruled in their favor, highlighting that the minor differences in design were insufficient to avoid infringement. The infringer was penalized, and the products were removed from the market.

Design registration is a powerful tool for industries, particularly those in MIDC areas, to protect their innovative designs and maintain a competitive edge in the market.

The legal protection it offers against infringement, coupled with the commercial benefits of licensing and asset creation, makes it an essential aspect of intellectual property strategy for industrial products. By securing design registration, industries can safeguard their investments in design and innovation, ensuring long-term success and market leadership.

If you have created a new and original design for an article or device, you may want to register it as a design patent in India. The process of design registration in India involves the following steps:

Process for Design Registration in India

Step 1: Sign a Non-Disclosure Agreement (NDA)

Before you share any information about your design with us, we will sign a non-disclosure agreement (NDA) with you. This is a legal contract that binds us to keep your information confidential and not to disclose it to any third party without your permission. Signing an NDA does not cost you anything and it ensures that your design remains safe and secure with us.

Step 2: Conduct a Design Patentability Search (Optional)

This is an optional step, but we recommend it to check whether your design is eligible for registration or not. A design patentability search is a comprehensive analysis of the existing designs in the same or similar field as your design. It helps to identify any prior art that may affect the novelty and originality of your design. A design patentability search also helps to avoid any potential infringement or opposition issues in the future.

We can conduct a design patentability search for you within 5-10 working days for ₹ 5,000/- or (USD 60) per article/application. We will provide you with a detailed report that includes the relevant prior art, their similarities and differences with your design, and our opinion on the patentability of your design.

Step 3: Prepare and File the Design Application

Once you are satisfied with the results of the design patentability search, or if you decide to skip this step, we will prepare the complete application for your design registration. The application consists of:

  • A request for registration of a design in Form-1
  • Four copies of the representation of the article showing different views of the design
  • A statement of novelty and disclaimer (if any) with respect to the design
  • A declaration of proprietorship or proof of right to apply for the design
  • A power of attorney in Form-21 (if the application is filed by an agent)

We will file the application online at the Indian Patent and Design Office website. The official fee for filing a design application for an individual is ₹ 1,000/- and for a company (legal entity) is ₹ 4,000 /-. The attorney fee for preparing and filing a design application is ₹ 10,000/- or (USD 120) per application.

Step 4: Respond to the First Examination Report (FER) (If Needed)

After filing the application, it will be examined by an examiner at the Design Office. The examiner will check whether your design meets the requirements of registrability as per the Designs Act, 2000, and the Designs Rules, 2001. The examiner will also check whether your design conflicts with any prior registered designs.

If the examiner finds any objection or discrepancy in your application, he/she will issue a First Examination Report (FER) stating the reasons for refusal or asking for amendments or clarifications. You will have to respond to the FER within six months from the date of its issuance. If you fail to do so, your application will be deemed to have been abandoned.

We will help you to prepare and file a suitable response to the FER within the stipulated time.

Step 5: Attend Hearing (If Needed)

If the examiner is not satisfied with your response to the FER, he/she may appoint a hearing date for further discussion on your application. You or your authorized agent will have to attend the hearing and present your arguments in support of your design registration. You may also submit additional documents or evidence if required. We will represent you at the hearing and argue on your behalf.

Step 6: Obtain a Design Certificate

If the examiner is convinced with your response or hearing, he/she will accept your application and issue a Design Certificate. This certificate is proof of your ownership and exclusive right over your registered design. The certificate will also mention the date of registration and the term of protection.

The term of protection for a registered design in India is 10 years from the date of registration, which can be extended by another 5 years on payment of renewal fees.

Summary

The process of design registration in India can be summarized as follows:

StepDescriptionTimeCost
1Sign NDA–Free
2Conduct Design Patentability Search (Optional)5-10 working days₹ 5,000/- or (USD 60) per article/application
3Prepare and File Design Application–₹ 10,000/- or (USD 120) (professional) + (₹1,000/- (official) for individual; OR
₹ 4,000/- (official) for company)
4Respond to FER
(If Needed)		Within 6 months from FER issuance(No professional fees taken for this stage)
5Attend Hearing
(If Needed)		As per examiner’s appointment(No professional fees taken for this stage)
6As per the examiner’s appointment––

Timeline for Design Registration:

The process of design registration in India typically takes around 6 to 12 months, assuming there are no objections or oppositions to the application.

Examples: here is the link for the drive folder which has examples of different views needed for design registration:

https://drive.google.com/drive/folders/10fovtQuwwr4UfE9hhSesL-Rjy1MlOMc6?usp=sharing

How to proceed with design registration: 

We need the below-mentioned information to proceed with design registration: 

  1. Photos / Computer Graphics of the article whose design is to be registered along with your instructions
  2. Title of the Design: Please provide a concise title that accurately describes the design.
  3. Applicant Details: This includes the name, address, and nationality of the applicant(s). If the applicant is a company, please include the company’s registered address and the country of incorporation.

Conclusion

Design registration in India is a valuable way to protect your creative and innovative designs from being copied or imitated by others. It also gives you a competitive edge in the market and enhances your brand image. If you have any questions or queries regarding design registration in India, feel free to contact us. We will be happy to assist you with our expertise and experience.

Prasad Karhad
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