Registration of Industrial Designs

• Introduction

Industrial designs add to the article’s commercial value and can strengthen the brand. The biggest benefit of registering designs is the exclusive right granted to the proprietor to apply it to the article. They can prevent their competitors from copying or commercially exploiting the registered design. Further, the registered proprietor can license or sell the design for consideration or royalty. Thus, registered designs are valuable business assets.

• · Requirements for Registration

Novelty and originality are common considerations for registration in various legal regimes. The concerned design is novel if it has not been previously disclosed to the public in a tangible form. It is original if it significantly differs from known designs or combinations of known design features.

In India, the following are the requirements:

1. Novelty & Originality;

2. Appealing to the eye;

3. Capable of being judged solely by the eye;

4. Applied to the article by an industrial process (be it manual, mechanical or chemical); and

5. Devoid of scandalous or obscene matter.

• · International Registration

The Hague Agreement Concerning the International Registration of Industrial Designs (the Hague System or the Hague Agreement) assists in the international filing of applications. It constitutes of two international treaties: the Geneva Act of 1999 and the Hague Act of 1960. The proprietor is relieved from making various national applications to obtain design protection in different countries. With the help of a single application or a ‘deposit’ filed with the International Bureau of the World Intellectual Property Organisation (WIPO), the process has become easier.

The procedure of international registration can be summed up in three steps:

1. Filing of the Application - Either directly at the International Bureau or indirectly through the Office of the applicant’s State. The Application may either be in English, French or Spanish and must particularly contain a reproduction of the industrial designs, the designation of the States where protection is sought and the prescribed fee.

2. Formal Examination by the International Bureau - The Bureau checks if the application complies with the requirements for registration. If approved, it is recorded in the International Register and published in the International Designs Bulletin.

3. Examination - Once published in the International Bulletin, the Office of the designated State checks if the application fulfils the substantial requirements of protection provided for by its domestic legislation. If they are unfulfilled, protection is refused.

However, the provision of international application is not provided to everyone. To be eligible for filing for international registration under the Hague System, the applicant must be a national of a State that is a Contracting Party to the Hague Agreement or be a Member State of an intergovernmental organization which is a Contracting Party. If one wishes to protect their design in a State which is not a party to the Hague Agreement, they will have to file a separate national or regional application.

• Registration in India

India is not a Contracting Party to the Hague Agreement. The registration is governed by the Designs Act, 2000 and the Designs Rules, 2001.

1. Filing the Application - The applicant must submit a duly filled Application along with representations of the design and the prescribed fee at the Design Wing of the Patent Office at Kolkata or any of the Branch Offices of the Patent Office at Delhi, Mumbai and Chennai.

2. Examination - The Application is examined based on provisions under the Act and Rules. In case of any defects, the Applicant is notified and is given time to rectify them. After such rectification, the application is accepted and is notified in the Patent Office journal.

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Sources:

1. FAQ: Industrial Designs Basics (https://www.wipo.int/designs/en/faq_industrialdesigns.html)

2. The Hague System for the International Registration of Industrial Designs: Main Features and Advantages (https://www.wipo.int/edocs/pubdocs/en/wipo_pub_911_2019.pdf)

3. General Information Booklet for Registration of Design (http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/General-Info-Reg-of-Industrial-Designs.pdf)