Manual Of
Designs Practice &Procedure

PUBLISHED BY:
OFFICE OF THE CONTROLLER GENERAL OF PATENTS,
DESIGNS &TRADE MARKS

1CONTENTS

Index

Page No.

Preface
Chapter 1 – Introduction

5

Chapter 2 – Important definitions

7

Chapter 3 – Filing of Design Application

11

Chapter 4 – Examination and registration of designs

24

Chapter 5 - Patent Office Journal

34

Chapter 6 – Piracy of registered designs and consequences thereof

35

Chapter 7 – Post registration procedures

37

Chapter 8 – Transfer of rights

45

Chapter 9 – General Services

47

Chapter 10 – Use and acquisition of registered design by Government

50

Chapter 11 – General powers of Controller

51

Chapter 12 - Evidences etc.

54

Chapter 13 - Restrictive conditions in contract etc.

58

Chapter 14 - Appeals

60

Chapter 15 - Requirements before delivery on sales

61

Chapter -16 – Timelines

63

Annexure
I. Important Case Laws

65

II. Specimen novelty statements & disclaimers in representation sheet

862Preface

This Manual is intended to provide detailed information to the public and users of Design
Registration System on the practice and procedures followed by Designs Wing of the Indian
Patent Office, for processing of Design Applications and other related procedures. The
primary objective of this manual is to streamline the procedure in the Designs Wing and to
make the system more transparent and efficient. The Manual is based on the provisions of
Designs Act, 2000 and the Designs Rules, 2001 as amended in 2008.

The Manual is formatted as a sequence of events from filing of application to registration andpost registration procedures. Reference to sections and rules is provided in the right handcolumn. References to decisions of the courts of India and other countries have been given in
the annexure for better understanding.

Complete automation of the Designs Wing is in progress and the entire process will be madefully e-enabled shortly, which will result in provision of online availability of the status ofapplication, Register of Designs and file documents. E-filing of Design Applications andfurther documents will be introduced soon.

It is observed that 90% of the applications are objected to at the time of examination based onformality issues only. Very few applications are objected on substantive grounds such asnovelty and originality. Such formality objections and their compliance take at least 4-5
months, resulting in delay in disposal of the application. Such faulty filing may be due to lackof proper understanding of the filing procedure, as required under the Law. This manual is
expected to bring in the required understanding of filing procedure among the stakeholders.
The Designs Wing expects to register a properly filed Design Application within a period of
three months from the date of filing, starting April 2011.

The Manual will bring a level of awareness, both among officers and the applicants, asregards the correct procedure involved in the prosecution of Design Applications, which will
reduce the current delay in registration.

3

The Manual does not constitute rule making and hence does not have the force and effect oflaw. Statements made in the Manual are not in themselves an authority as far as registrabilityof a Design Application is concerned. However, the procedural aspects as explained in the
manual shall be binding on the officers and users of the Designs System. While the Manual
may be regarded as a guide, it shall not be construed as an interpretation of the Designs Act
and Rules and consequently may not be quoted to that end.

The Manual will be updated periodically in order to reflect important judgments, decisions
and changes in practice and to correct errors, if any. Suggestions to improve the Manual will
be appreciated.

P.H.KURIAN
Controller General of Patents, Designs &Trade Marks

4

CHAPTER-1
INTRODUCTION
1. The first legislation in India for protection of Industrial Designs was The Patents &Designs Protection Act, 1872. It supplemented the 1859 Act passed by Governor
General of India for granting exclusive privileges to inventors and added protection
for Industrial Design. The 1872 Act included the term ―any new and original pattern ordesign, or the application of such pattern or design to any substance or article ofmanufacture‘.
2. The Inventions & Designs Act of 1888 re-enacted the law relating to protection of
inventions and designs and contained provision relating to Designs in a separate part.
3. The Patents & Designs Act enacted in 1911 also provided for protection of Industrial
Designs.
4. The Patents Act, 1970 repealed the provisions of the Patents and Designs Act, 1911,
so far as they related to Patents. However, the provisions relating to Designs were notrepealed and continued to govern the Designs Law. India joined the WTO as a―member State‖ in 1995. Consequently, the Patents & Designs Act, 1911 was repealed
and the Designs Act, 2000 was enacted, to make the Designs Law in India TRIPS
compliant. The definition of ‗design‘ in the Designs Act, 2000 is more or less the sameas that of the 1911 Act. Novelty under the 1911 Act was determined with reference to
India, whereas under the Designs Act, 2000 novelty is determined on a global basis.
The classification system of the 1911 Act was based on material characteristics of thearticle, whereas the Design Rules 2001 and the amendment in 2008 provide anelaborate classification based on Locarno Classification system.
5. The Designs Act and Rules provide for filing of a Design Application in any of thefour Patent Offices i.e. Patent Office Delhi, Mumbai, Chennai or Kolkata. However,the prosecution of a Design Application is done only at Patent Office, Kolkata. Even
after providing facility to file applications in any of the four IP Offices, the number of
Design Applications has increased only from about 4000 in 2004-05 to 6700 in 200910. This is irrespective of the tremendous growth achieved in the Industrial Sector andexpansion of Design education in the Country. Tardy growth in filing of Design
Applications may be contributed to, amongst other things, lack of awareness about5

prosecution procedures and ignorance of the benefits of registration. The general
feeling of the Creators appears to be that Design registration is a lengthy, time
consuming and costly affair, whereas the facts are to the contrary. This manual isintended to remove such misconceptions. It is also intended to sensitise thestakeholders about the simple registration procedure along with the benefits ofregistration.
6. Some of the key definitions have been explained in Chapter-2.
7. Chapters 3 to 5 explain the procedure for filing of Design Applications, examination,
registration and publication of design in the Patent Office Journal.
8. Chapter 6 to 8 explain the rights of the proprietor, extension of copyright, restorationof design, transfer of copyright, and post grant procedures such as cancellation andrectification.
9. Chapter 9 explains the general services provided by the Designs Wing.
10. Chapter 10 explains the provisions relating to use and acquisition of registered designs
by Government.
11. Chapters 11 and 12 explain the powers and duties of Controller and the procedures
regulating Evidence.
12. Chapter 13 explains the provisions relating to restrictive conditions in contract.
13. Chapter 14 & 15 explains the provisions relating to appeals & requirements before
delivery on sales.
14. Chapter 16 provides the timelines prescribed under the Designs Act and Rules.
15. The Officers functioning under the Act have been vested with statutory powers. They
also have some discretionary powers under the Act which are to be exercised
judiciously. As far as registrability is concerned, the matter under consideration shallnot be decided solely based on the contents of this manual. A judicious decision basedon the Act, Rules and precedents shall be taken. However, as far as procedure isconcerned, all officers of Designs Wing shall follow the procedure set forth in thismanual.

6

CHAPTER – 2
IMPORTANT DEFINITIONS
02.01

GeneralFor better appreciation of this manual, the user may require
to have clear understanding of certain terms which aredefined in the Act or Rules. Definitions of some of theimportant terms are as under.

02.02

Definitions

02.02.01

Controller"Controller" means the Controller General of Patents, Section 2(b),Designs and Trade Marks referred to in Section 3(1) of the 3(1)Designs Act, 2000. Controller shall be construed as Section 3 of the
including a reference to any officer discharging the Trade Marks
functions of Controller in pursuance of Section 3(3).

Act, 1999

Office of the Controller General of Patents, Designs andTrademarks is at Mumbai.

The

Controller

GeneralofPatents,

DesignsandTrademarks is appointed by the Government of India under
Section 3 of the Trademarks Act, 1999. The person so
appointed is the Controller of Designs for the purposes of
Designs Act, 2000.

The Central Government may also appoint other officers
who discharge, under the superintendence and directions oftheController

GeneralofPatents,

DesignsandTrademarks, such functions of the Controller under thisAct as he may authorize in writing, from time to time by7

general or special order.

Examiner of Patents & Designs is authorised to conduct
examination of a Design Application under the provisionsof the Designs Act. The Assistant Controllers, Deputy
Controllers and Joint Controllers of Patents & Designs may
be authorised to discharge the functions of Controller of
Designs under the Designs Act by the Controller Generalof Patents, Designs and Trademarks.
02.02.02

Article―article‖ means any article of manufacture and any Section 2(a)substance, artificial, or partly artificial and partly natural;and includes any part of any article capable of being madeand sold separately.

02.02.03

Copyright in Designs―copyright‖ means the exclusive right to apply a design to Section 2(c)any article in any class in which the design is registered.

02.02.04

Design―design‖ means only the features of shape, configuration, Section 2(d)pattern, ornament or composition of lines or colours
applied to any article whether in two dimensional or three
dimensional or in both forms, by any industrial process ormeans, whether manual, mechanical or chemical, separate
or combined, which in the finished article appeal to and are
judged solely by the eye; but does not include any mode or
principle of construction or anything which is in substancea mere mechanical device, and does not include any trade
mark or property mark (as defined in Section 479 of the
Indian Penal Code) or artistic work (as defined in clause(c) of section 2 of the Copyright Act, 1957).

02.02.05

Legal representative―legal representative‖ means a person who in law Section 2(f)represents the estate of a deceased person.

8

02.02.06

Original―original‖, in relation to a design, means originating from Section 2(g)the author of such design and includes the cases whichthough old in themselves yet are new in their application.

02.02.07

Patent Office―Patent Office‖ means the patent office referred to in Section 2(h)Section 74 of the Patents Act, 1970.
In India, the Patent Office is located at four locations viz.
Delhi, Mumbai, Kolkata & Chennai. However, Designs
Wing is located only at Kolkata. Accordingly, thedocuments relating to designs received in the other three
offices are sent to Kolkata. It may be noted that there is no
separate Designs Office in India.

02.02.08

Proprietor of a new or original design
a. where the author of the design, for good consideration, Section 2(j)executes the work for some other person, means the
person for whom the design is so executed;
b. where any person acquires the design or the right toapply the design to any article, either exclusively of
any other person or otherwise, means, in the respect
and to the extent in and to which the design or righthas been so acquired, the person by whom the design
or right is so acquired; andc. in any other case, means the author of the design; andwhere the property in or the right to apply, the design
has devolved from the original proprietor upon any
other person, includes that other person.

02.02.09

Reciprocity Application
a. ―Reciprocity Application‖ means an application in Rule 2(d)India under section 44 of the Designs Act.
b. A person, who has applied for protection of a Design,in any of the convention countries or group ofcountries or countries which are members of

9Section 44

intergovernmentalorganisations,

may

file

an

application for registration of the same design in India,
within six months from the date of priority. Suchapplications are called reciprocity applications.
02.02.10

Set―Set‖ means a number of articles of the same general Rule 2(e)character ordinarily sold together or intended to be used
together, all bearing the same design, with or without
modification not sufficient to alter the character or
substantially to affect the identity thereof. For instance, tea
set, dinner set, furniture set etc.

10

CHAPTER-3
FILING OF DESIGN APPLICATION
03.01

GeneralProperly filled up application form and appropriately
prepared representation are crucial for efficient
prosecution of a Design Application. It is observedthat 90% of the applications are objected on formality
issues. Very few applications are objected on
substantive issues, such as novelty and originality.
Extensions are sought by the agents/legal practitioners
for filing reply to such formal objections, which
results in a further delay of 4-5 months. Accordingly,
it is required that the documents related to Design
Applications shall be prepared diligently. This cansignificantly reduce the time taken for registration.
The Designs Wing of the Patent Office is committed
to register a properly filed application, which complies
with the substantive criteria of registrability, in one
month from the date of filing, from April, 2011
onwards.

03.02

Where to apply
An application for registration of a Design shall be Section 5(2),addressed to the Controller of Designs, The Patent 3(3), 3(4)Office, CP-2, Sector-V, Salt Lake, Kolkata - 700091.
(E-mail: controllerdesign.ipo@nic.in)

03.03

Type of Applications
a. Ordinary application.

Section 5, 44

An ordinary application does not claim priority.
b. Reciprocity application.
A reciprocity application claims priority of an
application filed previously in a convention
country. Such an application shall be filed in India

11within six months from the date of filing inconvention country. This period of six months is
not extendable.
03.04

ApplicantAny person claiming to be the proprietor of any new Section 5(1),or original design may apply for registration. A 2(j)proprietor may be from India or from a Convention
Country.
A proprietor may be:a. an author of design,
b. a person who has acquired the design,c. a person for whom the design has beendeveloped by the author, ord. a person on whom the design has devolved.

03.05

Substitution of applicant or joint claiming
a. Name of an applicant can be substituted or a joint Section 8
claim can be made for an applied design, if the Form-2
following requirements are met:i.

The claim for substitution is made before
the design has been registered; andii.

Right of claimant shall be created only by:I.

an assignment;

II.

agreement in writing made by theapplicant or one of the applicants;
or

III.
iii.

operation of law; andThe design under consideration shall beidentified in the assignment or agreement
specifically by reference to the number ofapplication for registration; oriv.

The rights of the claimant in respect of thedesign have been finally established by a
Court;

12

b. A request for substitution of applicant shall be
filed in Form-2 along with the required fee. If theabove said requirements are fulfilled and theController is satisfied that, upon registration ofdesign, the claimant would be entitled to any
interest in the design the Controller may directthat the application shall proceed:i.

in the names of the claimant(s); orii.

in the names of the claimant(s) and theapplicant or the other joint applicant(s),as the case may be.
c. However, in case of joint applicants, theController shall not pass such direction withoutwith the consent of the other joint applicant(s).
d. In case, joint applicant(s) die(s) at any time before
the design has been registered, a request may bemade for substitution by the survivor(s) and theController may direct that the application shallproceed in the name of the survivors alone.
However, no such direction shall be issued
without the consent of legal representative of thedeceased.
e. If case, there is any dispute between joint
applicants as to whether or in what manner theapplication

shouldbeproceeded

with

an

application may be made by any of the parties.
The Controller may give such directions as hethinks fit for enabling the application to proceed
in the name of one or more of the parties alone orfor regulating the manner in which it should beproceeded with, or for both those purposes, as thecase may be. However, the Controller shall not
pass any such direction without giving an

13

opportunity to be heard to all the concerned
parties.
03.06

Filing of Application
An application/petition for registration of design,extension of copyright, cancellation of registration andrectification of register may be filed at any of the four
Patent Offices. However, the Patent Offices located at
Delhi,

MumbaiandChennaitransmitsuch

applications to the Patent Office, Kolkata for further
processing and prosecution.
03.06.01

E-filing
E-filing facility for filing of Design Applications andall the subsequent documents will be made available
shortly.

03.06.02

Contents of Application

03.06.02.01

Application forma. An application shall be filed in Form-1, along Section 5, 6, 43,with the prescribed fees, stating the full name, 44
address, nationality, name of the article, class Rule 4, 9, 10
number and address for service in India. Foreign Form-1, 21
applicants are also required to give an address for Third Schedule
service in India, which could be the address of
their Agent in India. In case of foreign applicants,
it is mandatory to give an address for service inIndia. Unless, such an address is given, the Officeshall not proceed with the application.
b. The class to which the article belongs shall bementioned correctly in Form-1. Under the
Designs Rules, 2001, articles have been classified
in the Third Schedule based on LocarnoClassification. It may be noted that for registering
a design in more than one class, a separate
application is required to be filed for each class.

14

c. The application shall be signed either by theapplicant or by his authorized agent/legal
representative. In India, only a registered patent
agent or a legal practitioner can be appointed as
an authorised agent.
d. In case, the applicant has already registered adesign in any other class of articles, the fact ofsuch registration along with the registration
number shall be mentioned in Form-1.
03.06.02.02

Representation of design
Two copies of representation of the design shall be Section 11
submitted. Detailed requirements of representation are Rule 14
described in 02.05.02.05.

03.06.02.03

Power of attorneya. A Design Application may be filed personally by Section 43
an applicant or through a patent agent/legal Rule 9practitioner. If the application is filed through a Form 21
patent agent/legal

practitioner, a power ofauthority shall be submitted, along with theapplication. General Power of Attorney is also
acceptable.
b. The Register of Patent Agents containing thenames and addresses of all the registered patent
agents is available at: www.ipindia.nic.inc. It is observed that a large number of applications
are filed by agents/legal practitioners, without apower of attorney. Such discrepancies cause undue
delay in the disposal of applications and may
amounttounnecessary

harassment

of

the

applicant. If the power of attorney was not
submitted along with the application, the same
shall be submitted within a month from the date offiling.

15

03.06.02.04

Priority document
A reciprocity application shall be accompanied by a Section 44
copy of the design application filed in the Convention Rule 2(d), 15
Country. Such copy shall be duly certified by the Form-18
Official Chief or Head of the Organisation in which it
was filed.
If the priority document was not filed with theapplication, the same may be filed within an extended
period of three months. Extension may be sought byfiling Form-18 along with the prescribed fee.

03.06.02.05

Representation sheeta. The representation sheet of an article needs to be Rule 11, 14, 12
prepared diligently and shall be filed along withthe application, in duplicate. The Designs Rules
require that four copies of the representation shallbe filed along with the application. However, astherecords

aredigitisedandprocessed

electronically, two copies of the representation
shall suffice.
b. Representation means the exact representation of
the article for which registration is sought. A
representation may contain more than one page.
c. Representation shall be exactly similar drawings,
photographs, tracings including computer graphics
or specimens of the design. The Controller may
require a specimen of the article to be submitted at
the time of examination, in rare cases.
d. Photographs

shouldbepastedontherepresentation sheets with the help of adhesive andnot by other means like stapler, pin and cello tape.
While using photographs in representation sheets,
one of the copies of representation sheet shall not
be covered by cellophane or tracing paper so as to16enable digitization.
e. Representation shall be prepared on white A4 size
paper (210 mm X 296.9 mm) of durable quality,
but not on card board, and only on one side of thepaper.
f. The figure(s) shall be placed in an upright positionon the sheet. Each figure shall be designatedclearly (e.g. perspective view, front view, sideview).
g. If design is to be applied to a set, therepresentation shall depict various arrangements inwhich the design is to be applied to articles in theset.
h. Where an application is for a design as applied to aset, whether the given articles constitute a set ornot, shall be determined by the Controller.
i. In case, name or representation of living persons
appear on a design, consent of such persons may
be submitted along with the application. In case ofadeceased

person,theconsentof

legal

representative may be submitted. It may be notedthat non-submission of such consent may result in
officeobjections

andresultant

delay

in

registration. In case, the representation contains
the image or name of an imaginary person, suchfact may be mentioned in the declaration on the
representation sheet.
j. A statement of novelty and disclaimer (if any) in
respect of mechanical action, trademark, word,letter, numerals should be endorsed on each
representation sheet. For specimen statements
please see Annexure II.
k. Representation, which consists of a repeating17

surface pattern, shall show the complete pattern,
and a sufficient portion of the repeating pattern inlength and width, and shall not be less than 15.00
centimeters by 10.00 centimeters in size.
l. The name of applicant shall be mentioned in left
hand top corner of the representation sheet.
m. Total number of sheets and sheet number shall bementioned in the right hand top corner of therepresentation sheet in Arabic numerals. .
n. The representation sheet shall be signed and dated
by the applicant/agent.
o. No descriptive matter or matter denoting thecomponents by reference letters/numerals shall be
included.
p. No sectional views shall be incorporated in the
representation sheet.
q. Dimensions or engineering symbols etc. shall not
be

used

in

the

representation

sheet.

The

representation is not to be regarded as engineeringdrawing of the article. The relevant parameter isthe shape and not the size of the article.
r. Where Trade Marks, words, letters or numerals are
not the essence of the design, they shall be
removed from the representations or specimens.
Where they are essence of the design, a disclaimer
shall be given in the representation sheet
disclaiming any right to their exclusive use. Non
inclusion of this disclaimer will result in an office
objection and resultant delay. For specimen
disclaimer statement please see Annexure II.
s. No extraneous matter or background shall appear
in the representation sheet. A background isconsidered neutral as long as the design is clearly18

visible in it.
t. Dotted lines may be used in representation toindicate those elements of the article for which noprotection is sought. Dotted lines identify elements
which are not part of the claimed design. In such acase, features of design for which protection issought must be shown in solid lines in thedrawing.
For instance, an ornamentation or surface pattern
on an article can be registered. In such a case, therepresentation shall contain a solid line drawing
for the claimed ornamentation or surface pattern,
and dotted line for rest of the article.
u. When colour combination is the essence of adesign as applied to an article, the same shall beclearly depicted in the representation.
v. Colouring may be used, on a black and whitedrawing, to highlight only those features of thedesign for which protection is sought. In suchcases, it shall be clearly indicated in the novelty
statement that the claim is restricted only to the
portions depicted by colouring and the colours sogiven are not part of the design.
w. Representations shall ordinarily be prepared in one
format e.g. drawings, graphics or photographs etc.
However, for better clarity, if the applicant sodesires, a representation may be given in different
formats.
x. The applicant shall keep in mind the requirementsof an Examiner to visualize the design anddistinguish the same from any probable prior art.
The number of views required in a representation
sheet may be decided in light of this requirement.

19

03.06.02.06

Classification of designs
a. For the purpose of registration of designs, articles Section 5(3).
are classified into thirty-one classes and a Rule 10, 11.
miscellaneous class 99, as described in The Third The Third
Schedule of The Design Rules, 2001.

Schedule.

b. The appropriate class shall be clearly identified
with reference to The Third Schedule and shall bementioned in Form 1. In case of any ambiguity,
the Controller may decide the same, if necessary,in consultation with the applicant.
c. When a Design Application is for an article withmultiple utilities, the application may be madewith depiction of an article in any one or more of
the utilities. For instance, in case of a design of
pen cum torch, the applicant is at liberty to apply
in the class relating to pen, torch, pen-torch, or file
two applications in different classes for better
protection.
d. The classification of articles under The Third
Schedule

is

based

on

the

International

Classification of Industrial Designs according to
the Locarno Agreement. However, India is not asignatory to the agreement.
e. Ordinarily, the name of article should becommon/familiar in the Trade or Industry andshall be analogous to the representation of thearticle. If the name of article is not common, theapplicant may state the purpose for which thearticle is intended to be used, in Form-1 andrepresentation sheet, so as to enable the Office tocorrectly decide the classification and facilitate
search. An error in mentioning the article correctly
may result in office objection with resultant delay20

of 2-3 months.
03.06.03

Address for Service
a. An address for service in India shall be given by Rule 4, 31, 46
every person in any proceeding under the Act or Form-22
Rules.
b. Change in address for service before a design has
been registered shall be effected by filing apetition under Rule 46 with the prescribed fee,along with the fresh Form-1.
c. Any change in address for service for a registered
design shall be effected by filing Form-22 with theprescribed fee.
Note: If the change in address for service in caseof (b) and (c) is due to the change in agent/legal
practitioner, duly executed power of attorney infavour of such agent/legal representative shall be
filed along with the petition. Non-compliance of
this requirement results in undue delay.
d. Address for service is treated for all purposes as
the actual address of such person.
e. Unless an address for service is given, theController shall not proceed with the application.
f. An address for service shall include e-mail of theagent/applicant.

03.07

Leaving and serving documents
a. Any application and any other related document Rule 3
may be sent by hand or by letter addressed to theController of Designs. The letter may be sent by
post

or

courier

serviceorbyelectronictransmission duly authenticated.
b. In case of electronic transmission which is notduly authenticated, the duly signed or executed
document shall be submitted within fifteen days

21

from the date of such transmission. However, thedate of filing of document shall be taken to be thedate on which fee is duly submitted. All non-fee
documents may be sent by fax, or e-mail with ascanned copy of the signed document as
attachment.
c. If any document is sent by post or electronictransmission duly authenticated, it shall be deemed
to have been filed at the time when the lettercontaining the same would have been delivered in
the ordinary course. In proving such sending, it
shall be sufficient to prove that the letter wasproperly addressed and transmitted.
d. Thefollowing

documents

along

with

the

prescribed fee may be filed at any of the four
Patent Offices:i.

application for registration of design,ii.

application for extension of copyright,

iii.

petition for cancellation of registration ofdesign, andiv.

application for rectification of Register of
Designs.

However, all further documents relating to above
said matters shall be filed in the Patent Office,
Kolkata only.
03.08

Fee
a. The fee to be paid in respect of any matter is Rule 5
prescribed in the First Schedule of The Design The First
Rules, 2001.

Scheduleb. The fee payable under the rules may either be paidin cash or through electronic means or may be sent
by bank draft or cheque payable at par, to theController of Designs and drawn on a scheduled22

bank located at the respective filing location.
c. Stamps and Indian Postal Orders are not accepted.
d. Where fee is payable in respect of a document, theentire fee shall accompany the document.
e. Fee once paid in respect of any proceedings shallnot ordinarily be refunded irrespective of whether
the proceeding has taken place or not.
03.09

Initial processing of applicationa. On receipt of an application, the Office accords adate and serial number to the application. This
serial number, upon registration, becomes theregistration number of the design.
b. If the representation sheet is in such a form thatthe design cannot be visualised e.g. representation
sheet received by fax, the application number shallnot be allotted. Such an application shall be
returned by post or at the counter itself, along withthe fee, for non-fulfilment of basic requirements.
The applicant/agent should be diligent enough tofulfil such basic requirements.
c. A money receipt, which contains the application
number, date and address, is handed over at thereceipt counter or sent to the address for service,by post, as the case may be.
d. Applications received at the Counter or by Post in
Chennai, Mumbai and Delhi Patent Offices aresent to Patent Office, Kolkata within a week.
e. All applications and other documents are digitizedand verified at the Designs Wing, Kolkata and are
uploaded to the server.
f. The documents are then stored for official records.

23

CHAPTER-4
EXAMINATION AND REGISTRATION OF DESIGNS
04.01

Examination
The application for registration of a design is refereed by Section 5(1)the Controller of Designs to an Examiner of Designs for
conducting examination as to:a. whether the application and the documents satisfy theformal requirements, andb. whether such design as applied to an article isregistrable,
under the provisions of the Designs Act, 2000 and Designs
Rules, 2001.

04.02

Formality check
The Examiner determines whether:a. the application is in prescribed format?
b. the prescribed fee has been paid?
c. the name, address, and nationality of the applicant is
mentioned?
d. address for service is given in the application form?
e. declarationofproprietorship

is

given

in

the

application form?
f. representation sheet is in a manner as prescribed inRule 14?
g. power of authority, if applicable, is filed?
h. in case of reciprocity application:I.

the application was filed within the prescribed
time?

II.

the priority document was filed at the time offiling? If not, whether the priority document
was filed within the extendable period of threemonths along with the prescribed form and
fees?

24

III.

the application was filed by the same
applicant? If not, whether the assignment
document has been filed?

When the application is deficient in respect of (g), theExaminer reports the deficiency to the Controller, who
communicates the statement of objections to the applicant.
Such an application shall proceed for substantive
examination only after compliance of the objections.
The applicant may comply with the deficiencies within
three months from the date of communication of thestatement of objections or respond to the objections,failing which the application shall be treated as withdrawn.
If the applicant wishes to contest the objections, he may
respond to the objections clearly indicating the reasons.
Thereupon, the Controller shall give a hearing and thematter shall be decided accordingly. In case of any
decision adverse to the applicant, the Controller shall issue
a speaking order.
In view of the above, it is desirable that the applicant/agent
shall be diligent enough to comply with the formal
requirements.
04.03

Substantive examination
Substantive examination is carried out to determine Section 2 (d),whether the design under consideration is:2(g), 5(1), 46

a. a ‗design‘ under the Act?
b. new or original?
c. prejudicial to public order or morality?
d. prejudicial to the security of India?
04.03.01

DesignA design:

Section 2(d).

a. is shape, configuration and pattern, ornamentation or Section 2(zb) ofcomposition of lines or colours, as applied to an article the Trademarksof manufacture, which in the finished form appeals to Act 1999.

25

and is judged solely by the eye;b. may be in two or three dimensional or in both forms;

Section 479 of
the Indian Penalc. shall be capable of being a product of industrial Code, 1860.
process or means, whether manual, mechanical or Section 2(c) of
chemical, separate or combined;

the Copyrights

d. shall not be a mere mechanical device, mode or Act, 1999.
principle of construction;e. does not includei.

any trademark, as defined in Section 2(zb) of
the Trademarks Act, 1999, orii.

any property mark, as defined in Section 479 of
the Indian Penal Code, 1860, oriii.

any artistic work, as defined in Section 2(c) of
the Copyrights Act, 1957[(i) A painting, sculpture, drawing (including a
diagram, map, chart or plan), an engraving or aphotograph, whether or not any such work
possesses artistic quality.
(ii) Any work of architecture i.e. any building
or structure having an artistic character ordesign or any model for such building or
structure.
(iii) Any work of artistic craftsmanship.]f. An illustrative list of non-registrable designs is as
under:
i.

book jackets, calendars, certificates, forms anddocuments.

ii.

dress making patterns, greeting cards, leaflets,
maps and plan cards.

iii.

post cards, stamps and medals.

iv.

labels, tokens, cards and cartoons.

g. Important case laws as to ―what constitutes a design‖,
are given in Annexure-I.

26

04.03.02

Novelty and originality
A design is capable of being registered only if it is new ororiginal.

04.03.02.01 Novelty
a. A design shall be considered to be new when it has not Section 4, 16,
been disclosed to the public, anywhere in India or in 21
any other Country, by publication or by use or in any
other way, prior to the filing date or priority date.
b. A design shall be considered new if it is significantly
distinguishable from known designs or combination of
known designs.
c. Disclosure of a design shall not be deemed to be
publication of design, sufficient to invalidate thecopyright thereof, in the following circumstances:i.

Proprietor disclosed the design to any other person
before registration, in such circumstances as would
make it contrary to good faith for that other person
to disclose the design However, that other person
discloses the design in breach of good faith.

ii.

Acceptance of first and confidential order, before
registration, for articles bearing a new or original
textile design intended for registration.

d. A design is not invalidated or prevented fromregistration:i.

if a design or an article to which a design is applied
has been exhibited in an exhibition to which theprovisions of Section 21 of the Designs Act, 2000
have been extended by the Central Government by
notification in the official gazette; orii.

if a description of the design is published, during or
after the period of holding of such exhibition; oriii.

if any person:
I.

exhibits the design or the article to which

27the design is applied; orII.

publishes a description of the design,during or after the period of holding of theexhibition, without the privity or consent of the
proprietor.
However, to avail the benefit of this provision, theproprietor shall:I.

give a notice in Form-9 to the Controller
before exhibiting the design, andII.

file the application for registration of design
within a period of six months from the dateof first exhibiting the design or publishingthe description.

04.03.02.02 Originality‗Original‘ in relation to a design, means

Section 2(g)a. originating from the author of design, andb. includes the cases, which though old in themselves
yet are new in their application.
For instance, the figure of Taj Mahal is centuries old. But
if a person conceives for the first time, the idea of making
a flower vase or an ash tray in the form of figure of Taj
Mahal, that may be an original design and shall be
registrable.
Important case laws relating to novelty and originality are
given in Annexure-I
Section 4, 5

04.03.02.03 Novelty Search
The Examiner conducts a novelty search in the available
databases to ascertain the novelty of the design underconsideration. Search is conducted class-wise or articlewise to ascertain whether the applied design issignificantly different from the previously registered, usedor published designs. If it is found that the design is notnew, the Examiner mentions the fact along with the28citations in his report to the Controller.
04.03.02.04 Special provision relating to prior registered designs
a. If the applicant has registered the design in any other Section 6(3) &class of articles, prior to the application under 6(4)consideration, the fact shall be mentioned in Form-1.
b. Upon Examination, if it is found that the design underconsideration is already registered by the same
applicant in another class and the applicant has notdisclosed that fact in the application form, theExaminer shall raise an objection only with anobjective to predate the application, and not on the
ground of novelty. In such cases, the objection iscommunicated along with the citation of such priorregistered design and the applicant is asked to amend
the application. The term of the copyright of thedesign under consideration shall be co-terminus withthe term of previously registered design.
c. Upon Examination, if it is found that the applieddesign is already registered by another person in
respect of some other article, the design underconsideration may be registered only if the applicant
becomes registered proprietor of the already registered
design. The term of the copyright of the design underconsideration shall be co-terminus with the term ofpreviously registered design.
d. Where any person

makes

an

applicationforregistration of a design in respect of any article andeither:i.

that design has been previously registered byother person in respect of some other article, orii.

the design to which the application relatesconsists of a design previously registered byother person in respect of the same or some29other article with modifications or variations
not sufficient to alter the character or
substantially to affect the identify thereof, andiii.

if during the pendency of the application, theapplicant becomes the proprietor of thepreviously registered design, the application
shall not be refused on the ground:I.

that the design is not new or original
only

becauseitwaspreviously

has

been

previously

registered, or
II.

that

designpublished in India or in any otherCountry, only because the design has
been applied to article in respect ofwhich a design has been registered.
e. Apart

from

the

above,

while

examiningtheapplication the Examiner shall consider other criteriaof registrability e.g. scandalous matter etc.
04.03.03

Public order and morality
An application for registration of design is not registrable Section 5(1) &if it is contrary to public order and morality. Examiner‘s 35 ( 1)opinion on this aspect is reported to the Controller.

04.03.04

Section 34, 46

Security of India
a. Any application for design which is prejudicial to thesecurity of India is not registrable and is not published.
b. For the purposes of this provision, the expression―security of India‖ means any action necessary for the
security of India which relates to the application of any
design registered under this Act to any article used for
war or applied directly or indirectly for the purposes of
military establishment or for the purposes of war orother emergency in international relations.
c. The Examiner examines the applied design vis-à-vis

30

the security of India and if there is an objection, thesame is reported to the Controller. If the Controller
confirms the view of the Examiner, the application isreferred to the Defence Research Development
Organisation, Ministry of Defence, Government ofIndia, for directions by virtue of the Powers conferredby Section 34 of the Act. On receipt of a viewfavourable to the applicant, the application proceeds
further.
04.04

Consideration of report of Examinera. The Controller shall consider the report of Examiner Section 5(1)on registrability of a design as applied to an article Rule 18
and if it is registrable, the same shall be registeredforthwith. The registration certificate shall be issued
and sent to the applicant at the earliest.
b. If upon consideration of the report, the Controller is of
the opinion that there are objection(s) adverse to theapplicantortheapplication

requiressome

amendment(s), a statement of objections shall be
communicated to the applicant by the Controller. The
communication shall be made either by registered postor electronic transmission.
c. When an objection is raised on the ground of novelty,
the Controller shall cite the specific prior art.
d. If the applicant fails to comply with the objections or
fails to apply for a hearing within three months fromthe date of communication of statement of objections,the application shall be deemed to be withdrawn.
e. The period for removal of objections shall not exceed
the time period of six months from the date of filingof the application.
However, the said period of six months can beextended for a further period not exceeding three31months provided a request in Form-18 is filed before
the expiry of six months.
f. On consideration of response of the applicant, if theController is of opinion that the requirements of Act
and Rules have not been met, the fact shall be
communicated to the applicant clearly mentioning thatthe application is liable to be refused for reasons to bedetailed and fixing a date for hearing.
g. If the applicant fails to appear for the hearing without
any request for adjournment, the application shall berefused giving a reasoned order.
h. If written submissions are filed, while the opportunity
to be heard is not availed by the applicant, no further
opportunity to be heard may be provided and thematter shall be decided in light of the written
submissions.
i. If the applicant complies with all the requirements laid
down under the Act and Rules, communicated in theform of statement of objections, the application shallbe registered forthwith.
04.05

Section 7

Registration & publicationa. Once an application is registered, it is published in the
Patent Office Journal ordinarily within one month.
The registration number is same as the application
number.
b. The date of registration of an ordinary application isthe date of filing of the application. In case ofreciprocity application, the date of registration is thedate of filing of application in the Convention
Country.

04.06

Register of designs

32

a. All the registered designs are entered in the Register Section 10, 26
of Designs maintained at Patent Office, Kolkata. The Rule 30, 37, 38,register is available to public for inspection and an e- 41
register is also available at the official website.
b. The Register contains the following details:i.

names(s) and address(s) of proprietor(s) ofregistered designs;

ii.

registration number;iii.

class;

iv.

date of filing in India and date of filing inConvention Country (if any);v.

renewal of copyright;

vi.

assignments and of transmissions of registered
designs;vii.

any other matter which would affect thevalidity or proprietorship of the design.

04.07

Certificate of Registration
Upon registration, the Controller issues a certificate of Section 9
registration to the proprietor of the design. The certificate
is sent by registered post to the address for service. No
hand delivery of certificate of registration is allowed.

33

CHAPTER 5
THE PATENT OFFICE JOURNAL
05.01

GeneralAfter registration, the design is published in the Patent Section 7
Office Journal in the last part. After publication, the design
is open to public for inspection.

05.02

Publication
Patent Office Journal is published on every Friday andcontains the following matters on designs:
a. Public notice, if any.
b. Registered designs.
i.

Registration number.

ii.

Date of filing.

iii.

Name of article.

iv.

Class of the article.

v.

Name and address of the registered proprietor.

vi.

Priority details like priority date and country.

vii.

Best

view(s)ofthearticlefromtherepresentation.
c. Renewal of designs (only registration number).
d. Restored Designs.
e. Assignments / licenses/ Mortgage registration.
f. Matters relating to rectification.
g. Matters relating to cancellation.
The Patent Office Journal is available at the official
website (www.ipindia.nic.in).
05.03

Prohibition of publication
If an application for a design has been abandoned or Section 28
refused, the related documents cannot be published and are
not open to public inspection.

34

CHAPTER 6PIRACY OF REGISTERED DESIGNS ANDCONSEQUENCES THEREOF
06.01

Piracy of registered design
During the existence of copyright in any design it shall not Section 5(6), 22
be lawful for any person, without the license or writtenconsent of the registered proprietor:i.

for the purpose of sale to apply or cause to be
applied, to any article in any class of articles inwhich the design is registered, the design or
any fraudulent or obvious imitation thereof, orto do anything with a view to enable thedesign to be so applied;ii.

to import such article for the purposes of sale.

iii.

to publish or expose or cause to be publishedor exposed for sale, that article.

06.02

Copyright in design (rights of registered proprietor)
a. The proprietor of the design gets exclusive right to Section 2(c),apply the design to the article in a class in which the 11, 22, 44
design is registered.
b. A registered proprietor can institute a suit for
injunction as well as recovery of damages against any
person engaged in piracy of the registered design.
Such legal proceedings can be instituted from the dateof registration and till the expiry of copyright.
However, in case of reciprocity application, theregistered proprietor can claim damages in only fromthe actual date on which the design is registered inIndia.
c. If any person commits piracy of a registered design, as

35

defined in Section 22, he shall be liable to pay for apayment of a sum not exceeding twenty thousand
rupees, recoverable as contract debt. However, thetotal sum recoverable in respect of any one design
shall not exceed fifty thousand rupees.
d. The suit for injunction / damages shall not be
instituted in any Court below the Court of District
Judge.
06.03

Provisions of Copyright Act as applied to a design
A creator of a design shall keep in mind the following Section 15 ofprovisions of the Copyright Act, 1957:

The Copyrighta. Copyright shall not subsist under the Copyright Act in Act 1957
any design which is registered under the Designs Act.
b. Copyright in any design, which is capable is being
registered but which has not been so registered shallcease as soon as any article to which the design has
been applied has been reproduced more than fifty
times by an industrial process, by the owner of the
copyright, or with his license, by any other person.
06.04

Period of protection
a. The proprietor shall have copyright in the design for Section 11
ten years from the date of registration.
b. This period of ten years can be extended by five years,
if the registered proprietor applies for extension inprescribed manner.

06.05

Rights in lapsed design, which has been restored
A proprietor shall have no right to institute a suit or Section 14
proceeding in respect of piracy of design or infringement
copyright, which has been committed between the date on
which the design ceased to have effect and the date ofrestoration of the design.

36

CHAPTER 7
POST REGISTRATION PROCEDURES
07.01

Cancellation of registrationa. Any person interested may file a petition for Section 19
cancellation of a registered design in Form 8.
b. Such petition may be filed at any of the four Patent
Offices. Such petitions filed in Offices other than
Kolkata, are transmitted to the Kolkata Patent Office.
However, at present, all further proceedings ofcancellation take place only at Patent Office, Kolkata
and hence all communications relating to cancellation
petitions are required to be communicated to that
office.
c. The petition for cancellation of registration of a design
may be filed on any of the following grounds:
i.

that the design has been previously registeredin India;ii.

that it has been published in India or in any
other country prior to the date of registration;iii.

that the design is not a new or original;iv.

that the design is not registrable under thisDesigns Act;v.

that it is not a design as defined under Section
2(d).

07.01.01

Procedurea. The petition for cancellation shall be accompanied by Section 19
a statement and evidence setting out the facts based Rule 29
upon which the petition is filed. The statement shallalso state the nature of applicant‘s interest so as todetermine, whether the petitioner is a person
interested.
b. The fact of filing of a petition for cancellation of37

registration of a design is published in the Official
Journal.
c. On receipt of a petition for cancellation, the Controller
shall send a copy of the petition along with statement
and evidence to the registered proprietor at theearliest.
d. If the registered proprietor desires to oppose thepetition, he shall file at Patent Office, Kolkata, acounter statement and evidence, if any, setting out
fully the grounds upon which he intends to oppose thepetition, within one month from the date of intimationby the Controller, and deliver a copy to the Petitioner,
simultaneously. This period of one month isextendable by a maximum of three months, by filing apetition for extension with the required fee.
e. After receipt of counter statement and evidence, ifany, from the registered proprietor, the Petitioner may
file his reply statement and evidence, by way ofaffidavits, within one month from the date of deliveryof the registered proprietor‘s counter statement andevidence. Reply evidence of the petitioner shall bestrictly confined to matters in the evidence of theregistered proprietor. This period of one month isextendable by a maximum of three months, by filing apetition for extension with the required fee. The
petitioner shall deliver a copy of his reply statement
andevidencetotheregisteredproprietor,

simultaneously.
f. No further evidence shall be delivered by either party,
except with the leave or direction of Controller.
g. Where a document is in a language other than English
and is referred to in any statement or evidence, anattested translation thereof in duplicate in English

38

should be furnished.
h. After completion of the filing of statement andevidence by the Petitioner and Registered Proprietor,
the Controller shall give at least ten days‘ notice forhearing.
i. On receipt of the notice of hearing, if either party
desires to be heard, a notice of intention to attend thehearing shall be filed in Form 20.
j. The Controller may refuse to hear any party which has
not given such notice and fee.
k. If either party intends to rely on any publication at thehearing, not already mentioned in the petition forcancellation, statement or evidence, he shall give tothe other party and to the Controller a notice of his
intention to do so, together with details of such
publication. Such notice shall be given at least fivedays‘ in advance.
l. After hearing the parties, or if neither party desires tobe heard, then without a hearing, the Controller shalldecide the petition and issue a speaking order. The
decision of Controller shall be notified to the parties
and shall be published in the Official Journal.
m. Subsequent entries, if necessary, shall be made in theRegister of Designs.
07.02

Extension of copyright (renewal)
a. The copyright in a registered design may be extended Section 11 (2)by a period of five years, from the expiration of Form 3
original period of ten years.
b. An application for extension of copyright shall be
filed before the expiry of the original period of ten
years.
c. The Designs Wing shall complete the proceedings ofextension of copyright in designs, within a week from39

the date of receipt of Form-3.
d. The fact of extension of copyright in a registered
design is entered in the Register of Designs and ispublished in the Journal of Patent Office.
07.03

Restoration of lapsed design
When copyright in a registered design has ceased to have Section 12
effect due to non payment of fees for extension of Form-4
copyright, within the prescribed time, an application forrestoration may be filed within twelve months from thedate on which the design ceased to have effect.

07.03.01

Procedure for restorationa. The proprietor or his legal representative may apply Section 12, 13,
for restoration of the design.

14.

b. If the design is held by two or more person, then, with Rule 24
the leave of the controller, one or more of them Form 4, 11.
without joining the others may apply for restoration.
c. If the application for restoration is filed by any otherperson claiming as proprietor of the design, suchapplication shall be accompanied by Form-11, foraffecting a change in name or proprietorship in theregister of designs. The application for restoration
shall be proceeded with only after the change in nameor proprietorship is affected as per provisions of theAct. However, if change in proprietorship happened
after the design ceased to have effect, such an
application for restoration from the latter alleged
proprietor will not be entertained.
d. If the registered proprietor failed to register a changeof name before or after the cessation, he shall first
apply for such alteration in the Register. The
application for restoration shall be proceeded with
only after change in name has been affected in theregister of designs.

40

e. The application shall include a statement fully settingout the circumstances that led to failure to pay the fee.
f. The evidence must support the claim that the failure to
pay was unintentional and there has been no undue
delay in applying for restoration.
g. Controller may require evidence in support of thestatement.
h. If the Controller is satisfied that the failure to pay fee
for extension was unintentional and that there has
been no undue delay in making the application, theController shall restore the registration of design.
i. If in the opinion of Controller there is a prima faciecase for not allowing the application for restoration,
the proprietor of the design shall be intimatedaccordingly. In such a case, the proprietor of thedesign may request for a hearing in the matter within
one month from the date of such intimation. Unlesssuch a request for hearing is made, the application
shall be refused by the Controller.
j. If the registered proprietor requests for hearing within
the time allowed and the Controller, after such ahearing, is satisfied that the failure to pay the fee forthe extension of copyright is unintentional and there isno undue delay in the making the application forrestoration, the application for restoration shall beallowed.
k. The fact that a design has been restored is published in
Official Journal.
07.03.02

Payment of unpaid extension fee
If the application for restoration has been allowed, the Rule 25
registered proprietor shall pay the unpaid fees for theextension of copyright along with additional fee prescribedin the First Schedule, within one month from the date of41

order of Controller.
07.04

Rectificationa. An application for rectification of register of designs Section 31
may be filed by any person aggrieved on the Rule 39, 40
following grounds:

Form-17i.

non-insertion or omission of an entry;ii.

entry made without sufficient cause;iii.

entry wrongly remaining on the register;iv.

error or defect in any entry.

b. The rectification may be made by way of making,expunging or varying any entry.
c. Rectification does not include cancellation of adesign.
07.04.01

Procedure for rectificationa. On receipt of an application for rectification, the Rule 39, 40
Controller shall notify all persons, whose names are Form-19
entered in the register as having an interest in thedesign. Such application shall also be published in the
Patent Office Journal.
b. Any person having an interest in the registered design
may give notice of opposition to the application forrectification within three months from the date of
publication of the application for rectification.
c. The opponent shall, within fourteen days of giving
notice of the opposition, leave at the office his written
statement and evidence, in duplicate, setting out thenature of his interest, the facts upon which he bases
his case and the relief, which he seeks.
d. The Controller shall forward a copy of the notice of
opposition along with the written statement andevidence to the applicant for rectification within
fifteen days of the receipt of statement and evidence.
e. If the applicant desires to contest the notice of42

opposition, he shall file at Patent Office, Kolkata, acounter statement and evidence, if any, setting out
fully the grounds upon which he intends to contest thenotice of opposition, within one month from the dateof intimation by the Controller, and deliver a copy tothe opponent, simultaneously. This period of one
month may be extended by the Controller up to a
maximum of three months.
f. After receipt of counter statement and evidence fromthe applicant, the opponent may file his reply
statement and evidence, by way of affidavits, within
one month from the date of delivery of the registeredproprietor‘s counter statement and evidence. Reply
evidence of the opponent shall be strictly confined tomatters in the evidence of the applicant. This period of
one month may be extended by the Controller up to a
maximum of three months. The opponent shall delivera copy of his reply statement and evidence to theapplicant, simultaneously.
g. No further evidence shall be delivered by either party,
except with the leave or direction of Controller.
h. Where a document is in a language other than English
and is referred to in any statement or evidence, anattested translation thereof in duplicate in English
should be furnished.
i. After completion of the filing of statement andevidence by the opponent and applicant, theController shall give at least ten days‘ notice ofhearing to the parties.
j. On receipt of the notice of hearing, if either party
desires to be heard, a notice of intention to attend thehearing shall be filed in Form 20 along with therequired fee.

43

k. The Controller may refuse to hear any party which has
not given such notice and fee.
l. If either party intends to rely on any publication at thehearing, not already mentioned in the petition forcancellation, statement or evidence, he shall give tothe other party and to the Controller a notice of his
intention to do so, together with details of such
publication. Such notice shall be given at least fivedays‘ in advance.
m. After hearing the parties, or if neither party desires tobe heard, then without a hearing, the Controller shalldecide the application for rectification and issue a
speaking order. The decision of Controller shall be
notified to the parties and shall be published in the
Official Journal.

44

CHAPTER 8
TRANSFER OF RIGHTS
08.01

Transfer of rights
a. A person may become entitled to copyright in a Section 30
registered

designonaccountofassignment, Rule 32, 33, 34,transmission or operation of law.

35, 36, 37

b. A person may also become entitled to any interest in a Form 10, 11,registered design on account of a mortgage, license or 12, 13
otherwise.
c. The claimant, who becomes entitled to any such right,
may file an application to register his title along withoriginal or copies of the instrument, certified by the
Notary Public.
d. If the change in proprietorship is due to an
assignment, the application shall be submitted inForm-11. If the change due to mortgage or license, theapplication shall be submitted in Form-12. In case ofregistration of notification of any document, theapplication shall be filed in Form-13.
e. The Controller may ask for any other proof of title or
written consent, to his satisfaction. If such document
is a public document, an official or certified copy
thereof may be presented.
f. In any case, the document, creating the right in favourof a person other than a registered proprietor, shall bein writing and the agreement between the parties
concerned shall be reduced to the form of an
instrument embodying all the terms and conditions
governing

theirrightsandobligations.

Anycontravention of this requirement will render the
instrument invalid.

45

g. An application for registration of title shall be filed
within six months from the date of execution of the
instrument. This period is extendable by a maximumof six months.
h. Upon entry of its particulars in the register of designs,
the instrument shall be effective from the date of its
execution.
i. The person registered as a proprietor shall haveabsolute power to deal with the design as far as
assignments and licences etc. are concerned.
j. An instrument, which has not been registered, shallnot ordinarily be admissible in any Court as proof of
title to copyright in a design or to any interest therein.

46

CHAPTER 9
GENERAL SERVICES
09.01

The Designs Wing of the Patent Office, Kolkata provides
certain services to the interested public for disseminationof information relating to registered designs.

09.02

Information as to existence of copyrighta. Any person may request for information regarding the Section 18
existence of registration in respect of a design.

Rule 28b. Such a request shall be filed in Form-6 and shall Form 6
contain the registration number of the design for Form 7
which information is sought. If any registration indesign exists, in accordance with the information
provided by such person, the Controller shall provide
the information relating to classes of articles in which
the registration exists, date of registration, name andaddress of the registered proprietor.
c. If the applicant is unable to furnish the registration
number of the design, the request shall be filed inForm-7 with the required, along with such informationas may enable the Controller to identify the design. As
far as possible, search shall be conducted based on theinformation supplied, in the indicated class of articles.
Information retrieved, based on the information
received from the applicant, shall be furnished to theapplicant.
d. Applications in Form-6 & 7 shall be disposed off by
the Controller within a week from the receipt of suchapplication.
09.03

Certified copies
Any person may apply for certified copies of the following Section 17, 26,
documents in Form-15 or 16, as the case may be, along 38, 39
with the required fee:

Rule 4147

a. any registered design;Form-15, 16

b. an entry in the Register of Design,c. extracts from disclaimers, affidavits, declarations, andd. other public documents in the Office, or from Registerand other records.
Such certified copies shall be furnished by the Controller
within a week of receipt of the request.
Certified copies under the hand of the Controller andsealed with the seal of the Patent Office are admissible inevidence in all Courts in India, without further proof or
production of the originals.
However, in rare cases, if the Court has reason to doubt
the accuracy or authenticity of the copies tendered inevidence, the Court may require the production oforiginals or such further proof as it considers necessary.
09.04

Inspection of registered design and register of designs
a. When a design is registered, during the existence of Section 17(1),the copyright, any person may make a request to the 26
Controller for inspection of the design by filing an Form-5
application in Form-5 along with the required fee.
b. Where an application for a design has been abandonedor refused, any document related to such application is
not open to public inspection.
c. The register of designs maintained at Patent Office,
Kolkata is open to inspection on payment of requiredfee.
d. Inspection shall be allowed by the Controller as far as
possible on the same day, if the applicant is present. If
the request is received by post, an earliest date forinspection may be fixed and communicated to theapplicant at the earliest.

09.05

Alteration of address
A proprietor of a registered design may make a request in Rule 3148

Form 22 to the Controller for alteration of his name, or Form 22
address, or addresses for service, in the Register of Design.
The Controller may require such proof of alteration sorequested as he may think fit before acting on the request
and on satisfaction, the Controller shall cause the Registerto be altered accordingly.
09.06

Duplicate certificate
a. The Controller may, in case of loss of the original Section 9
certificate, or any other case in which he deems it
expedient, furnish one or more copies of thecertificate to the proprietor.
b. If the certificate is lost or in any other case, anaffidavit from the proprietor shall be sufficient for
issue of a duplicate certificate.

49

CHAPTER 10
USE & ACQUISITION OF
REGISTERED DESIGN BY GOVERNMENT
10.01

A registered design shall have to all intents the like effect Section 20
as against the Government as it has against any person. Chapter XVIIHowever, as in the case of Patents, the Central of The Patents
Government has the power to use a registered design for Act, 1970.
purposes of Government and to acquire a registered designfor public purpose.

50

CHAPTER 11
GENERAL POWERS OF CONTROLLER
11.01

Powers of a Civil Court
In any proceedings before the Controller under this Act, Section 32
the Controller has the powers of a civil court for the
purpose of:a. receiving evidence;b. administering oaths;
c. enforcing the attendance of witnesses;
d. proceedings compelling the discovery and productionof documents;
e. issuing commissions for the examining of witnesses;
andf. awarding costs, such award being executable as adecree of a Civil Court.

11.02

Awarding costs
In all proceedings before the Controller, the Controller Section 32
may award such costs as he considers reasonable, having Rule 43
regard to all circumstances of the case. However, the Fourth Schedulemaximum amount that can be awarded by the Controller as
cost, in respect to a matter given in Fourth Schedule, shallnot exceed the amount mentioned therein.

11.03

Power to seek directions of the Central Govt.
When

Controller

has

doubt

or

difficulty in

the Section 34

administration of any of the provisions of this Act, he may
seek the directions of Central Government in the matter.
11.04

Exercise of discretionary power by Controller
a. Before acting adverse to any party, the Controller Section 33
shall give an opportunity of being heard to the party Rule 44
with at least ten days notice.
b. Thediscretionary

powers

51

shall

be

exercisedjudiciously with due care and caution and not in anarbitrary manner.
c. Reasons for any adverse decision shall be recorded in
the file by the Controller.
11.05

Power of Controller to correct clerical errors
On a request made in Form-14 along with the required fee, Section 29
the Controller may correct any clerical error in the
representation of a design or in the name or address of the
proprietor of any design, or in any other matter, which isentered upon the register of designs.

11.06

Controller may require statements
Whether an applicant or agent desires to be heard or not, Rule 45
the Controller may at any time require him to submit astatement in writing within a specified time period, or toattend before him and make explanations with respect tosuch matters as the Controller may require.

11.07

General power of amendment
a. Any document for the amendment of which, no Rule 46
special provision is made by the Act, may beamended, and any irregularity in procedure which, inthe opinion of the Controller, may be obviatedwithout detriment to the interest of any person,
may be corrected if the Controller thinks fit, and uponsuch terms as he may direct.
b. The applicant shall file a petition along with therequired fee stating the amendment required andreasons therefor.
c. While considering such petitions, only such anirregularity is allowed to be obviated which is without
detriment to the interests of any person. Further, only
such amendment for which there is no special
provision in the Act and which may be made without
detriment to the interests of any person are allowable.

52

d. Ordinarily, a failure to act within prescribed time shallnot be considered as an irregularity, capable of being
obviated.
e. If any amendment is required resulting from any
mistake on part of the office, no fee shall be charged.
11.08

General power for extension of timea. The time prescribed by the rules for doing any act or Rule 47
taking any proceeding, for which no special
provision is made thereunder, may be extended by
the Controller, for a period not exceeding threemonths, if he thinks fit, and upon such terms as hemay direct.
b. The petition shall explain the circumstances requiring
the extension of time and reasons therefor.
c. Extension of time should be allowed only in cases
where no special provision for extension of time has
been prescribed in the Rules. Where a time limit isspecified in the Act itself, no extension can be sought
under this provision.

53

CHAPTER 12
EVIDENCES ETC.
12.01

Evidencesa. In any proceeding before the Controller, evidence Section 37
shall be given by way of an affidavit, in the absence of
directions to the contrary.
b. The Controller may also take evidence through viva
voce, in lieu of or in addition to affidavit or allow any
party to be cross-examined on the contents of his
affidavit.

12.02

Form of affidavits
a. The affidavits under the Act and rules shall be with an Rule 42
appropriate heading indicating the matter; drawn in
the first person; and divided into paragraphs
consecutively numbered; each paragraph shall, as far
as possible, be confined to one subject. Every affidavit
shall state the description and true place of abode of
the person making the same, shall bear the name andaddress of the person leaving it and shall state on
whose behalf it is left.
b. Affidavits shall be confined to such facts as thedeponent is able of his own knowledge to prove,
except on interlocutory applications, on whichstatements of his belief may be admitted, provided
that the grounds thereof are stated.
c. Affidavits shall be sworn to as follows :i.

In India, before any court or person having by
law authority to receive evidence, or before
any officer empowered by such court or
person as aforesaid to administer oaths or totake affidavits;

54

ii.

In any country or place outside India, – before
a diplomatic or consular office, within themeaning of the Diplomatic and Consular
Officers (Oaths and Fees) Act, 1948 (41 of
1948) in such country of place or before anotary of the country or place, recognized by
the Central Government under section 14 of
the Notaries Act, 1952 (53 of 1952), or before
a judge or magistrate of the country of place.

d. The person before whom an affidavit is sworn shallstate the date on which and the place where the sameis sworn to and shall affix thereto his seal, if any, or
the seal of the court if the affidavit is sworn to before
the court or an officer empowered by that court andsigned his name and state his designation and address
at the end thereof.
e. Any affidavit purporting to have affixed, impressed or
subscribed thereto or thereon the seal or signature ofany person authorized, in testimony of the affidavit
having been sworn to before him, may be admitted by
the Controller without proof the genuineness of theseal or signature, or of the official position of that
person.
f. Alterations and interlineations shall, before anaffidavit is sworn to or affirmed be authenticated by
the initials of the person before whom the affidavit issworn to.
g. Where the deponent is illiterate, blind or unacquainted
with the language in which the affidavit is written, acertificate by the person before whom the affidavit issworn to, to the effect that the affidavit was read,translated or explained in his presence to thedeponent, and the deponent perfectly understood it

55and has signed the affidavit or affixed his mark in his
presence, shall be attached at the end of the affidavit.
h. Every affidavit filed before the Controller shall be
duly stamped.
12.03

Evidences of documents in Patent OfficePrinted or written copies or extracts of documents in the Section 39
Patent Office, certified by the Controller as, of or fromregisters and other books kept in the Patent Office areadmissible as evidence in all courts in India without
further proof for production of the originals. However, if
the Court has reason to doubt the accuracy or authenticityof the copies tendered in evidence, the Court may require
the production of the originals or such further proof as it
considers necessary.

12.04

Certificate of Controller to be evidence
A certificate purporting to be under the hand of the Section 38
Controller as to entry, matter or thing which he isauthorised by this Act, or any rules made there under tomake or do, shall be prima-facie evidence of the entry
having been made, and of the contents thereof, and of thematter or thing having been done or left undone.

12.05

Annual report by the Controller
1. The Controller of Designs prepares an annual report on Section 45
activities of the Designs Wing. The Annual Report isplaced by the Central Government before both the Housesof Parliament.
2. The Annual Report contains information on:a. brief about the activities during the year;
b. Design Applications filed and registered;c. examination;d. cancellations;e. restoration;f. extension of copyrights;

56

g. requests for inspection of registered designs;
h. certified copies;
i. assignments;
j. designs in force;k. revenue.
Annual report is uploaded on the official website(www.ipindia.nic.in) after the same is placed before bothHouses of the Parliament.

57

CHAPTER 13
RESTRICTIVE CONDITIONS IN CONTRACTS ETC.
13.01

Avoidance of certain conditions in Contracts
a. The Designs Act provides that the insertion of certain
conditions in Contract etc., concerning an article
having a registered design, is unlawful and suchconditions are void. Accordingly, while entering into
Contracts etc. the registered proprietor may avoid
such conditions.
b. It shall not be lawful to insert certain restrictive
conditions in:i.

a Contract in relation to the sale or lease of anarticle; orii.

a Licence to manufacture or use an article; oriii.

a licence to package the article;

in respect of which a design is registered;
the effect of which may be:i.

to require the purchaser, lessee, or licensee toacquire from the vendor, lessor, or licensor or
his nominees, or to prohibit him fromacquiring or to restrict in any manner or to any
extent his right to acquire from any person or
to prohibit him from acquiring except from thevendor, lessor, or licensor or his nominees any
article other than the article in respect of which
a design is registered; orii.

to prohibit the purchaser, lessee or licensee
from using or to restrict in any manner or toany extent the right of the purchaser, lessee or
licensee, to use an article other than the article
in respect of which a design is registeredwhich is not supplied by the vendor, lessor or58

licensor nor his nominee.
c. and any such condition shall be void.

59

CHAPTER 14
APPEALS
14.01

Appealsa. An appeal lies to the High Court against an order Section 36
passed by the Controller under the following
provisions:i.

an order under Section 5, refusing registrationof a design;ii.

an order under Section 19, passed in acancellation petition;iii.

an order under Section 31, passed in a
rectification petition;

iv.

an

order

under

Section35,

refusing

registration on the ground of public order or
morality.
b. Every appeal shall be made within three months of thedate of the order of the Controller. The date of suchorder is the date on which the order is dispatched.
c. In calculating the said period of three months, the time
taken in granting a copy of the order appealed against
shall be excluded.
d. The High Court may, if it thinks fit, obtain theassistance of an expert in deciding such appeals, andthe decision of the High Court shall be final.
14.02

Jurisdiction
At present, as the Designs Wing of the Patent Office is Decision offunctioning only at Patent Office, Kolkata, all the appeals Hon‘ble
under the Designs Act, 2000, lie to the High Court of Supreme Court
Kolkata.

of India in Civil
Appeal No.
996-997/201060

CHAPTER 15
REQUIREMENTS BEFORE DELIVERY ON SALES
15.01

GeneralMarking of an article before delivery on sale by aregistered proprietor is very important for ensuring theprotection of a registered design, as explained below.

15.02

Marking of article before delivery on sales
a. Before delivery on sale of any article with registered Section 15,
design, the registered proprietor shall mark such Rule 26
article with any of the following words:
i.

REGISTERED;ii.

REGD.;

iii.

RD, andiv.

the registration number (Except in the case ofarticles soft or brittle in nature, to which havebeen applied designs registered in different
classes of articles )b. It is not necessary to mark the articles as required
above in:i.

textile goods in which the design is printed or
woven, other than handkerchiefs; andii.

articles made of charcoal dust, which arebrittle and which are not sold in single piecec. If the registered proprietor fails to mark an article, as
required in (1), he shall not be entitled to recover any
penalty or damages in respect of any infringement of
his copyright in the design, unless he proves that hetook all proper steps to ensure the marking of thearticle, or unless he proves that the infringement took
place after the alleged infringer knew or had alreadyreceived a notice of the existence of copyright in the61design.
d. In respect to any class or description of articles, a
trade or industry may represent to the Central
Government that it is expedient to dispense with ormodify the marking requirement as required above.
The Central Government, may, if it thinks fit,dispense or modify such requirements through a rule
made under the Act.
15.03

Requirements before delivery on sales
a. Before delivery on sale of any articles to which a Section 15
registered design has been applied and if exact
representations (photographs) or specimens were notfurnished on the application for registration, theproprietor shall furnish to the Controller the exact
representations (photographs) or specimens of thedesign.
b. If the registered proprietor fails to comply with theabove condition, the Controller may, after giving
notice to the registered proprietor and an opportunityof being heard, remove the name of the registeredproprietor from the register. On such removal, thecopyright in the design shall cease.

62

CHAPTER-16
TIMELINES
S.No.

Section/Form

Prescribed time

Form 1

Within 6 months from date of

Rules
01

Application for registration ofSectionDesign claiming priority date44(1)(a)

under

Paris

earliest filing in the country (s)Convention/

under Paris convention/WTO.

WTO/reciprocity arrangement
02

Filing of certified copy ofRule 15(2)Form 18

priority Document
03

Along with application or within 3months from the date of filing.

Application for registration ofSectionassignment or of the instrument30(3)Form 10Within 6 month from the date of
execution of assignment/instrument.

for change of ownership

Further extension of 6 months
available.

04

Compliance of all requirements

Rule 18(1)Form-18

for making application in orderWithin 6 months extendable up tonine months from the date of filing.

for acceptance05

Application for extension ofSectionperiod of copyright for 5 years

11(2)Form 3

Before the expiry of initial period of
10

years

from

the

date

of

registration.
06

Application for restoration ofSectionlapsed12(2)design

due

to

non

payment of fee for extension ofForm 4

Within one year from date ofcessation

Rule 24

copyright
07

Petition for cancellation of theRule 29

Form 8registration
08

09

Any timeduring existenceofcopyright

Appeal to High Court against

SectionWithin three months the date of

the order of the Controller

19(2), 36

order of Controller.

Application for registration ofSectionWithin 6 months from the date ofdesign after first exhibiting the21(b)exhibition,

provided

intimation

wasdesign

that

given

prior

to

the

Controller in Form 9.
10

11

Substitution of applicants before

SectionRegistration

8(1)Filling of original or paper copy

Rule 3(1)

where

the

corresponding

Form 2

Any time before the registration-

Within 15 days from the date ofTelefax / e-maildocument already sent by e-mail/ Tele Fax

63

12

Request for alteration of name,

Rule 31

Form 2

At any time after registration

address and address for service
in the Register of Designs
13

Extension of time as prescribed

Rule 47

Up to three months and upon such

under the Rules

terms as decided by the Controller.

64

ANNEXURE I
IMPORTANT CASE LAWS
Topic

Provision

Case Law

ArticleSec 2 (a)In Hindustan Lever Limited Vs Nirma Pvt. Ltd.
Ahmedabad AIR 1992 Bom 195, it was held that label
put on a carton to be used as container for the goods
can never amount to design within the meaning ofsection 2 (3) of the Designs Act, 1911.
In Re Littlewoods Pools Ltd’s Application (1949) 66
RPC 309 application was made to register a form offootball coupon consisting of a rectangular sheet ofpaper on which a pattern was formed by straight lines,
the spaces between were filled with literary matter.
Wynn-Parry J in holding that the paper was not anarticle stated that as the function of the paper was―solely to carry the imprint of the design‖ and did nothave any other function it was not an ―article‖, within
the meaning of the act.
Explanation: It would appear to follow that paper orcanvass could be considered an article. However, to beregistrable an article must have some function otherthan that of merely carrying the design. A drawing or
painting on ordinary paper or canvas are not the sameas wallpaper or wrapping paper or textiles.

The paper used for printing or canvas used for
painting have no function other than to carry theprintingorpainting.

Therefore,

they

are

unregistrable.

The wallpaper, wrapping paper or textiles all
perform a function other than just being a vehicle for65the design. For example the wallpaper is used for
sticking on the wall to either enhance the décor of aroom or for the more practical purpose of coveringcracks or faults in the wall surface. Textile material isused for making up a variety of articles e.g. curtains,
clothing, bed linen etc. This factor makes theseregistrable articles.
In King Features Syndicate Inc. & Betts V O & M
Kleeman Ltd. (1941) 48 RPC 207 at 222, where comic
strip drawings of ―Popeye the Sailor‖ were held not tobe themselves design capable of registration under theact although when the features of shape andconfiguration depicted in the drawings were applied byindustrial process to dolls and brooches a registrable
design came into existence.
A design which can not be repeated is not registrable.
Thus an ornament made on an article of natural rockand when it would be difficult to get a multiple same
varieties of natural rocks is not a proper subject for
design registration.
Part of Article

Sec 2 (a)In The Sifam Electrical Instrument Co Ltd V Sangamo
Weston Ltd. [1973 RPC 899 at 909] it was submitted
in this case that the proper interpretation was ‗
susceptible of being sold separately‘, but the court heldthat it was the actual intention at the time ofregistration that was important. The article in question,a face for an electric meter, was found not to beregistrable, and Graham J observed ―….. I find thematter difficult to decide, but on the whole I think theintention must be to grant registration only for sucharticles as are intended by the proprietor of the design
to be put on the market and sold separately, such as forexample a hammer handle…..‖66

Explanation : The inclusion in the definition of article―any part of an article capable of being made undersold separately‖ is to prevent the registration of a partof an article which has no separate identity and whichis really an integral part of an article, for example theshape of a portion of a chair leg which is really an
integral portion of the chair. The design of a part of anarticle is not registrable as a design unless the part ismade and sold separately as an article.
The primary object the Act is to protect shape and not
the function or functional shape. The expression
design doesn‘t include a method or principle ofconstruction or features of shape or configuration
which is dictated solely by the function which thearticle to be made in that shape or configuration has toperform. . In addition to the industrial drawing of theentire crane, the plaintiff also claimed copyright in thefollowing key components (i) the boom and slider
assembly, (ii) the lower structure assembly, (iii) the
main frame – axle assembly, (iv) the differential
housing etc. The Delhi High Court observed that the
aforesaid parts of the crane are made in a particularshape so as to interrelate with others mechanically.
These parts of the crane are not made to appeal to theeye but solely to make the crane work or function.
Most of the key components or parts, unseen in thecrane for which are they are required, had only to pass
the test of being able to perform their function. They
would be judged by performance and not by
appearance.

Consequently

theaforesaid

key

components or parts are incapable of being registeredas designs. [Escorts construction Equipment Ltd.
Vs Action construction Equipment Pvt. Ltd 1999

67

PTC 36(Del) at pp 39,40,48].
AIR2008Bom11 Held, phrase, ―capable of being madeand sold separately‖ used in Section 2(a) covers cases
not only of an article upon which a design article canbe made but also can be sold separately - Therefore,such article which is separate from other parts ofgoods and registered separately as a design, if intended
and or desired by the proprietor of the registered
article, as capable of being made and sold, is saleable
in the market separately - Only because such article inpresent circumstances may not be put up in the market
for sale separately, it is not correct to say that the cap
involved in the present case, cannot be said to have an
independent life as an article of commerce - Therefore,
cap is an article within the ambit of definition of ―anarticle‖ under Section 2(1) of the Designs Act.
Set of article

Rule 2 (e)A set of articles can be: -(i)a set of articles;(ii)

each article in the set; or(iii)

both a set of articles and each article in thatset, as the case requires

If a group of articles meets the requirements of a―set‖, they can be registered under one application.
For a group of articles to be a set all three of thecriteria in the definition of ―set‖ must be met.
These are:(i) ordinarily on sale or intended to be used together(ii) commonality of design (bearing the same design)(iii)same general character

68Design andSection 2 ( d)High Court of Delhi in the case of Microfibers Inc.

provisions of[ The Designs

vs. Girdhar and Co. and Anr. Had observed on the

the CopyrightAct 2000]

following guidelines:

Act 1957

Section 15[ The
copyright Act
1957]

a. The definition of artistic work has a very wide
connotation as it is not circumscribed by any
limitation of the work possessing any artistic
quality. Even an abstract work, such as a few lines
or curves arbitrarily drawn would qualify as an
artistic work. It may be two dimensional or three
dimensional. The artistic work may or may nothave visual appeal.
b. The rights to which a holder of an original artistic
work is entitled are enumerated in Section 14(c)of the Copyright act.
c. It is the exclusive right of the holder of a
Copyright in an original artistic work to reproduce
the work in any material form. For example, adrawing of an imaginary futuristic automobile,which is an original artistic work, may be
reproduced in the three-dimensional material form
using an element, such as a metal sheet.
d. The design protection in case of registered works
under the Designs Act cannot be extended toinclude the copyright protection to the works
which were industrially produced.
e. A perusal of the Copyright Act and the Designs
Act and indeed the Preamble and the Statement of
Objects and Reasons of the Designs Act makes it
clear that the legislative intent was to grant ahigher protection to pure original artistic works
such as paintings, sculptures etc and lesser
protection to design activity which is commercial

69

in nature. The legislative intent is, thus, clear thatthe protection accorded to a work which iscommercial in nature is lesser than and not to beequated with the protection granted to a work ofpure Article
f. The original paintings/artistic works which may
be used to industrially produce the designed
article would continue to fall within the meaningof the artistic work defined under Section 2(c) of
the Copyright Act, 1957 and would be entitled to
the full period of copyright protection as evident
from the definition of the design under Section
2(d) of the Designs Act. However, the intention of
producing the artistic work is not relevant.
g. This is precisely why the legislature not only
limited the protection by mandating that the
copyright shall cease under the Copyright Act in aregistered design but in addition, also deprived
copyright protection to designs capable of being
registered under the Designs Act, but not so
registered, as soon as the concerned design had
been applied more than 50 times by industrial
process by the owner of the copyright or his
licensee.
h. In the original work of art, copyright would exist
and the author/holder would continue enjoying thelonger protection granted under the Copyright Act
in respect of the original artistic work per se.
i. If the design is registered under the Designs Act,the design would lose its copyright protection
under the Copyright Act. If it is a design
registrable under the Designs Act but has not sobeen registered, the design would continue to70

enjoy copyright protection under the Act so longas the threshold limit of its application on anarticle by an industrial process for more than 50
times is reached. But once that limit is crossed, itwould lose its copyright protection under the
Copyright

Act.

This

interpretation

would

harmonize the Copyright and the Designs Act inaccordance with the legislative intent.
Mere

Section 2 ( d)Mere Mechanical contrivance does not qualify formechanicaldesign registration.

deviceIn the matter of Glaxo Smithkline CH GmbH & Co.
v. Anchor Health & Beautycare P. ltd. 2004 (29)
PTC 72 (Del) the subject design pertained to designof tooth brush. The purported novelty resided in thezig zag S bend of the tooth brush. The court was ofthe view that zig zag S bend was a utilitarian andfunctional part, regarding which the plain tips hadeven obtained a patent on the ground that the zig zag
S bend introduces mere flexibility in the tooth brush.
By merely putting rubber cushion in the gaps thesepart does not become a design so as to preclude othersfrom using it. This rubber cushions may enhance theflexibility and as such as utilitarian components. The
handle also is a utilitarian part and introduction ofcertain patches thereon does not introduce any design
therein.
―A mere mechanical device is a shape in which all thefeatures are dictated solely by the function orfunctions

which

the

article

has

to

be

performed……”.Kestos Ltd. v. Kempat Ltd. & Kemp.
(1936) 53 RPC 139.

71

―In cases where the designer has no option but todesign an article in a particular shape because of thefunction it has to perform. If the function required thearticle to be made in one shape only, then and only
then where its features dictated by solely by function‖
RPC 103, 1972.
However if the design is not an essentially amechanical contrivance but also meets the criterion
for registration apart from its functionality, it may
qualify for registration. In Cow & Co. Ltd. v. Cannon
Rubber Manufacturers, Ltd. (1959) RPC 240,347.
The design at issue was diagonal arrangement of ribs
on a hot water bottle. The defendant pleaded that thesimplest and most economical way to form the rib
was to form them diagonally and hence it should not
be registrable. The court observed ―I think that in factthat it is functionally useful but I am not satisfied for
my self that the defendants proved that it was that
object and that object alone which dictated theadoption of this type ribbing‖.
‗judged solely
by eye;Section 2 (d)Explanation:

Section2(d)containsapositive

requirement for registrability: there must be features
which ‗in the finished article appeal to and are judged
solely by the eye‘.
Designs apply to nothing but that which the eye cantell entirely. Nothing in my opinion is a good design
but that of which full knowledge is given when you
once shown to the eye what your design is. It may be
shape or configuration, that is given by a specimen or
paper drawing, and the eye can see it and the eye canrecognize whether it has been imitated‖. 24 RPC 65
Pages 74,77 and 80

72

In the first place then, the eye to which the appeal
must be made and the eye which is to judge is not theeye of the court but the eye of the customer. The
purpose of the Act is to preserve the owner of thedesign the commercial value resulting from thecustomers preferring the appearance of the article,
which have the design to those, which do not have it.
The design will therefore be calculated to attract theattention of the beholder regardless of whether or not it
makes a favourable appeal to him. (Amp. V. Utilux(1972) RPC 103 pp107).
―the requirement of appealing to the eye is therefore
really a preliminary test of novelty, as compared to thefundamental form of the article”.(Amp. V. Utilux(1972) RPC 103, pp 107).
Test of “ influencing customer preference”
In considering eye appeal, Amp [ note : see (Amp. V.
Utilux (1972) RPC 103 pp107)] devised the important
test of ‗influencing customer preference‘. In otherwords, whatever ‗appeal‘ might mean, it is the eye ofthe customer not the court which is the judge. The realimportance of this is not so much the reference to thecustomer but rather the fact that the court itself can notproperly assess the matter without assistance. Thus,
faced with evidence that a design does not have eye
appeal, eg because it was devised with functional
intent, evidence confirming that the design is attractive
to the appropriate person will be needed to support
registrability. The appropriate person would normallybe the customer (whether a purchasing member of thegeneral public or a manufacturer), although it could
also be a consumer.‖ [ Benchairs Ltd. v Chair Centre
Ltd. (1974) RPC 429 and Kevi A/S v Suspa-Verein73

UK Ltd. (1982) RPC 173].
Test of Noticability: Eye appeal essentially consist
notice ability.
In Ferrero and CspA’s application (1978 RPC 473,
HL) the design at issue was an inner layer of achocolate, which formed an essential part of thedesign. The design was upheld and the court observed―I think it is fairly plain that the underlying reason wasthat the design feature was present all the time, eventhough it only becomes apparent when the article, thatis to say the egg, was being used for its purpose, when
it had been broken so that it could be eaten‖.
Explanation: Design features which are internal but
visible only during use, may be subject matter ofregistration. For example, features of an open
able/sliding cell phone and internal arrangement ofchambers /trays in a refrigerator may be given alongwith the closed views of the article.
Exclusion ofSection 2 ( d)Under Section 2 (5) of the 1911 Act, it was held ―Atrade markdesign or pattern covers the whole body or the goods

fromand forms part and parcel or the goods but a traderegistrability

mark is apart from and different from the goods fordenoting the goods to be the manufacture or
merchandise of a particular person. The copying of adesign cannot, therefore, be treated as counterfeiting a
trade mark‖. Narumal Khemchand v. The Bombay
Co., Ltd., (1914), 25 Ind. Cas. 998.
In another case it was held ―The shape of an article
con not be regarded as its trade mark. The shapecomes within the definition of a ―design‖ as given in
section 2(5) of the Indian Patents and Designs Act.
Any infringement of copyright in the shape should,
therefore, be dealt with under the Indian Patents and74

Designs Act and not under the Criminal Procedure
Code‖. Bhagirathi Marwari v. Bukshi Ram Sharma
and Ors.Court of the Sub-Divisional Magistrate,
Jamshedpur (1932). Re. Design NO.14103.
In Ampro Food Products Vs Ashok Biscuit works
and Others AIR 1973 AP 71, It was held that ‗ adesign is different from a trade mark. A design isnecessarily part and parcel of the article manufactured
while a trade mark is not necessarily so. Design does
not include trade mark.
Property Mark

Section 2 ( d)Explanation :Property marks as defined in Section 479 of the
Indian Penal Code which reads as follows: -Section 479: A mark used for denoting that moveable
property belongs to a particular person is called aproperty mark.
For example, the mark used by the Indian Railways on
their goods may be termed as Property Mark for the
purpose of easy identification of the owner.
Representation

Rule 14

Pugh v. Riley 1912 RPC 196 which emphasizes thefact that a design necessarily requires something in thenature of a drawing or tracing:
A design to be registrable under the Act must be someconception or suggestion as to shape, configuration,
pattern, or ornament. It must be capable of being
applied to an article in such a way that the article, towhich it has been applied, will show to the eye theparticular shape, configuration, pattern or ornament,
the conception or suggestion of which constitutes thedesign. In general, any application for registrationmust be accompanied by a representation of the75

design; that is, something in the nature of a drawing or
tracing, by means of which the conception orsuggestion constituting the design may be imparted toothers. In fact, persons looking at the drawing ought tobe able to form a mental picture of the shape,
configuration, pattern, or ornament of the article towhich the design has been applied.
High Court

Section 2 ( e)High Court shall have the same meaning as assigned to
it in clause (i) of section 2 of the Patents Act, 1970.
In the Civil Appeal No. 996-997/2010, M/s Godrej
Sara Lee Limited Vs Reckitt Benckiser Australia,
Supreme Court Of India held that High Court for
appeal is High Court of Kolkata.

Proprietor of adesignSection 2 ( j)It was also held that to ―acquire‖ a design within themeaning of section 2(14) (b) of the Designs Act, 1911
means to obtain a transfer of the proprietary rights inthe design and not merely to learn the design. [Mohd.
Abdul Karim v. Mohd. Yasin and Anr. Allahabad High
Court (1934) Re. Design No.43516].
A person who made a sketch of a design for woven
goods which he wised to have worked out and passed
it on to a weaver without any particular instruction as
to the working out of it, was held not to be the authorof the design. [(1933) 50 RPC 240]
If there are two persons each of whom has produced asimilar design and each has communicated the fact ofsuch authorship to the other, neither of them alone is
the proprietor of a new or original design and neitherof them can validly register it.

[ (1935) 52 RPC 7 ]In Pressler V Gartside (1933) 50 RPC 240 the
managing director of the plaintiff made an ink sketchof a design which he wished to have worked out andapplied to woven goods and gave to a weaver to76

produce the cloth in accordance with the design. Withno further instruction the weaver produced some cloth
which was satisfactory to the plaintiff. The weaver
was not given any particular instructions with regard
to any particular way in which the sketch was to beworked out. It was found on evidence that on the basisof the sketch and instructions given, the weaver might
have produced a number of different designs. It washeld that the managing director was not the author ofthe design in question entitled to be registered as
proprietor of the design.
New ororiginal

Section 4 ( a)In the matter of M/s Brighto AutoIndustries Vs ShriRaj Chawla (ILR 1978 (I) Delhi) it was held by the
Honorable Court ―‗new‘ is taken generally to mean as
different to what has gone before and original as
something originating from the author. In the matter ofnovelty the eye has to be the ultimate arbiter and thedetermination has to rest on the general ocular
impression. To secure recognition for its newness ororiginality it is imperative that a design identical withor even materially similar to the relevant design should
not have been published or registered previously. A
slight trivial or infinitesimal variation from a preexisting design will not qualify it for registration
taking into account the nature involved the change
introduced should be substantial. It is no t necessary tojustify registration that the whole of the design shouldbe new, the newness may be confined to only a part ofit but that part must be a significant one and it should
be potent enough to impart to the whole design a
distinct identity, unless the registration sought for thesaid part alone‖.

77

Further it was held that it is the duty of the court totake special care that no design shall be counted newor original, unless it is distinct from what previously
existed by something essentially new or original which
is different from ordinary trade variants, which may
have lost, been common matters of test or choice inthat trade.
In the matter of Gammeter Vs Controller of Patents
and Others (AIR 1919 Calcutta 887) it was held ―thedesign should be protected provided it was not merely
an analogues and the test of novelty is the eye of thejudge who must place the two designs side by side
whether the one for which novelty is claimed is new‖In the matter of Glaxo Smithkline Consumer
Healthcare Gmbh & Co. KG Vs Amigo Brushes(2004 (28) PTC I Del); the court has quoted M/s B
Chawla & Sons Vs M/s Bright Auto Industries((supra) wherein it was held that in respect of a mirror
claimed to be a new and or original design that
addition in the shape of a mirror which were available
in the market did not constitute a mirror new ororiginal in design. It was observed that addition of acurve here or there in a shape which is well-recognizedshape of an article of common use in the market
cannot make it an article new or original in design. It
was further observed that where the rear view mirrors
available in market were rectangular in shape withrounded edges; width sides curved or sloping and theappellant who had registered his design of mirror
under the Act by adding a further curve in such shapeclaimed his design as new and original; without
endorsing the extent and nature of novelty in design;78

on application for cancellation of registration by
respondent it was held that design made by theappellant was devoid of newness and equally devoidof originality.
In the matter of Glaxo Smithkline Consumer
Healthcare Gmbh & Co. KG Vs Amigo Brushes (2004(28) PTC I Del); the court has quoted Hello Mineral
Water Pvt Ltd Vs Thermoking California Pure, 2000
PTC 177, it was held that mere novelty of form or
shape is insufficient. Novelty involves the presence ofsome element or new position of an old element in
combination, different from anything found in any
prior structure.
Hon’ble Supreme Court of India in Supreme Court
Of India in Civil Appeal No. 3185 of 2008 (Arisingout of S.L.P. (C) No. 16321 of 2006) has held that
expression, ―new or original‖ appearing in Section 4means that the design which has been registered has
not been published anywhere or it has been madeknown to the public and that it had been invented forthe first time or it has not been reproduced by anyone— Burden was on the Complainant to show that thedesign was not original or new —Said burden notdischarged by the Complainant as it only tried to proveon the basis of the letter of the German company thatthey produced the rollers and sold in market but it wasnowhere mentioned that these rollers have been
reproduced on the glass sheets by the German
company or by any other company — Even though the
proprietary right was acquired from the German
company, design which is to be reproduced on glass
has been registered for the first time in India andtherefore is a new and original design.

79Publication

Section 4 ( b)In the matter of Rotela Auto Components (P) Ltd Vs
Jaspal Singh reported in 2002(24)PTC449(Del), it
was held by the court in Para 21 ―……word‗published‘ used in section 19 or under section 4 of the
Designs Act has not been defined under the DesignsAct‘2000. It is published if a design is no longer asecret. There is publication if the design has been
disclosed to the public or public has been put inpossession of the design. Russell Clarke in Copyrightin Industrial Design, 4th edition, pages 41-42 says that……it is sufficient, and there will be publication if
the knowledge was either
1. Available to the member of the public; or
2. Actually in fact shown and disclosed to someindividual member of the public who wasunder no obligation to keep it secret.
It is not necessary design should have been
actually used. There will just as much be
publication if it is shown that it was known to the
public without ever having been actually put into
use. Thus, publication may be of two types:a) Publication in prior documents,b) Publication by prior user.‖In the matter of Gopal Glass Works Ltd Vs Asstt.
Controller of Patents and Designs [2006(33) PTC434(Cal)], it was held by the court that to constitute priordisclosure by publication to destroy the novelty of theregistered design, the publication would have to beintangible form, of the design applied to the same
article. Prior publication of a trade catalogue,
brochure, book, journal, magazine, or news paper
containing photographs or explicit picture illustrations
that clearly depict the application of the design on the80same article with the same visual effect would be
sufficient.
In the matter of Venus Industries Vs Magppie Expots
reported in 2003(26) PTC312 (PO) the Controller
held that While there is not given any specificdefinition of publication in the Designs Act‘2000 as
well as in the old Designs Act‘1911, any design, which
has been made available to any person in India who is
free to use or disclose it, is treated as published.
In the matter of Glaxo Smithkline Consumer
Healthcare Gmbh & Co. KG Vs Anchor Health andBeauty Care Pvt Ltd,[2004(29)PTC 72 (Del)], thecourt held that ………….It is true that even a small
inventive step may create a new design but in the casein hand the three improvements in the earlier design as
pointed out by the learned counsel for the Plaintiffs
are neither inventive nor introduced new features inthe design…….. Only by introducing few insignificant
changes, the Plaintiffs have succeeded in getting new
design registered which are already in public domain.
Publication and Section 4 & 16

2000(20) PTC 96 held under the Designs Act 1911,

effect ofthat a disclosure of a design by the proprietor to any

disclosure

other person in good faith is not deemed to be apublication of design sufficient to invalidate thecopyrights thereof if the registration is obtained
subsequently to the disclosure. The other person towhom the design has been disclosed if acts in contrary
to good faith in which the design was disclosed to him
and uses such design or publishes such design, suchuser and publication of design by the other person
other than the proprietor of the design by legal fiction
under Section 49 is not deemed to be a publication of
the design sufficient to invalidate copyrights. Section81

49 thus preserves and protects the proprietor's
registration in the circumstances, when the disclosureof design is made by the proprietor to any other person
in good faith. The expression "disclosure" used in
section 49 when seen in the light of the facts of thepresent case, it would be noticed that the 1st Plaintiff
has sold the chairs of design in question prior to its
registration as a commercial proposition. Such sale by
the 1st Plaintiff to the 2nd Plaintiff of the chairs
having the design in question prior to its registration or
for that matter prior to the application for registration,in the facts and circumstances of the case and material
placed on record, obviously would not be covered
under Section 49 of the Act.
Significantly

Section 4(c)In the matter of Phillips V Harbro Rubber Co.

Distinguishable(1919)36RPC 79 at P 85(CA) clearly indicates that itfromis not open to a manufacturer to bring one or more

Designs

Known

important leading features of different articles alreadypresent in a market and by registering a design
incorporating merely a combination without any
mental activity by application of mind for its
production and acquire registration of design. The
manufacturers who are already manufacturing those
products shall be under pressure of carrying out thebusiness for unduly registration made and be a subjectof monopoly. It would be an oppressive if any merechange in the outline or pattern of such an article
would justify the registration of design. It will not only
hamper the business activity at large but also preclude
others for making such article.

82

In the matter of Clark’s Registered Design (1896) 13
RPC 351 at page 362, (Lopes LJ),

it is however

established law that a new combination of two or more
old features may constitute a good subject matter ofvalid registration; but it is to be seen that the
combination must not be obvious and must result insomething creative that is new or original as a whole
in respect of ornament, pattern shape or configuration
Repeal &Section 48

In the matter of Faber Castell Aktiengesellschaft Vs

savingPikpen(P) Ltd reported in 2003 (27) PTC 538(Bom),provision

it was held that as regards registration,etc.. done under
the old Act, subsection (2) of section 48 of the 2000
Act clearly lays down that it shall continue to be inforce and have effect as if done under thecorresponding provisions of the new Act. This meansthat registration of the design must continue in force
and have effect as things done under section 4 of theAct. It is, therefore, clear that the intention of theparliament is that all things done under the old act can
only be continued to be in force and have effect as if
made under the corresponding provision of the new
Act. The only exception made in section 48 isprovided in subsection (4) which provides that any
proceedings

pending

in

any

court

at

the

commencement of the new Act may be continued inthat court as if the new Act has not been passed. It istherefore clear that parliament intended that all things
done under the old act, after the enactment of the new
Act be governed only by the new Act, he old Act
being completely repealed.
The question of registration and cancellation ofregistration must be decided under the new Act.
Therefore, also the question whether and to the extent

83

to which it can be used as a ground of defence in a suitfor injunction will also have to be decided withreference to the new Act.
In the matter of IAG Company Ltd Vs Triveni Glass
Ltd reported in 2005(30)PTC (Cal) (DB) wherein it isheld that it is no doubt true that under subsection (2) ofsection 48 of the new Act, the registration of theAppellant is saved. But the said registration shallcontinue in force and have effect as if it has been
issued under the corresponding provisions of the new
Act.
Once the new Act has come into force, the registration
given under the old Act will continue in force as if
given under the new Act. The obvious consequence isthat such registration is subject to same grounds ofcancellation, which are provided under section 19 (1)of the new Act. This is the obvious interpretation ofsection 48 (2). So, even though the registration
certificate is saved, but , its continuance is subject tothe grounds of cancellation provided under the new
Act. The grounds of cancellation under the new Act
are substantially wider and more comprehensive thanthose provided under the old Act.
Subsection (4) of section 48 of the new Act says that if
any proceeding is pending in any court at thecommencement of the new Act, the same may
continue in that court As if the new Act has not been
passed. In the instant case, the suit was filed before theCalcutta High Court in the month of July‘2001and the
new Act came into force in the month of May‘2000.
As such, the said suit was filed about one year threemonth after the new Act has come into force andcannot be considered a pending proceeding under84

subsection (4) of section 48 of the new Act. This is
the plain interpretation immerges on a plain reading ofsection 48(4) of the new Act in as much as thelanguage of section 48(4) is very clear and admits of
no ambiguity……...‖

85

ANNEXURE-II
SPECIMEN NOVELTY STATEMENTS & DISCLAIMERS
IN REPRESENTATION SHEETNoveltya. The novelty resides in the shape of the ash-tray as illustrated.

Statementsb. The novelty resides in the shape or configuration in the bookshelf as
illustrated.
c. The novelty resides in the groove (A) and projection (B) as
illustrated.
d. The novelty resides in the ornamental surface pattern of the footballas illustrated.
e. Novelty is claimed for the floral ornamentation of tea-pot as
illustrated.
Note: There is no need to highlight or pin-point any portion of therepresentation as novel, as novelty of the design resides in the article
taken as a whole.

Disclaimers

a. No claim is made by virtue of this registration of respect of any
mechanical or other action of any mechanism whether or in respectof any mode or principle of construction of the article.
b. No claim is made by virtue of this registration to any right to the
exclusive use of trade marks, words or letters and numerals
appearing in the design of the article.
c. No claim is made by virtue of this registration to any right to the
exclusive use of colour or colour combination appearing in thedesign of the article.
d. No claim is made by virtue of this registration to any right to the
exclusive use of any extraneous matter like xxxxxxxxx etc.
appearing in the representation sheets.

86Specimen of Representation Sheet
Name…….

Total sheet….
Sheet No…..

Perspective View
The novelty resides in the shape & configuration of the ‗TEA POT' as
illustrated.
No claim is made by virtue of this registration in respect of any mechanicalor other action of any mechanism whatever or in respect of any mode or
principle of construction of the Article.
No claim is made by virtue of this registration to any right to the exclusive
use of the words, letters, numbers, or trade marks appearing in the
representation.
Dated:
Signature of the applicant/agent(Name of the Signatory)

87