Trademark-Design Registration

Overview

Design registration is a way to protect a new design that is been added to something made in a factory. It keeps others from making fake copies of it. When you register a design, you get the right to use it for ten years, and you can extend that for another five years.

What is Design?

According to the Designs Act of 2001, a design is how something looks. It can be the shape, pattern, colors, or how it is put together. This applies to things you can touch, like objects in two or three dimensions, and they can be made in a factory or using machines, hands, or chemicals. When you look at the final product, you should be able to tell what its design is like just by using your eyes. However, it does not include things that are all about how they work, like machines.

Benefit

Ability to Sue:

Registered design owners can take legal action against copycats, ensuring they keep their unique product or design and maintain their market share. Registration helps combat the global issue of counterfeit products.

Extended Validity:

A design registration certificate remains valid for 10 years and can be renewed or extended for an additional 5 years.

Legal Protection Against Plagiarism:

Design registration offers legal protection against plagiarism, preventing other businesses from copying, selling, or duplicating products with a similar design to the original.

Increased Commercial Worth:

Registration by a patent authority enhances a product's commercial value and makes it more appealing to potential customers.

Fair Market Competition:

Registering designs encourages competition among innovators, driving research and development (R&D) efforts, leading to more innovation and benefits for businesses and consumers.

Induce Customer Response:

Design registration primarily appeals to customers based on visual appeal, judged solely by how it looks.

Return on Investment:

Registering a design provides the exclusive right to commercialize the product, adding value to intangible assets and contributing to the intellectual property (IP) portfolio. These assets often generate additional revenue, offering a strong return on investment.

Product Differentiation:

Registered designs come with essential documents that highlight what makes them unique, giving owners a competitive advantage in the market.

Ability to License-Out:

Owners of registered designs can license them to third-party producers, often within their patent jurisdiction, to earn royalties from the licensee company.

Essential Requirements For Design Registration:

Originality and Novelty:

The design must be entirely new and not have been used or shown anywhere in the world before applying for registration.

Distinctiveness:

The design should be noticeably different from existing designs or a combination of known designs.

No Scandalous or Obscene Content:

The design must not include offensive or indecent material.

Not Just a Mechanical Device:

The design should not be a simple mechanical invention but should have aesthetic appeal.

Applied to an Article:

The design should be applied to a tangible object and should be visually appealing.

Conformity with Public Order and Morality:

The design must not go against public values, ethics, or moral standards.

Tax & Process

Documents Required

• Fill out Form 1 as per Schedule-II of Designs Rules.
• Prepare duplicate representations following Rules 12, 13, and 14.
• Include Form-21 (Power of Authority) in its original form if using a patent agent/advocate.
• If using a copy of General Power of Authority (GPA), mark it with the design application number matching the original GPA.
• Use Form-24 if claiming small entity status, and provide MSME Act, 2006 registration proof for Indian entities.
• Include an affidavit as per Rule 42 for foreign entities.
• Submit the original Priority document under Rule 15.
• If the original priority document isn't in English, provide an authenticated English translation.
• Include the original Assignment if the priority applicant in a convention country differs from the Indian applicant.

Procedure

The steps are as follows:

Choose Registration Authority:

Select one of five authorities for design registration: Kolkata, Delhi, Ahmedabad, Mumbai, or Chennai.

File Form-1 with Essential Details:

Complete Form-1 with:

• Applicant's name and address
• Applicant's nationality
• For companies, include incorporation details
• Applicable fee
• Locarno Classification details (class and sub-class)
• Name of the article featuring the design
• Representation of the design

Provide Design Copies:

• Submit two copies of the design:
• For 2D designs, two copies
• For 3D designs, two copies from six different angles (front, back, top, bottom, and both sides).

Highlight Unique Features:

Clearly identify what makes the design unique compared to existing ones.

Separate Applications for Multiple Classes:

If registering the design in multiple classes, submit separate applications.

Include Disclaimer or Novelty Statement:

Attach statements of disclaimer or novelty to each representation, especially for mechanical processes, trademarks, numbers, letters, etc.

Application Review and Objections:

The patent office will review the application and raise objections if necessary.

Clearance and Copyright Certificate:

Once all objections are resolved, the patent office grants a copyright certificate for the design.

FAQ's