Analysis of design protection laws in India

What are Design Rights?

Design rights are a crucial form of intellectual property protection for businesses in
India, safeguarding the overall appearance of their products since the year 2000. This
protection extends to the shape, configuration, pattern, and ornamentation, offering a
vital shield against unauthorized copying and ensuring the value of your creative
efforts.

What’s protected:
The visual aesthetics of your product, including:
Shape
Configuration
Pattern
Ornamentation

This applies to diverse products, including:

Manufactured goods
Packaging
Graphical symbols
Decorative patterns
Surface finishes
Typographical arrangements

What’s not protected:

The functionality of your product
The internal mechanisms
Any features dictated solely by technical considerations

Benefits of Design Rights in India:

 Enhanced brand identity: Create a strong and recognizable brand image through
unique designs.
 Increased product value: Attract customers and command premium prices for
your protected designs.
 Deterrence against infringement: Discourage competitors from copying your
designs and protect your intellectual property.
 Attracting investment and partnerships: Secure funding and collaborations based
on your innovative design portfolio.

Scope of protection of design registration

The aesthetics of any article or product of manufacture are protected and registered in
India under the Designs Act, 2000 (“the Act” for short) and Designs Rules, 2001, as
amended in 2008. A “Design,” according to Section 2 (d) of the Act, is defined as
features of shape, configuration, pattern, ornament or composition of lines or colors
 applied to any article by any industrial process or means. The article can be a two-
dimensional or three-dimensional article, and should be capable of being made and
sold separately. The design in the finished article should appeal to and be judged
solely by the eye. Protection of design does not include any mode or principle of
construction or anything, which is in substance a mere mechanical device, and does
not include any trademark or property mark or artistic work. Thus, the Act provides
protection or registration right only to the designs that are aesthetic in nature, applied
to articles, and not to the designs dictated by a functional feature.

Who can apply for design registration?

As per Section 5 of the Act, any person who claims to be the proprietor of any new or
original design can apply for registration of such design. The term ‘proprietor’ has
been defined in Section 2(j) to mean a person for whom author of the design has
executed the work in return for good consideration, or a person who has acquired the
design or the right to apply the design to any article, or the author of the design and
any other person upon whom the right in the design has devolved.

Requirements for registration

The essential requirements for registration of a design are:

 Should be judged solely by the eye and the features of the design should visible.
 Should be new or original.
 Should not be disclosed to the public in India or elsewhere in the world by prior
publication or by prior use or in any other way.
 Should be significantly distinguishable from designs or combination of designs that
are already registered or pre-existing or disclosed to the public.
 Should not include any scandalous or obscene matter.
 Should be applied to an article by an industrial process.
 Should not include any feature that is purely functional.
 Should not include any trademark or property mark or artistic work as defined under
the Copyright Act.

Documents to be provided when applying for a registration

The following forms/ documents need to be submitted to apply for registration of a

design:

 Application Form-1
 Power of Attorney (POA)
 Representation sheets including different perspective views of the article clearly
showing the novel design. The representation sheets can include photographs, line
diagrams, or sketches.
 Details of Class of articles for which design protection is sought
 Details of Applicant
 Certified copy of priority document if priority is claimed from a foreign application
 Additional documents may be required on a case-to-case basis.
Period of protection under design registration

Once the design application meets the stipulated requirements, registration is granted
by the Patent Office. The registration provides the applicant with copyright in the
design for an initial term of ten years, extendible to fifteen years. Rights associated
with design registration Section 22 of the Act provides for legal proceedings against
piracy of a registered design. It stipulates that it would be unlawful for any person to,
for the purpose of sale and without a license or written permission of the proprietor,
apply the design itself or any fraudulent or obvious imitation thereof to any article in
the class of articles in which the design is registered or import any such article or
knowingly publish that the article is for sale.

Can a design registration be opposed?

As per Section 19, any person interested can file a petition for cancellation of the
registration of a design to the Controller at any time after the registration of the design
on grounds specified in Section 19(1). The grounds specified are:
a. The design has been previously registered in India;
b. The design has been published in India or in any other
country prior to the date of registration;
c. The design is not new or original;
d. The design is not registrable under the Act and
e. It is not a design as defined in Section 2(d) of the Act.

Advantages of a design registration

Design registrations are particularly useful since, many a time, a customer’s purchase
decision is based on the product aesthetics, i.e. shape, look, color combination,
ornamentation, etc. Customers may also associate a product with a particular
company or with a particular quality standard based on the product aesthetics. For
companies, the design is the simplest way of differentiating ones products from
competing products. Further, companies manufacturing imitation products usually
copy the design, i.e., look and feel of a product, to gain market share. As a result, it
becomes important to protect the design from being copied.

Design registration vis-a-vis product patents

Patent protection is provided to inventive features of a product that are the result of
technological advancement. Such features, which are functional and/or structural in
nature, make the product novel and inventive. Design registration, on the other hand,
is provided for the aesthetic features and visual appeal of the product. The design
registration, by definition, specifically excludes any functional feature. Thus, patent
and design registrations cover different types of IP.

Design registration vis-a-vis copyright protection

When considering protection of aesthetic features, businesses typically look towards

copyright protection. However, it is important to note that the registration of designs
and copyrights cannot exist concurrently due to Section 15(1) of the Copyright Act,
1957. Also, if an article that can be registered under both design as well as copyright
protection is reproduced more than fifty times by an industrial process, then, as per
Section 15(2) of the Copyright Act, copyright protection to the article automatically
ceases. In such a case, if the design is not registered in India, then it no longer has any
protection against imitation by competitors.

Design registration vis-a-vis trade mark registration

In general, a design registration can be used to stop others from copying the registered
design irrespective of the mark under which it is traded. There is some overlap
possible between trade marks and designs, especially with three-dimensional (3D)
trade marks. However, there are a number of issues, such as distinctiveness and
association of the 3D trade mark with the producer of the goods, because of which 3D
trade marks are generally objected to by Patent Offices. Hence, it may be prudent to
obtain a design registration to secure exclusivity at least in the initial period of a
product launch. Further, since there is no restriction on the use of a trade mark before
it is registered, companies may take a call on whether to register a 3D trade mark for a
product or not, after the product is launched and depending on whether it succeeds in
the market.

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