In India provisions related to the Rectification of Design are provided in the Design Act, 2000, and the Design Rules, 2001. The Controller of Design is the main person responsible for carrying out the Rectification of Design proceedings in India. The proceedings when are finally over the decision of the Controller is required to be published in the Office Journal. The person aggrieved can file the application for the Rectification of Design. In the article, we will discuss in detail the complete procedure for the Rectification of Design in India.
What is a Design under the Design Act, 2000?
Protection for Industrial Design is provided for a configuration, shape, surface pattern, colour, or line, or a combination of these, which, when applied to a functional article, increases or produces aesthetics, and improves the visual appearance of the design, be it a 2-D or a 3-D article.
Under the Design Act of 2000, the protection of Industrial Design is a kind of Intellectual Property Right (IPR) that gives the exclusive right to sell, make, use and sell articles that represent the protected Design, to a part of selected people only. Protection rights for a Design are only provided for a time period of 10 years and that can be renewed once for an additional time period of 5 years. In India, to obtain Design Protection, the same has to be registered with the Design Office.
What are the essential requirements for Registration of a design in India?
The essential requirements for Registration of Design in India are as follows:
- The Design should be able to be judged solely by the eye;
- The Design features should be visible.
- Design should be original or new.
- The Design should not be disclosed to the public at large in India or elsewhere in the world by prior use or a prior publication or in any other way.
- The Design should be expressively different from designs or a combination of designs that are already been registered or pre-existing or revealed to the public at large.
- The Design should not include any obscene or scandalous matter.
- The Design should be applied to the article by an industrial procedure.
- The Design should not include any of the features that are purely functional.
- The Design should not include any artistic work or trademark or property mark as defined under the Trademark Act and Copyright Act[1].
What are the items that cannot be registered as a Design in India?
The following items cannot be registered as a design:
- Books, dressmaking patterns, calendars, jackets, certificates, forms and other documents, greeting cards, maps and plan cards, leaflets, postcards, medals, stamps.
- Labels, cards, tokens, cartoons. any mode or principle of construction of an article.
- Mere a mechanical device.
- Structures and Buildings.
- Parts of any article not manufactured and sold distinctly.
- Dissimilarities generally used in the trade.
- Mere workshop modifications of components of an assembly.
- Mere alteration in size of an article.
- Flags, signs, or emblems of any country.
- Layout Designs of an integrated circuit.
What is the Rectification of Design?
The provisions related to the Rectification of Design in India are provided under Section 31 of the Design Act, 2000 along with Rules 39 and 40 of the Design Rules, 2001. The Rectification of Design in India is filed in Form-17 as prescribed in the Design Act, 2000, and the Design Rules, 2001. An application for the Rectification of the Register of Designs can be filed by any aggrieved person.
The application for Rectification of Design can be filed on the following grounds:
The Rectification of Design can be made by way of expunging, making, or varying any entry. Rectification of Design does not include the Cancellation of a Design.
Read our article:Design Infringement in India – Complete Overview
What is the Procedure for Rectification of Design under the Design Act, 2000?
The Procedure for Rectification of Design under the Design Act, 2000, and the Design Rules, 2001 is as follows:
On the receipt of an application for Rectification of Design, the Controller of Design should notify all the persons, whose names are entered in the Register of Design as all these were having an interest in the Design. Such an application for Rectification is also required to be published in the Patent Office Journal.
Any person who is having an interest in the registered Design can give a notice of opposition to such an application for Rectification of Design within 3 months time period from the date on which the application for Rectification was published in the Journal.
The opponent is required to leave the written statement along with supporting evidences, in duplicate. The opponent is also required to set out the nature of his/her interest and the fact on which the opponent bases his/her case and is seeking relief. The opponent is required to file his/her written statement with all the other required documents within 14 days of giving the notice of the opposition
The Controller of Design should forward a copy of the notice of opposition together with the written statement and the supporting evidence to the applicant of the application for Rectification of Design within 15 days from date of the receipt of the statement and supporting evidence.
If the applicant of the application for Rectification desires to challenge the notice of opposition, he/she is required to file at Patent Office of Kolkata, a counter statement and all required supporting evidence, if any, and should set forth all the reasonable grounds upon which he/she is intending to challenge the notice of opposition filed by the opponent, within 1 month from the date on which the intimation by the Controller of Design was given, and deliver a copy of such counter-statement to the opponent, simultaneously. This time period of 1 month can be extended by the Controller of Design. The extension can be given up to a maximum of 3 months.
After receipt of the counter statement and supporting evidence from the applicant of the application for Rectification, the opponent can file his/her reply statement and supporting evidence, by way of affidavits, within 1 month from the date on which the delivery of the registered owner’s counter statement and supporting evidence. The reply evidence of the opponent should be strictly limited to subject matters in the evidence provided by the applicant. This time period of 1 month can be extended by the Controller of Design up to 3 months maximum. The opponent is required to deliver a copy of his/her reply statement and supporting evidence to the applicant, at the same time.
No further evidence should be delivered by any of the parties to the proceedings, except with the direction or leave of Controller of Design.
Where any document which is filed and is in a language other than English and is mentioned in any of the statement or supporting evidence, an attested translation in duplicate in English is required to be furnished.
After completion of the filing of statement and supporting evidence by the applicant and opponent, the Controller of Design should give at least 10 days’ notice of hearing to both the parties.
On receiving the notice of hearing, if either of the parties desires to be heard, such party is required to file a notice of intention to attend the hearing in Form 20 along with the fee prescribed for the same.
The Controller of Design can also refuse to hear any of the party which does not give the notice of intention and the prescribed fees for the same.
If either of the party is intending to depend on any publication at the hearing that is not mentioned in the petition for Cancellation of Design, any statement or supporting evidence, he/she should give to the other party and the Controller of Design a notice of such intention of his/her, along with the details of such a publication. Such a notice of intention should be given at least 15 days in advance by the party.
After hearing both the parties, or if neither of the party wants or desires to be heard, then without a hearing, the Controller of Design should decide the application filed for Rectification of Design and issue a speaking order for the same.
The final decision of the Controller of Design should be notified to both the parties and is required to be published in the Official Journal.
What are the advantages of Design Registration in India?
The advantages of Design Registration in India are as follows:
- Designs can convert any product into a brand that is desired or anticipated by the consumers and hence consolidate and increase market share.
- The licensing of the rights associated with Design can offer a valuable or appreciated income stream.
- Designs can also be used as a method of raising capital, for instance, as security for a loan.
- The rights associated to exploit a Design can also be sold.
- A reputation for an innovative product Design can add important value to the business.
Conclusion
The Rectification of Design in India is provided in the Design Act, 2000, to make any changes in the Design if there is any discrepancy in the Design. The process of Rectification of Design can only be started once the Design Registration is filed with the Design Office. The Registration of Design in India can provide important benefits to the business, including an ownership of exclusive rights to sale and manufacture of the Design. This will allow the registered owner of Design to exclude all the competitors from the market.
The potential of profitably license or sell one’s exclusive rights to a Design will also be enhanced. If one believes that his/her industrial design has commercial potential and is original, the Registration of such an industrial design is a valuable investment. We at Corpbiz have qualified experts to help you in the process of Registration of Design in India. Our trained experts will assist and guide you throughout the process of Registration of Design. Our experts will ensure the effective and timely completion of your work.
Read our article:Renewal and Restoration of Design in India
