Design Registration

Ever wondered how we recognize brands instantly when we see their products? We do so through the uniqueness in their designs. Almost every known brand has its design language. The language that our eyes understand.

Most things around you in daily life are a part of some design. The chair you sit in, the toothbrush you use, the shoes you wear, the phone you’re using, the necklace you wear - the list goes on. We have all, at some point in our lives, heard the phrase “all that glitters is not gold.” Instead, all valuable designs are gold, provided you know how to protect them. We will discuss what a design is, what isn’t, design registration as intellectual property, and other related aspects in this article.

What is a design?

The iconic ‘Batmobile,’ the Statue of liberty, the curvy Coca-cola bottle, and Apple’s original iPhone - have something in common. They’re all made by humans as articles and have a unique and original shape - all that the human eye can judge. Designs are legal protection of the unique visual features of an article. When we talk about 2-D designs, we see surface patterns, lines, textures, or colors. While when we see 3-D objects, we see shapes and configurations. Designs can also be a combination of these two. These may include planar items such as graphic icons, costumes made by Sabyasachi, or solid industrial designs such as Tesla cars. Anything new and original with a unique visual appearance is a design.

Design Registration: A form of intellectual property right.

Designs are a form of intellectual property right for protecting your designs. Some countries like the US use terms like design patents. In contrast, some countries like India mean registered designs when referring to industrial designs. The government gives you the exclusive right to use, sell, or copy your design through design registration.

Let’s consider this intellectual property with an example. Let’s say you have a new car. Since you bought the car, it belongs to you, and protecting it is also your responsibility. You would probably lock it in a garage if you could. Intellectual property is the same thing, except that it is the creation of your mind. And you will want to protect this creation. Owning the car gives you the freedom of using, renting, or selling it. Similarly, you can protect your design from copying, selling, or use by others.

Designs have become even more critical in this era of digital technology. With easy access to information around the world, copying valuable designs is a piece of cake. It is thus no wonder that design wars between Apple and Samsung have become popular. Registering a design is crucial if you want commercial success and avoid copying. However, as the laws of each country govern the articles that you can register as designs, there are specific requirements and exclusions.

Can I register anything as a design?

You can register a design for the visual features of a product. There are some requirements for a design to qualify for registration. Remember the saree designs by Siddhi Vinayak knots and prints? They have registered over 270 designs for their products. When you come across the term ‘patent’, people usually mean utility patents that protect technical or functional inventions. Yet, you can get design patents for the product’s features that do not serve a function but are only for visual appeal. These are the ornamental features of a design. You can register these aesthetic aspects in any article of use as long as:

• The design is new to the public. The public can identify the design as something not seen before. It must be your original creation. 
• You have not disclosed the design in India or any other country in any form before its registration.
• It is not something against public morality or order. You cannot register obscene or scandalous matters.
• The feature you want to protect is not purely functional. You can seek utility patents for the technical and useful features.
• The final article has distinct features so that one can appreciate and judge simply by the eye.
• They are not parts of a product that are not visible in normal use. For example, components inside the car that are not visible from the outside may be in repair or inside.

Most useful objects you use and see daily have one or all visual features protectable by design registration. All industry sectors such as personal care, e.g., trimmers, combs or wearable such as textile, jewelry - need design protection. Remember, you will not be able to register a design if you disclose it in public before applying for a design.

You won’t be able to register these as designs:

Now that we know what the basic requirements of a design to be registered are, let’s have a look at what you can’t register as a design. 

• You can’t register designs that incorporate official symbols or emblems, maps, buildings, stamps, medals, etc.
• Forms, books, calendars, certificates, and other documents
• If you’re an artist involved in patterns for dressmaking, greeting cards, leaflets, medals, flyers, maps and plan cards, postcards, stamps, beware!
• Labels, tokens, cards, cartoons
• A method or mode of constructing an article
• Buildings and related structures of any type
• You can’t register designs by simply varying their size or components of an assembly in a workshop
• Parts of a design article that you do not manufacture and sell separately
• Layout designs of integrated circuits.

So why should I register my design?

Beauty lies in the eyes of the design holder. It is no surprise that major corporations like Apple, Ford, Audi and many others realize the value of their designs. The investment that goes into designing may be significant. Protecting the design sometimes yields a massive return on investment only through claiming damages due to illegal copying. In an estimate, Apple, to date, has won over $900 million in compensation from Samsung for design infringements. Infringement means copying a registered design or features of the design without permission from the original design holder.

So the next time you come up with a unique design, consider these benefits of registering a design:

1. A registered design is an asset.

When you register a design, it becomes an asset right away. Not only does it add value to your product, but it also receives trust from your buyer. Patented products get more confidence from the purchaser because of the extra mile you go for filing them. It signifies the uniqueness of your product. This is the reason why car manufacturers stick to their grille designs. Samsung, too, has established its unique design language because of design registration. Designs give you a unique selling proposition.

2. You can claim damages on a registered design if someone copies your design.

You can claim damages in a lawsuit if you find that someone has copied your design without your permission. There are plenty of use cases where infringers have had to pay huge amounts of money for illegal copying of an original design. What you protect is what you show in the design drawings you submit to an accepting office. If you do not file a design registration properly, others might get around your design by making small and simple changes in your design.

3. Design registration allows legal protection.

If you did not register your design, others might enjoy its benefits without you getting your share. It is where design patents or registered designs protect your designs. The government protects designs from anybody who copies, uses or sells your design. You can mark your products with registered design to warn potential copiers from copying your inventions.

4. Designs give you licensing options.

Designs become an asset when you register them. You can use them to sell as a licensed product or expand your portfolio. Start-ups primarily use patents to grab license deals from other major companies. Sometimes your design can be a missing link in the product lineup of your competition. You will then be able to seek reasonable returns in exchange for a license for your design.

5. Create a new source of revenue.

Suppose your design is crucial to many other products belonging to other companies. In that case, you can earn royalties from them for using your design. It remains the responsibility of the original designer to be watchful and look for such opportunities.

6. Gain a competitive advantage.

Registering your designs not only adds value to your product but also helps your business. Imagine what your competitors could do if you did not register your product. On the other hand, marketing your product  with a registered design gives you a direct edge over the competition.

For how long will it protect my design?

Designs give you monopoly rights over a design for ten years by default in India. However, you can extend this period by up to 5 years on submitting a formal request. The date from which this term count is the date of registration.

In the US, the validity of a design patent is 15 years from the date of registration.

How to register for a design?

It is crucial to file an application for design registration properly. According to the Indian patent office, 90% of applications face objections due to a lack of formality. Novelty and originality are not the most common reasons for objections. You can start the application procedure by filling Form-1 available at the website of CGPTDM, India.

Information you will need at hand to fill the required forms:

1. Details of the applicant.
2. Name of the article to which the design belongs.
3. Like categories in an online shopping website, there are classes of the type of article in designs. These are Locarno classes. You will need to know the class and subclass of the design.
4. Photographs of the article. Include enough views for the examiner to see the design from all angles.
5. If your design includes any trademarks, letters or numerals, include a disclaimer stating the feature that is new in the overall design.
6. The registered design will be in force for ten years from the date of registration. To extend this period by five years, you must file Form 3 along with INR 2000 before expiry.

How much does it cost to get a design registered?

The cost for registration of a design varies from INR 6000/- to INR 10,000/- in India. As you will see from the table below, the government charges are least for an individual, more for a start-up, and the highest for large entities. At some point in the procedure, you will need to consult an IP professional. Depending on the firm/individual, IP professionals will charge for documentation and responding to the office. The following table shows the fee structure for different scenarios in design registration:

No. of EntryOn what payableForm No.  Fees if payable (in Rupees)For Natural PersonFor other than Natural Person (s) either alone or jointly with natural personFor Small EntityFor others except small entity1On application for registration of design under sections 5 and 44.11000200040002On claim under section 8 (1) and (5) to proceed as an applicant or joint applicant.2500100020003On application for extension of copyright under section 11(2).32000400080004On application for restoration of lapsed design under section 12(2).41000200040005Additional fee for restoration.-1000200040006Inspection of registered design under section 17(1).5500100020007On request for information of design when registration No. given under section 18.6500100020008On request for information of design when registration No. not given.71000200040009On petition for cancellation of design under section 19815003000600010Notice of intended exhibition or publication of an unregistered design under section 21.95001000200011Application for registration of a document in Register of Design under section 30(3),-10In respect of one design50010002000For each additional design20040080012On application for entry of name of proprietor or part proprietor in Register of Design under section 30,-11In respect of one design50010002000For each additional design20040080013On application for entry of mortgage or license.12In respect of one design50010002000For each additional design20040080014Application for entry of notification of a document in the Register of Design under section 30 and rule 37,-13In respect of one design50010002000For each additional design20040080015On request for correction of clerical error under section 29.145001000200016On request for certification under section 26 and rule 41.155001000200017On application for certified copy of registered design under section 17(2).165001000200018On application for rectification of Register of Design under section 31.175001000200019On application for extension of time for filling priority document under rule 15 & rule 18.18200 (per month)400 (per month)800 (per month)20On notice of opposition under rule 40.1910020040021Notice of intention to attend hearing under rule 29 and 40.205001000200022Form for authorization of agent or other person21---23On request to alter names or address or address for service in the Register of Design under rule 31.2220040080024On request for entries of two address in the Register of Design.2320040080025On petition under rule 46 for amendment of any document.-5001000200026On petition under rules 29, 40, 47 for enlargement of time.-5001000200027Inspection of Register of Design under rule 38 (in respect of each design).-250500100028On petition not otherwise provided for.-10002000400029To be submitted for claiming the status of a small entity24No feeNo feeNo feeTable Fee required for design registration along with the form nos.

Conclusion: Choose your IP wisely

The law allows various forms of intellectual property to protect the creations of your mind. While giving birth to an idea in a tangible form can itself be a task, protecting it is quite another. A registered design is an asset, and one can use it for licensing as well. Besides, designs give you a unique selling proposition. Still, the responsibility of making use of the IP rights lies with the owner. You have to be vigilant in tracking any potential imitators and suing them for damages in return. Given its inherent advantages and popularity, design registration may be a good option.

Some frequently asked questions related to designs

What if someone copied my design?

If you find out that someone copied or used your registered design without your permission, you can take legal action against them. Since a legal case will involve an attorney's fee and other procedures, the first step is to check how much the imitation affects your business. Then you must send the infringer a notice to stop using your design. If it continues, you can sue them for damages.
But while applying for a design, you should also conduct a design search to see if any design related to yours is already registered or not. You will be liable to damages if you used or sold an already registered design without permission.

What to do if my design expires?

You cannot renew your design if a patent expires. In India, you can request an extension of 5 years above the ten-year term of design on request. However, you must do so before the expiry of the standard period.
Then another option may be to apply again for the design with a few modifications.

Who registers a design?

In India, the Controller General of Patents, Designs and Trademarks (CGPTDM) accepts applications for registration of a design. The Designs Act, 2000 regulates the registration and protection of designs in India.
Kolkata is the receiving and examination office. In addition, you can file at three other receiving offices: Delhi, Chennai, and Mumbai. Finally, the application will proceed to the Kolkata office for examination.

Can I patent a T-shirt design?

If your design is new (novel) and original, not copied in any sense, you can get a design patent. You should manufacture it such that it is distinct from others. However, since the designs in apparels change frequently, other forms of intellectual property may be more efficient. For example, you can consider using a trademark on your dresses or copyright the original design. If you produce a design more than 50 times, you must consider registering it as a design.

Can I register a design on my own?

Any person or the legal representative or the assignee can apply separately or jointly to register a design. Person includes any of an individual, firm, start-up, partnership or legal entity. An agent with a power of attorney may also file on your behalf. An IP professional will help in the search before filing and help overcome objections that the office raises.

I have a car design idea, can I protect it?

Yes, most automobile manufacturers first consider filing the body designs of their products. Not only the body, but you can also protect other ornamental features of designs, including mirrors, spoilers, grille, spokes on wheels, dashboard etc.