Design Registration in India: A Practical Guide

A manufacturer spends nine months developing a new bottle shape, shows it at a trade fair, takes orders, and only then asks about protecting it. By that point the answer has usually been decided against him. Design registration in India runs on Section 4 of the Designs Act 2000, which refuses registration to any design that is not new or original, or that has been disclosed to the public in India or anywhere in the world before the date of the application. Publication kills novelty, and your own launch counts as publication.

So the single most useful thing to know about design registration is the order of operations: file first, then show. Everything else in this guide is procedure, and procedure can be fixed. Lost novelty cannot.

There are two narrow escapes. Section 16 protects a disclosure made in confidence, so a non disclosure agreement with a mould maker or a contract manufacturer does not count as publication. Section 21 protects a display at an exhibition that the Central Government has notified for this purpose, provided the exhibitor gives the Controller prior notice and files within the period the section allows. Neither of these will help the manufacturer who put photographs on Instagram.

What a design is, and what it is not

Section 2(d) defines a design as the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, in two dimensions or three or both, by any industrial process, and judged solely by the eye. Read that last phrase carefully. The test is what the eye sees in the finished article, not what the engineering drawing says.

The definition then excludes a list, and the exclusions are where applications fail:

• Any mode or principle of construction. You cannot register the way something is assembled.
• Anything which is in substance a mere mechanical device. Function is the domain of patents.
• A trade mark or a property mark. Those go to the Trade Marks Act 1999.
• An artistic work as defined in the Copyright Act 1957. A painting stays a painting.

The working line for a product business is this. The look of the handle is a design. The mechanism inside the handle is not. If a feature is there only because it has to be there for the article to work, expect an objection.

Typical subject matter from Madhya Pradesh businesses includes furniture profiles, bottle and packaging shapes, textile and saree prints, jewellery patterns, footwear soles, tile surfaces and the housings of small appliances.

What the application contains

Applications are filed with the Patent Office, and design matters are processed by its Design Wing at Kolkata. Filing is done online.

The application carries:

1. Form 1, with the applicant’s name, address, nationality and the article to which the design is applied.
2. The class under the Locarno classification, which the Designs Rules adopted through the 2021 amendment. One application covers one design applied to one article in one class, so a range needs several applications.
3. Representations of the design. These do the real work. File consistent views: front, rear, top, bottom, both sides and a perspective view, on plain backgrounds, showing the same article in each. Photographs are allowed but they must be clean, with no props, no branding and no shadows that read as features.
4. A statement of novelty, in one sentence, saying where the novelty resides. “The novelty resides in the shape and configuration of the bottle as illustrated” is the standard form, and it can be narrowed to a particular part.
5. A disclaimer for any words, letters, numerals or trade marks visible in the representations, since none of those are what you are registering.
6. A power of authority if an agent or advocate files, and the prescribed form with the Udyam or DPIIT certificate if the lower fee slab for a natural person, small entity or startup is claimed.

The fee is charged per application and sits at a lower slab for a natural person, small entity or startup and a higher slab for everyone else. The current figures are in the First Schedule to the Designs Rules, and they are revised from time to time, so check rather than assume.

If the design has already been filed in a Paris Convention country, Section 44 allows a claim to that earlier priority date provided the Indian application is filed within six months. That six months is not extendable.

Examination and the six month clock

The Controller examines the application for novelty against prior registrations and published designs, for whether the subject matter is a design at all, and for formal defects in the representations. Objections come as a statement of objections.

Here is the deadline that catches people. The application must be put in order by removing all objections within six months from the date of filing, and that period can be extended by three months on a request made before it expires. This is a total budget, not a per objection allowance. If your reply takes ten weeks and the next round of objections takes another eight, the clock is still running from the original filing date. Applications are treated as withdrawn on this ground more often than they are refused on merit.

Once objections are cleared the design is registered, the certificate issues, and particulars are published in the Patent Office Journal under Section 7. Until then the design is not open to public inspection, which is a useful piece of confidentiality while a product is still in development.

Term, renewal and marking

Item	Rule
Initial term	10 years from the date of registration
Extension	A further 5 years, applied for before the initial 10 years expire
Maximum	15 years, with no further extension available
Priority claim	Within 6 months of the convention country filing
Marking	The article must carry REGISTERED or REGD. with the registration number

The extension deserves a diary entry of its own, because the application has to be made before the first ten years run out. There is no grace period equivalent to the one that exists for trademarks.

Section 15 is the provision most proprietors have never read. Before delivery for sale, the article must be marked with the word REGISTERED, or REGD., together with the registration number. If it is not, the proprietor is not entitled to recover any penalty or damages from an infringer unless he shows that he took proper steps to ensure the marking, or that the infringement happened after the defendant knew of the registration. Winning on liability and recovering nothing is an avoidable outcome.

Enforcing a registered design

Section 22 calls it piracy, and it covers applying the registered design or any fraudulent or obvious imitation of it to any article in the class in which it is registered, for the purpose of sale, without the proprietor’s licence. It also covers importing and publishing such articles.

The proprietor has a choice of remedies:

• Recover from the infringer a sum not exceeding twenty five thousand rupees for each contravention, as a contract debt, subject to a total of fifty thousand rupees for any one design. This route is quick but capped.
• Sue for injunction and damages. There is no cap, and this is the route taken whenever the copying is commercially serious.

The test for infringement is the same eye that decides registrability. Courts compare the two articles as a whole, from the point of view of an ordinary purchaser with imperfect recollection, and small variations introduced deliberately do not save a copy that reads as the same design. Functional features and features common to the trade are discounted in that comparison.

Two procedural points. A suit under Section 22 cannot be filed in any court below the court of a District Judge. And if the defendant raises a Section 19 cancellation ground as a defence, the suit is transferred to the High Court, which for a Jabalpur proprietor means the Madhya Pradesh High Court. That transfer is worth anticipating when the suit is drafted, and it sits within our litigation and arbitration work.

Cancellation under Section 19

A registration can be challenged at any time by a petition to the Controller. The grounds are narrow and specific:

• The design was previously registered in India.
• It was published in India or elsewhere before the date of registration.
• It is not new or original.
• It is not registrable under the Act.
• It is not a design within the meaning of Section 2(d).

Most cancellation petitions turn on prior publication, which is why the file for a design should include dated evidence of when the design was created and when it was first shown to anyone outside the business. An appeal from the Controller’s order lies to the High Court.

Choosing the right right

Product businesses often hold overlapping rights and enforce the wrong one.

• Design. The appearance of the article. Ten years, extendable to fifteen. Registration required before disclosure.
• Trade mark. The badge that tells buyers whose product it is, including in some cases the shape of goods and their packaging. Renewable indefinitely, and the difference between suing on a registration and suing on reputation alone is explained in our note on passing off and infringement.
• Copyright. The drawing itself, until Section 15(2) of the Copyright Act 1957 cuts it off. Once a design capable of registration under the Designs Act has been applied to articles reproduced more than fifty times by an industrial process, copyright in it ceases. That rule is set out along with the rest of the position in our guide to copyright registration in India.

The fifty copies rule is the reason a design application belongs in the product launch plan and not in the legal budget for next year. Cross that threshold with no registration and the shape becomes free for anyone to copy.

The mistakes that repeat

• Showing the product at a fair, to a dealer network or on social media before filing.
• Filing photographs shot on a cluttered desk, so the examiner cannot tell which lines are the design.
• Writing a statement of novelty so broad that it claims the whole article when the new part is one surface.
• Missing the six month window for clearing objections while waiting on a supplier for drawings.
• Forgetting the Section 15 marking, then discovering it during cross examination.
• Letting the ten year term lapse without applying for the extension.

We advise on design filings and on enforcement against copied products, and appear in intellectual property matters before the district courts at Jabalpur and the Madhya Pradesh High Court. The scope is set out on our trademark and intellectual property practice page.

This is general information on the Designs Act 2000 and the Designs Rules, not legal advice on any particular product. Whether a shape is registrable, and whether it has already been published, depends on facts that need to be looked at before anything is filed. If you have a design nearing launch, our contact page is the way to reach us, and earlier is genuinely cheaper here than later.