Introduction
The electric vehicles (EV) industry has seen an exponential growth whether it is technological advancements or environmental concern with sustainable mobility solutions. As creativity in the industry increases, safeguarding the unique designs of electric cars becomes essential. Design patents for electric vehicles are one of the best ways to protect the distinctive aesthetic and functional features seen in EVs. This article examines how electric vehicle manufacturers in India can use design patents to protect their innovations and provide a detailed overview of Indian design patent law, including the perspective of the Indian Design Patent Office.

What is a Design Patent?

A design patent protects the visual and ornamental features of the product, such as its shape, configuration, and general appearance of the product. Design patents cover the look of a product, compared with utility patents, which cover the functional aspects of an invention. For instance, design patents for electric vehicles can protect the overall shape of the vehicle, the layout of the dashboard, the design of seats, the look of the lighting elements, and any other visual features of the vehicle.

Definition of “Design” under Indian Law

According to the Designs Act, 2000, a design is defined as the “features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether in two-dimensional or three-dimensional form, by any industrial process or means, including any known process or means.” Essentially, the design encompasses any visual aspect of an article that is aesthetically appealing and can be viewed by the eye.

The design needs to be novel and industrially applicable. This means that it must be possible to reproduce it on a large scale using industrial processes, such as mass production techniques.”

For EVs, the design could also include:

• Exterior shape: The overall body shape, front grille, tail light arrangement, side profile, etc.
• Interior design: The arrangement and design of seats, dashboard, steering wheel, and control systems.
• Functional elements: Certain functional features that also have an ornamental appearance, such as unique tire tread patterns or wheel designs.
• Decorative elements: The use of colors, patterns, or textures on surfaces that contribute to the vehicle’s aesthetic appeal.

Why are Design Patents Important for EV Manufacturers?

• Market Differentiation: There is a burgeoning market for EVs, with many manufacturers providing similar technical elements. The design of an EV can set one brand apart from another in a world so filled with competition. EV design patent protection can offer exclusive rights to these types of unique visual elements, making it illegal for competitors to copy or imitate them.
• Protection of Aesthetic Value: Like other industries, an electric vehicle’s aesthetic coordinates play an important role in the consumer decision process. Futuristic exteriors, integrated with user-friendly interiors, have a larger role to play in the eventual figures an EV makes in the market. Protecting EV designs through design patents allows manufacturers to keep these unique features from being replicated.
• Bolstering of Intellectual Property Portfolio: By filing for design patents, EV manufacturers can bolster their intellectual property (IP) portfolio. On top of offering exclusive rights to innovations, a well-established IP portfolio can play an essential role when reaching out to investors or potential partners, or when exploring licensing possibilities.
• Protection From Infringement: If you have a design patent, you can sue anyone who copies your design without your consent. As the EV market rapidly evolves, it is critical for manufacturers to protect their designs from potential infringers who will copy and use successful elements to gain an unscrupulous advantage. Legal protection for electric vehicle designs ensures that these unique features are safeguarded from such risks.

Indian Design Patent Law

In India, the protection of designs falls under the Designs Act, 2000, and the Designs Rules,2001. This legislation provides the legal framework for registering and protecting the visual and ornamental aspects of an article, including electric vehicles. The Designs Act allows for the registration of designs that are new, original, and have industrial application.

Here are the key aspects of Indian Design Patent Law relevant to EV manufacturers:

1. Eligibility for Design patent protection : To qualify for a design patent in India, the design must fulfil the following criteria —
2. Novelty: Even a single prior disclosure of the design in any format, anywhere in the world can affect a design’s novelty.
3. Originality: The design must not be copied from or derived from another design, nor the work of others.
4. Industrial Applicability — The design should be susceptible to implementation in an article and be functional in industrial production.

For the manufacturers of electric vehicles, this implies that there can be no replication of a single element whether it be the vehicle’s exterior, the dashboard or any other segment; it must be unique in its design.

• Protection from Design Law: When upon registration of a design as per the Designs Act, the owner gains exclusive rights to the use of the design and to stop others from copying or reproducing it. The law protects the ornamental shape of a product, barring others from making, selling, or distributing anything with a design, the same as or closely similar to a registered design.

Design protection plays a significant role for the plaintiffs in sectors like the EV industry, where the visual attractiveness of a product is crucial to its viability. This prevents competitors from copying the unique features that make the manufacturer’s vehicle stand out in the market.

Design patent strategies for EVs can ensure that unique features are protected from competitors copying successful elements in the marketplace.

• Registration Process:
• Application Filing: The design application must be filed by the applicant with the Controller General of Patents, Designs and Trademarks (CGPDTM). An application normally includes a document that outlines the design with equal detail as the drawings or images required.
• Review, Application & Grant: The application is reviewed at the Design Office. If it meets all the criteria of novelty, originality, and industrial applicability, the design gets registered, and the said design is granted exclusive rights to the applicant.
• Protection duration: Duration of protection available in India is 10 years which is extendable for another 5 years, summing up total of 15 years of protection.
• Infringement and Enforcement: After a design is registered, the owner has exclusive rights to the design, which allows them to sue others for copying it. If someone uses or copies the patented design without permission, the holder of the design patent can take legal action, which may involve suing for damages or seeking an injunction against the infringing party. In India, the courts are very active in protecting design patents, and violators may be punished under the Designs Act.
• International Protection: India is a signatory to the Paris Convention for the Protection of Industrial Property and WIPO. As such, Indian design patents, by conventional filing, are valid worldwide, enabling manufacturers to safeguard their EV designs from others in the international markets as well. EV manufacturers can also apply under the Hague System for international design protection.

Role of the Indian Design Patent Office

In India, designs are registered with the Indian Design Patent Office which operates under the aegis of the Office of the Controller General of Patents, Designs and Trademarks (CGPDTM). Its role is critical in the examination of design patents and in granting protection for intellectual property. The office acts a forum for adjudicating design-related disputes.

The office provides various services, including:

• Registration of designs and grant of exclusive rights to the applicant.
• Examination of design applications to determine their eligibility for protection.
• Maintaining a publicly accessible database of registered designs, allowing manufacturers to check for any pre-existing designs that may conflict with their proposed design.

Conclusion

With the EV sector blooming in India, the design of these electric vehicles now requires protection more than ever. The aesthetic features that distinguish an EV in the market are protected through electric vehicle design patents, which represent a powerful means of protection for these types of vehicles. This will also help to avoid a situation where Indian electric vehicle manufacturers spend considerable time creating innovative products with no recourse to patent protection to gain a competitive advantage. By effectively registering and safeguarding their distinctive designs, manufacturers can not only set their offerings apart but also establish a robust portfolio of intellectual property that will contribute to their sustainable growth in the fiercely competitive global EV landscape.

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Introduction

With the Indian Automotive industry moving at a fast pace, the one thing that defines the company’s standing is the innovation or uniqueness of the vehicle’s design. The rise in demand for new models and technology also calls for plenty of protection for these types of innovation. Designs play an important role in the attractiveness and branding of automotive goods and applications. In this article, we shall focus on how a design patent protects automotive innovations, the process to obtain one, and how it helps the automotive industry in India.

What Is a Design Patent?

Unlike utility patents, a design patent does not cover the way a product operates — it instead protects its appearance, including its shape, configuration and ornamentation. In the automotive world, this includes the exterior and interior styling of a vehicle, aka the car body, headlights, grill and dashboard, as well as the actual arrangement of the seats. Design patents differ from utility patents in that the latter protects the functional aspects of an invention, whereas design patents protect the aesthetic appeal of the product.

Vehicle design patent protection in India is granted under the Indian Design Act, 2000 and the Design Rules, 2001, under which a framework exists for registration and protection of industrial designs.

How Design Patents Protect Automotive Innovations in India

In a country like India, where automotive design innovation is paramount in establishing product differentiation in a saturated space, a design patent ensures protection of the characteristics. Design patent protection for vehicles ensures that no other manufacturer can reproduce or imitate a car’s unique design without facing legal repercussions.

A design patent allows automakers to stop the copying or replication of the design of their vehicle. This immunity is granted for 10 years and can be renewed. In a highly competitive space such as India, protecting market share as well as brand identity becomes crucial for automotive firms.

How to File a Design Patent in India

Filing a design patent in India involves a few systematic steps, ensuring that the innovation is properly registered and protected. Here’s how you can navigate the design patent application process in India for your vehicle design:

1. Eligibility Check: The design should be new, original, and not previously disclosed or registered anywhere in India or abroad.
2. Prepare the Design: You need to prepare detailed representations of the design, including drawings, photographs, or sketches showing the design’s appearance.
3. Application Filing: The design application can be filed at the Indian Patent Office (IPO) online or physically. The application must include the design’s representation and a brief description of the design.
4. Examination of Application: The design patent examination process in India involves a thorough review of the application to ensure it complies with the required legal standards. The design is scrutinized for novelty and originality.
5. Approval and Registration: If the design passes the examination, the design is registered, and the applicant receives a design patent certificate. This grants the design exclusive protection rights.

Design Patent Requirements in India

There are specific design patent requirements in India that applicants must meet:

• The design must be novel and original. It should not have been published or used before in any form.
• The design must relate to an article or product and not to an abstract idea.
• The design should be applied to an industrial product, such as vehicles or vehicle parts.
• The design must not be contrary to public order or morality.

In the case of automotive companies, it becomes necessary for them to ensure that the design of the vehicle is concerned is compliant with these parameters before they can file for a design patent.

Cost of Design Patent in India

The cost of design patent in India varies depending on few factors such as the legal representation of the applicant, application fees & renewal fees. The filing fees for individuals and small entities are relatively low, making it an affordable option for automotive companies, especially startups or smaller players in the industry.

The statutory filing fee for individual is approximately INR 1,000 and for a company, the cost may rise up to INR- 4,000 for each application.

Steps to Obtain a Design Patent in India

Here are the steps to obtain a design patent in India for a vehicle:

1. Prior Art Search: Before starting the process of filing an application, it’s important to look through existing patents to confirm the design is one that doesn’t already have an existing patented design.
2. Filing the application : Submit the design along with required documentation to the Indian Patent Office.
3. Examination: After filing, the application is examined to ensure the design is new, original, and complies with the Indian Designs Act, 2000.
4. Examination Report: After examination, the IPO issues a report that either grants or rejects the design patent.
5. Grant of Patent: If the design is approved, the patent is granted, and protection is ensured for 10 years.

Importance of Design Patent Protection for Vehicles

In the Indian automotive industry, protecting design patents is important for encouraging innovation. It also assists car manufacturers to safeguard the time, effort, and money invested in designing their cars so that other manufacturers do not copy them. With most Indian consumers inclined toward vehicles with distinctive and attractive aesthetics, automakers need to safeguard their design identity.

Furthermore, a design patent acts to protect the brand from counterfeit products flooding into the market, ensuring safety by preserving the integrity of the brand. It also provides automakers with the opportunity to distinguish themselves in a competitive market through the improved development and marketing of products with new and protected designs.

Indian Design Patent Laws

Indian design patent laws focus on protecting the ornamental or aesthetic qualities of industrial products, and the Indian Design Act is in alignment with international design protection standards. This allows the automakers in India to protect their vehicle designs and at the same time, apply for protection under the Hague System for international designs.

Conclusion

The Indian automotive industry is highly competitive and a design patent is an important way to protect innovative designs for vehicles. Having a deep understanding of how the Design Patent application process works in India along with the requirements, cost, and steps is imperative for automotive companies to protect their Intellectual Property. As the Indian automobile market expands, the demand for design protection will only increase, and it presents a great deal of value for the creators and innovators of automotive designs.

By filing a design patent in India, automotive companies can ensure that their creative innovations are well-protected, fostering a more vibrant and competitive automotive industry.

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What is Design Protection?

Design refers to the look or aesthetics of a product. In the field of automobile industry, design protection can cover the external shape of a car, the design of its parts, or its internal features. Design protection aims to stop others copying the distinctive look of a product.

The Design Act and Eligibility

In India, design protection is governed by the Design Act, 2000. To qualify for design protection, the design must meet these requirements:

1. New and Original: The design must be unique and not copied from another product.
2. Design is Not Functional: The design must care for how the product looks, not how the product works.
3. Appealing to the Eye: It should have an eye-catching element.
4. Can Be Made or Used in Industry: In order for a design to have any kind of bearing in the real world, it must be capable of being used or produced in industrial settings.

What Can Be Protected as a Design in the Automobile Industry?

In the automobile sector, you can protect many things as a design, including:

• The Shape of the Vehicle: The overall look of a car or motorcycle.
• Interior Design: How the inside of the vehicle looks, such as the dashboard, seats, and other features.
• Vehicle Parts: Things like wheels, headlights, grilles, and mirrors.
• Logos and Emblems: The artistic designs of car logos or emblems.

For example, the shark fin antenna on luxury cars or the unique grille of sports cars are examples of designs that can be protected.

What is a Patent?

A patent protects inventions—novel, useful products or processes. In the automobile industry, patents typically protect technological innovations and mechanical systems that make a vehicle work better.

The Patent Act and Eligibility

In India, patents are governed by the Patents Act, 1970. To get a patent, the invention must meet these criteria:

1. New: The invention must be different from anything that exists already.
2. Inventive: The invention must involve an inventive step, meaning it’s not obvious to someone who works in the field.
3. Useful: The invention must have a practical purpose or use.
4. Can Be Made in Industry: The invention must be capable of being made or used in any industry.

Protection Time for Patents

Patents last for 20 years from the filing date, as long as you pay maintenance fees. After that, anyone can use the invention freely.

What Can Be Patented in the Automobile Industry?

In the automobile sector, patents can cover things like:

• Engine Technology: New designs or improvements in engines.
• Fuel Efficiency: New systems that make vehicles more fuel efficient.
• Self-Driving Technology: New systems or components enabling cars to drive themselves.

• Safety Features: Things like airbags or crash protection systems.
• Manufacturing Processes: Advanced Techniques to Make Parts or Assemble Car.

For example, Tesla’s electric powertrain or BMW’s advanced braking systems are patented technologies.

Overlap Between Design and Patent Protection

Design and patent protections have different purposes, but they often overlap in the automobile industry. A single product, like a car, can be protected by both design and patent. Here’s how:

1. Functional Design Features: If a design serves a functional purpose, for example the shape of a car’s headlights that helps with aerodynamics, then it might be eligible for design protection (for aesthetics) in addition to patent protection (for its utility).
2. Design and Technology Together: Certain parts may look good and also provide a functional benefit,  like a car body shape that improves speed and fuel efficiency. In such cases, the design may be protected, as may the technology.
3. Double Protection: Companies can protect both the appearance and the function of a product. For example, a car’s design might be protected as a design patent, while its braking system could be protected by a patent for the technology behind it.

Challenges of Overlapping Design and Patent

While having both design and patent protection can be helpful, it also comes with challenges:

• Complexity: The cost to file design and utility patent applications can significantly increase, putting pressure on the IP budget and filing strategy.
• Costs: Filing for patent and design rights can be cumbersome and expensive for large manufacturers.
• Enforcement Issues: When you enforce these types of rights, there is often ambiguity between design infringement (which generally deals with the visual side of how a product looks) and patent infringement (which is largely concerned with issues related to function).
• International Protection: Since different countries have different rules for striking design and patent protection, especially for multinational automobile companies, a global IP strategy is an absolute must.

How to File for Design and Patent Protection?

Filing for both design and patent protection requires careful planning and understanding of the legal process. It’s important to work with a lawyer who knows how to handle both types of protection.

Conclusion

The interplay between design and patent protection in the automobile industry provides opportunities and challenges for companies that want to protect their innovations. However, it also comes with challenges like complexity and costs. By understanding the differences between design and patent protection, and with the help of expert legal guidance, businesses can better protect their innovations and stay ahead in the competitive automobile market.

Contact Intellect Vidhya Solutions—your partner in protecting intellectual property for any questions or needed support in navigating the complexities of design and patent law.

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How Design Patents Contribute to Brand Differentiation

• Unique Product Appearance: Design patents grant exclusive rights to the ornamental design of a product, allowing companies to create visually distinct and recognizable offerings. This uniqueness in appearance can immediately set a brand apart from its competitors, making it easier for consumers to identify and remember the product.
• Brand Identity and Recognition: A well-designed and patented product can become a powerful symbol of a brand, contributing to its overall identity and recognition. Consumers often associate certain design elements with specific brands, creating a strong visual connection that reinforces brand loyalty.
• Competitive Advantage: By securing design patents, companies can prevent competitors from copying the distinctive look and feel of their products. This exclusivity can provide a significant competitive advantage, allowing the brand to maintain its unique position in the market.
• Enhanced Perceived Value: Products with unique and patented designs are often perceived as more valuable by consumers. The exclusivity and innovation associated with design patents can add a premium factor to the brand, allowing companies to command higher prices and maintain a competitive edge.

Examples of Brands That Have Leveraged Design Patents Effectively

1. Crocs: The footwear company has successfully utilized design patents to protect the unique and instantly recognizable design of its iconic Crocs shoes. The distinctive ventilated, slip-on design has become a hallmark of the brand, setting it apart from traditional footwear and contributing significantly to its global recognition and success.
2. Dyson: The company has secured numerous design patents for its innovative vacuum cleaners and other home appliances. The distinctive designs, such as the cyclonic separation technology and the iconic ball design, have become synonymous with the Dyson brand, contributing to its premium positioning and consumer recognition.
3. Bang & Olufsen: The Danish consumer electronics company is known for its sleek and minimalist design aesthetic, which is protected by various design patents. The unique and visually striking designs of Bang & Olufsen’s speakers, TVs, and audio systems have become a hallmark of the brand, appealing to consumers who value both form and function.
4. Swatch: The Swiss watchmaker has leveraged design patents to protect the unique and playful designs of its watches, which often feature bold colors, patterns, and shapes. The distinctive and recognizable Swatch designs have contributed to the brand’s success in capturing the attention of fashion-conscious consumers and positioning itself as a trendsetter in the watch industry.

These examples demonstrate how design patents can serve as a powerful tool for brands to differentiate themselves in the marketplace, establish a unique visual identity, and enhance their overall brand value and recognition. By protecting their distinctive product designs through patents, these companies have created iconic and instantly recognizable products that resonate with consumers and contribute to their brand’s success and positioning.

Tips for Using Design Patents as a Marketing Tool

1. Emphasize Visual Distinctiveness: When promoting products protected by design patents, emphasize the unique and visually appealing aspects of the design. Highlight how the patented design sets the product apart from competitors and contributes to the brand’s overall identity.
2. Leverage Storytelling: Incorporate the story behind the design’s creation into your marketing efforts. Consumers often connect with the creative process and the inspiration behind innovative designs, which can further enhance the brand’s appeal.
3. Integrate Design Patents into Branding Strategies: Ensure that design patents are a core component of your overall branding and marketing strategies. Consistently reinforce the connection between the patented designs and the brand’s identity across all marketing channels, including advertising campaigns, product packaging, and social media efforts.
4. Educate Consumers: Many consumers may not fully understand the significance of design patents. Take the opportunity to educate them about the importance of design protection and how it contributes to the brand’s uniqueness and value proposition. This can be done through informative content, product descriptions, or even dedicated sections on the company’s website.
5. Leverage social media: Social media platforms provide an excellent opportunity to showcase and promote patented designs. Share visually compelling images, videos, or behind-the-scenes glimpses into the design process, highlighting the unique and innovative aspects of the patented products.

Conclusion

In the highly competitive Indian market, design patents can be a powerful tool for companies seeking to enhance their brand value and establish a unique identity. By leveraging the exclusivity and distinctiveness offered by design patents, brands can differentiate themselves, foster consumer recognition, and ultimately strengthen their competitive position in the marketplace.

The examples provided above showcase how design patents can be effectively utilized to create visually distinct and memorable products that resonate with consumers and contribute to brand recognition and loyalty. By incorporating design patents into their marketing and branding strategies, companies can elevate their brand’s perceived value, differentiate themselves from competitors, and cultivate a loyal customer base that appreciates and recognizes the uniqueness of their offerings.

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Let’s first define a logo trademark and see how it differs from other types of trademarks before addressing how to register a logo in India.

LOGO MARK

A logo trademark is a unique symbol, design, or combination thereof that is used to identify and distinguish the goods or services of a particular company or brand. It serves as a visual representation of a business and plays a significant role in creating brand recognition and consumer association (Given below are the few examples of the logo marks).

LOGO REGISTRATION PROCESS IN INDIA

Public Search for Logo Trademarks

Before registering a logo trademark or any other type of trademark, a comprehensive public search is required. The public search for a logo is conducted on the same portal, but under the Vienna code. The Vienna code search is used to identify any previously registered logo marks in conflict with the applicant’s. The Vienna code search is typically used to locate device marks with comparable features. The six-digit Vienna code must be entered in the field designated “Vienna code” before selecting the appropriate class. After conducting a search, the result table will list all of the marks that contain the device. To avoid future opposition, it is also necessary to conduct a more straightforward search using Google Lens.

Filing Stage

The process of registering a logo mark in India is akin to that of registering a ‘word mark’, with the exception that the applicant must select the ‘Device’ mark as the category of trademark during the filing procedure. Upon completion of the aforementioned task, a prompt will appear, providing the user with the opportunity to upload the logo. The logo may be uploaded with dimensions of 8 by 8 centimetres. When submitting a trademark application for a logo, it is necessary to provide a brief description of the logo. The depiction of the logo must be comprehensive and precise in its portrayal.

As an example, in the context of McDonald’s, the logo can be described as a device consisting of two yellow arches arranged in the shape of the letter “M,” accompanied by the text “McDonald’s” written below in a red rectangular box.

Company logo registration

Similar to any other trademark, a logo has the potential to be registered under the name of an individual or a company. The process for both is identical. The government levies a fee of Rs. 4,500/- for each application submitted by an individual or sole proprietor, and a fee of Rs. 9,000/- for companies, provided that the application is filed through the online mode. In the event that the company seeking to register a logo trademark qualifies as a Micro, Small, and Medium Enterprise (MSME) or a startup, a reduction of 50% on the applicable government fees may be obtained by furnishing the MSME or Startup certificate that has been duly issued by the Government of India.

Examination process

The examination process for a logo mark differs from that of a word mark. Upon filing, a logo mark is initially subjected to scrutiny by the Vienna code classification system to determine the presence of any comparable marks in the database. Once this stage is cleared, the logo mark is deemed suitable for the ‘Formalities check pass’ evaluation phase. Conversely, a word mark is directly subjected to the ‘Formalities check pass’ stage, thereby expediting the examination and registration process.

Apart from these three aforementioned steps, the process of registering a logo in India is akin to that of any other type of trademark registration. The duration of validity for the registration is 10 years from the date of filing, contingent upon the fulfilment of renewal requirements.

PROS & CONS OF LOGO REGISTRATION

Pros

• A logo registration allows a business to flourish and reach worldwide markets more quickly than a word mark since humans recall physical characteristics faster than words.
• A logo makes it easier for consumers to distinguish one company’s goods or services from another.
• Unlike a word mark, a logo registration makes it easier to discover unauthorised usage and replication in the market.

Cons

• A registered logo cannot be revised, and if an organisation wishes to modify their logo, they must file a new registration, protecting the modified logo.
• A logo registration takes longer than a word mark registration because it must pass an additional step of scrutiny.
• Because a logo trademark requires more ingenuity and professional assistance, it is more expensive to file than a word mark.

CONCLUSION

Logo registration is a crucial step in safeguarding a company’s brand identity in India. It provides exclusive rights, legal protection, and enhanced brand recognition. Before filing, conducting a thorough Vienna code search, and writing the accurate description of the same is essential. By carefully considering these factors, businesses can make informed decisions to protect and grow their brand in India.

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What is a Design?

In India, a registered design shall include the aesthetics and overall appearance of any product. However, it is important to understand that unlike trademarks law which doesn’t make the registration mandatory, the design protection in India begins only after the registration of a design and not without it.

The Law

In India, the registration of design is been under the Design Act, 2000. It is the law that protects and governs the registration of designs as an Intellectual Property in India. Section 2(d) of the Act defines a design as the shape, configuration, pattern, decoration, or composition of lines or colors applied to any object by any industrial method or means. The item may be two-dimensional or three-dimensional and must be capable of being manufactured and sold separately. The design of the final product should be aesthetically pleasing and evaluated only by sight. The protection of designs excludes any form or principle of construction or anything that is essentially a mechanical device, as well as any trademark, service mark, or artistic creation.

Pre-requisite to register and industrial design in India

In order for a design to be eligible for registration under the Designs Act, it is required to possess the following attributes, as outlined in Section 4 of the Act:

• It ought to be something fresh and unique – like every other kind of intellectual property, a design seeking registration must be new and original, something that has not being copied from any previous works.
• It must not be made known to the general public in any way, either by publishing or through use – The design must be one of a kind and must not have been seen to the general public in any part of India or anywhere else in the globe before, either by its use or its prior publication or via any other means.
• It should be able to be easily distinguished from previously known designs or combination of previously known designs.
• It shouldn’t contain anything that could be considered controversial or indecent- It must be registrable in accordance with section 5 of the Design Act of 2000. The design may not be registered if it violates public morality or offends the public’s sensibilities.

It was ascertained in the case Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., 2008 (10) SCC 657: 2008 (7) SCR 397, that the phrase “new or original” refers to the fact that the design that has been registered has not been published anywhere or made known to the general public. It was either something that had never been done before or something that had never been replicated by anyone.

Who can apply for a design registration?

A design that is original, hasn’t been published before in another nation, and doesn’t appear to be in conflict with any local laws or regulations may be registered by any proprietor (design owner) who submits an application. The word “proprietor” has been defined in accordance with Section 2(j) as the individual who: 

• Is the author of the design; 
• Has acquired the design for a legitimate consideration; and 
• Anyone to whom that design has been devolved from the original title holder.

Registration Procedure of a Design 

The design registration confers the Designs owner several rights, the most essential of which is the ability to take legal action against design infringement or piracy. The process of registering designs in India is outlined in Chapter 2 of the Design Act. To successfully register your design, you will need to follow the following steps:

• Prior Search

The criterion that a design be innovative and original can only be satisfied by conducting prior work searches in the accessible databases. Searches for ‘design’ in India are conducted using Locarno classification, which is an international classification system used for the registration of Industrial Design. Locarno classification has 32 classes and the prior search is to be conducted under the class the article belongs to.

• Filing of application- with statement of novelty

If no identical designs were located during the earlier search, the next step is to submit an application for registration in the prescribed format and with the prescribed fee to the Design & Patent Office, Kolkata.

A brief declaration of novelty (notice that to be eligible for registration, a design must be fresh and original, as stated above) and a disclaimer should be placed on the representation, which will result in faster scrutiny and more specific protection.

• Examination Stage

After the application has been filed, the Controller of Designs conducts an examination. If the controller is unsatisfied or has any concerns about the application, he or she may file an objection. The applicant is then given the opportunity to submit a timely (within 3 months) response to the examination report.

• Acceptance

The application is accepted if the Controller deems the written response suitable. Generally, if the Controller has an objection, an opportunity for a hearing is granted; if the Controller is not persuaded by the design during the hearing, the design is rejected. After acceptance, the design is then published in the Official Gazette.

Can priority be claimed for design applications from a foreign application?

In India, the provision to claim priority for design application from a foreign application is provided under Section 5 of the Designs Act, 2000. This section states that an applicant may claim priority for a design application from a corresponding foreign application, provided that the foreign application was filed within six months of the date of filing of the Indian application and the foreign application is still pending. Priority documents should be filed with the relevant patent office. The priority document must include a copy of the foreign application and a certified translation of the foreign application, if necessary.

Term of Protection 

The duration of design protection in India after its registration is initially ten years. In the event that priority is claimed in regard to a Design, the term is ten years starting from the day the priority was granted.

Before the first period of copyright expires, the term of Design may be extended for an additional period of five years by submitting an application in the required form and paying the prescribed fee to the Controller. This must be done before the initial period of copyright expires.

Registration Fee

The design registration fee in India is variable depending on the kind of applicant:

• The filing fees for a natural person is Rs.1000,
• The filing fees for a small entity is Rs.2000, and 
• The filing fee for other entities except small entity is Rs.4000.

Examples of ‘Designs’ published in the Patent Journal dated 16/12/2022

Benefits of registering a design

Since a consumer frequently bases their purchase decision on a product’s aesthetics, including shape, appearance, color scheme, ornamentation, etc., design registrations are very helpful in this regard. Based on the aesthetics of the product, consumers may also link it to a specific business or quality level. For businesses, differentiating their products from those of competitors is easiest through product design. Additionally, in order to increase their market share, businesses that make imitation goods frequently replicate the design, or the way a product feels and looks. Therefore, it is crucial to prevent the design from being copied.

Conclusion

In India, design registration is frequently found to overlap with trademarks and copyrights. People look for ways to register their designs as trademarks or as artistic works under copyright because the duration of protection for a design in India is maximum 15 years, whereas a trademark is protected for life (based on renewal) and a copyright exists during the author’s lifetime and also 60 years after the author’s death. Steps should be taken to increase the duration of protection offered for designs in order to get more individuals applying for design registration and keep the law alive.

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Designs Act, 2000

The Indian Design Act has been enacted to protect the rights of design holders in India. In common law nations such as the United States and the United Kingdom, patents and designs are governed by the same statute. Similarly, the Indian Patent & Design Act was enacted in 1911 to encompass both patents and designs. The term ‘Design’ under Design Act, 2000, is defined as “the features of shape, any pattern, configuration, ornament or composition of colors or lines which is applied to 2 dimensional or 3 dimensional or in both the forms using any procedure or process including manual, mechanical, or chemical, combined or separate which in the finished or final article appeals to or is judged solely by the eyes.”

Essential requirement for design protection

• The design must be original or novel
• A design should not have been disclosed to the public in advance
• A design must be distinguishable from all other known designs or combinations

Rights of Design Holder in India

When a design is registered under the Act, the registered proprietor is granted 10 years of copyright protection. The proprietor’s rights are comparable to those of the owner of copyright, which includes the exclusive right to apply the registered design to the particular class of articles. The Act also permits the registered owner to grant a license for a charge. Several exclusive rights are obtained:

• The exclusive right extends to any registered design for a product.
• The exclusive right to disclose or publish granted to items for which the design has already been registered.
• The registered design must own the sole right to import for any commercial purpose.

Design Infringement

The unauthorized copying of an existing registered design is considered as design infringement. The section 22 of the Design Act talks about the design infringement, it says that any false or apparent imitation of a registered design without the authorization of the registered design’s owner or proprietor is illegal. Additionally, the section restricts the importation of any chemical or material that closely resembles a registered design.

In simpler terms, when someone else imports, applies, or publishes the registered design, or any evident, fraudulent, or imitation thereof, without the owner’s permission, that’s called an infringement of the registered design.

In the case of Troika Pharmaceuticals v. Pro Laboratories, the Gujarat High Court ruled in favour of the plaintiff because they were the registered owners of ‘D’ shaped tablets, which was a protected design. The defendants began manufacturing identical tablets on the grounds that the design was common and did not merit protection. Even if the “D”-shaped design was not innovative, the Court found that its use in tablets was novel and hence entitled to protection under the Designs Act.

The court ruled in Kemp & Co. v. Prima Plastics Limited that “If the visual characteristics of shape, configuration, and pattern designs are comparable or stringently similar to the eye, it is not required that the two designs be identical. The issue must be viewed as one of substance, and fundamental design elements must be evaluated.”

Remedies for design infringement

Section 22(2) (a) & (2) (b) of the Design Act discusses on the liabilities of the infringer which impliedly becomes the remedies of design infringement available to the registered proprietor of the design, the same section also requires the registered owner or proprietor to select one of the available remedies that are mentioned below—

• Section 22(2)(a): The infringer must pay a maximum of 25,000 Rupees for each infraction or breach recoverable as a contract debt to the registered owner or proprietor. The total amount recoverable for a single design should not exceed 50,000 Indian Rupees.
• Section 22(2)(b): The registered owner or proprietor may choose to file a lawsuit for the recovery of damages and may even seek an injunction against further infringement. In such a scenario, the infringer is obligated to pay the sum awarded by the court and is also subject to an injunction.

In addition to this provision, section 55 of the Indian Copyright Act of 1957 enables the claimant to seek remedies, claim damages, or file a suit for injunction against anyone who infringes the registered article under the Act. The claimant is also entitled to the profits made by the infringing party from the infringed design.

Defenses available to the infringing party

The defenses available to the infringing party in case of design infringement are mentioned below-

• Any grounds for cancellation of Registration of Design available under Section 19 of the Design Act, 2000;
• The violation of a registered design should begin on the day when the design’s registration ceased to be valid and continue until the date of restoration of the registered design.
• Lack of innovation in the design that has already been registered;
• Functional differences between the product and the registered design;
• Jurisdictional issues – The lawsuit for Design Infringement, recovery of damages, etc., must not be filed in a court lower than the District Judge court.

In case of Reckitt Benckiser (India) Ltd. v. Wyeth Ltd, the problem here was with the registration of S-shaped spatulas. Wyeth Ltd., the respondent in this case, argued that the appellant’s design was not unique because it had previously been registered in a foreign nation. The court ruled that the design’s registration in India would be deemed to be cancelled and it may be sought as a defence against claimed infringement under Section 22 if it could be demonstrated that the design was disclosed anywhere in India or a foreign country through means listed under Section 4(b).

Conclusion

A novel design connected to an article can become a differentiating element between your product and other’s products, and when this happens, the design becomes an intangible asset for the owner/business employing such design since it associates the owner’s identity and reputation with it. In such a case, design registration becomes necessary, as the Design Act, 2000 makes design registration obligatory in order to claim protection and defend your design from infringement.

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