QUESTION
ABC Communications, a telecommunications company, is in the design phase of a new device that incorporates a cell phone, PDA, MP3 player, GPS chip, and Internet capabilities. There is a concern that the new device may have nearly the same design as their competitor's product, for which an application for registration of industrial design has already been submitted. A former intern, who is now employed by the competitor, is believed to have leaked information.
Can ABC Communication apply for registration of the design of the new device under the Designs Act, 2000?
Basic Requirements of Design Registration
In order for the design to be registered and protected under the Design Act, 2000, it needs to fulfill the following essential elements:.
1. Novelty aspect: Novelty means newness. If a product's design has a novelty aspect, then only it can be registered. A combination of registered designs can also be considered, but only if that combination produces new visuals.
2. There must be no prior publication of the design, and the design must be unique. The design should be unique in nature and should not be disclosed to the public anywhere in India or somewhere else in the world by way of use, prior publication, or in any other way.
3. Applying design to an article: The design should be applied to the article itself. Without an article, registration of a design is not possible.
4. The design should not be contrary to the public order, morality, or security of India. The design should not be prohibited by the government or any authorized institution. It must be capable of registration under Section 5 of the Design Act, 2000. A design that is against public morality or against the sentiments of people may not be allowed to be registered.
5. Documents required for design registration.: The following are the documents required to register a document in India:
- Name and detailed address of the applicant
- Nature or legal status of the applicant, i.e., whether the applicant is a natural person, company, etc.
- For start-ups, the applicant should provide a certificate of registration.
- The applicant is also required to file the description of the ‘article’ along with the identification of the class as per the classification.
- A minimum of four images or drawings of the article from every angle are to be filed along with the application.
ANSWER
A design is capable of being registered only if it is new or original.
Novelty: A design shall be considered new when it has not been disclosed to the public, anywhere in India or in any other country, by publication, by use, or in any other way, prior to the filing date or priority date.
A design shall be considered new if it is significantly distinguishable from known designs or a combination of known designs. (Section 4 of the Design Act, 2000.)
Originality: original in relation to a design means;
Section 5 of the Act provides that the Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in any country and which is not contrary to public order or morality, register the design under the Act.
Every application for registration is required to be made in the prescribed manner and accompanied by the prescribed fee.
A design, when registered, shall be registered as of the date of the application for registration.
As per Section 7 of the Act, the Controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in the prescribed manner and the design to be open to public inspection.
Under Section 9 of the Design Act, the Controller grants a certificate of registration to the proprietor of the design when it is registered. The important purpose of design registration is to ensure that the artisan, creator, or originator of a design with an aesthetic look is not deprived of his bona fide reward by others applying it to their goods.
The company that is not the actual creator of design cannot apply for registration of design. Therefore, going through the above provisions of the Design Act, ABC Communication can apply for registration of the design of a new device under the Designs Act, 2002, as a competitor has just applied for registration of a duplicated design that has not been registered. During the examination, when ABC Communication is asked to clarify the status of its design with reference to an application filed by a competitor, it can submit proof that its own design is original and new and that the competitor has stolen its design while it is in the stage of development.
Disclaimer: The case study presented here is only for sharing information with readers. In cases of necessity, consult with professionals.
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