Designs Patent

Spicyip Tidbit: IP Office provides (much needed) clarification in Designs Act


Till recently, the provisions of the Design Act were being interpreted by the IPO as being applicable and giving protection only to the object applied for in the application, i.e. the registration was limited to only the model depicted in the application, or a limited application.  

Let me illustrate by an example, if a particular class and sub-class example were used for a product, then the registration was limited to only the class and sub-class.  This was a very limited registration and at times frustrating for both the Applicant / Agents.

Good news is at hand.  Last week, our CGPDTM issued a clarification order expanding the manner in which the Act and Rules are applied.

Our Designs Act, 2000 provides for registration and protection for designs, and under Section 5, clause 3 of the Act, “A design may be registered in not more than one class.”  Section 6(1) further provides, “A design may be registered in respect of any or all of the articles comprised in prescribed class of articles.”  Reading the Act with the Design Rules 2001, Rule 11(2) provides, “The application shall state the class in which the design is to be applied.

The clarification states, A joint reading of the Act and Rules shows that one application can be made for one or all articles comprised in a class. Accordingly, the articles may come under one or more sub-classes listed under the same class.

The order clarifies, “[A]n application under Section 5 of the Act for registration of design can be made for any one or all of the articles in that particular class, irrespective of the sub-classes therein.

Further, if it is desired to register the same design in more than one class, a separate application for each class of the article must be made.

This is welcome news!

Rajiv Kr. Choudhry

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is a co-founder of RHA Legal, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

One comment.

  1. Avataranonymous

    I am surprised that how IP policies of the GOI works, the government of India has created IPAB for trademark , Patents, GI by taking away revocation, rectification powers from the respective High Courts but why the Design revocation powers remains with the respective Civil and High courts, why the powers of revocation of design was not put with IPAB though designs matters are comparatively easier than inracacies involved in the Patent matters. As far as I know the revocation of design are remain pending for many years though design life is of 15 years only.

    I do not know all well known academecians, IP policy makers has not raised their voice against this anamoly till today.

    Reply

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