Registration and Cancellation of Designs

1. Who may apply

Section 5(1) allows “any person claiming to be the proprietor of any new or original design not previously published in any country” to apply. “Proprietor” (section 2(j)) is the author, unless the author executed the work for good consideration for someone else (the commissioner is then proprietor), or the design or the right to apply it has been acquired by another person (the acquirer is then proprietor to the extent of the acquisition). An employer who commissions a design is therefore the proprietor; a freelance designer who is not paid for it remains the proprietor.

2. The application

• Filed in the Patent Office in the prescribed form with the prescribed fee (section 5(2)); the Designs Wing sits at the Patent Office, Kolkata, and applications may be filed online.
• The application identifies the article, the class, and contains representations (drawings or photographs) of the design from the relevant views, with a statement of novelty saying which features are claimed as new. A disclaimer is used to exclude mechanical features, words, letters or trade marks shown in the representation.
• A design may be registered in not more than one class (section 5(3)); if doubt arises, the Controller decides. India has used the Locarno classification since the Designs Rules were amended in 2008. A design for several classes needs several applications.

3. Priority

Section 44 lets an applicant who has applied in a convention country (a Paris Union or WTO member) claim that earlier date if the Indian application is filed within six months. Where several foreign applications were made, the six months run from the earliest. This is the Paris Convention priority (Article 4) applied to designs.

4. Examination

The proviso to section 5(1) requires the Controller, before registration, to refer the application to an examiner to report whether the design is registrable under the Act and Rules. The examiner checks that:

• the subject is a “design” within section 2(d) and not a mechanical device, trade mark, property mark or artistic work;
• it is new or original and not anticipated (section 4), usually by searching the Indian register;
• it is not contrary to public order or morality and contains nothing scandalous or obscene; and
• the formal requirements (class, representations, statement of novelty) are met.

Objections are communicated to the applicant, who must answer them and may ask for a hearing within the time the Rules prescribe. An application not completed within the prescribed time because of the applicant’s default is deemed abandoned (section 5(5)).

5. Refusal and appeal

The Controller may refuse to register a design; any person aggrieved may appeal to the High Court (section 5(4)). Designs appeals always went to the High Court; unlike patents and trade marks, they never went to the Intellectual Property Appellate Board. The IPAB itself was abolished by the Tribunals Reforms Act, 2021, and the Delhi and Madras High Courts now hear IP matters through their IP Divisions.

6. Registration, publication and certificate

• A design, when registered, is registered as of the date of application (or the priority date) (section 5(6)).
• The Controller publishes the particulars of the registered design in the Official Journal. There is no pre-grant opposition in design law; a third party’s remedy is cancellation after registration.
• A certificate of registration is issued to the proprietor, and the design is entered in the Register of Designs, which is prima facie evidence of the matters entered.
• Until registration, the design is kept secret; after it, the public may inspect it.

7. Term, extension and restoration

Section 11 gives the registered proprietor “copyright in the design” for ten years from the date of registration, extendable on application and payment of the fee for a second period of five years: fifteen years in all. TRIPS Article 26(3) requires at least ten years. If the extension fee is not paid, the design lapses; section 12 allows an application for restoration within one year of the lapse, with a verified statement of the circumstances. Section 2(c) defines “copyright” for this Act as the exclusive right to apply the design to any article in the class in which it is registered.

8. Cancellation (section 19)

Any person interested may petition the Controller for cancellation at any time after registration on any of these grounds:

1. the design has been previously registered in India;
2. it has been published in India or in any other country prior to the date of registration;
3. it is not a new or original design;
4. it is not registrable under the Act; or
5. it is not a design as defined in section 2(d).

An appeal lies from the Controller’s order to the High Court, and the Controller may refer any petition to the High Court for decision (section 19(2)). “Person interested” is read broadly: a competitor in the same trade, or a defendant sued for piracy, qualifies.

9. Comparative notes

• Hague system. One international application at WIPO can designate many member countries. India is not a party, so Indian designers must file separately abroad, and foreign owners must file nationally in India (see the note on international instruments).
• EU. The EUIPO does not examine novelty; registration is quick and validity is tested in invalidity proceedings. India’s substantive examination is slower but gives a stronger presumption.
• US. Design patents are fully examined, including non-obviousness; the term is fifteen years from grant for applications filed on or after 13 May 2015.

10. Assessment

The procedure is cheap and quick compared with patents, which suits MSMEs. Its weaknesses are examiners’ limited prior-art search, the absence of opposition, and the one-class rule, which forces multiple filings and leaves gaps. A designer who sells first and files later loses novelty entirely, since there is no general grace period.

How this is examined

As a 16-mark essay on registration procedure, or a short note on cancellation. Write the procedure as a numbered sequence with section numbers. For cancellation, list the five grounds of section 19, mention section 22(3)–(4), and the High Court’s role after the abolition of the IPAB.