(a) “Act” means the Designs Act, 2000
(b) “Application in United Kingdom or convention country or group of countries or intergovernmental organisation” means an application made by any person in any part of United Kingdom or convention country or group of countries or inter-governmental organisation, of a design for the protection in India under the provisions of section 44 of the Act.
(c) “Office” means the Patent Office referred to in section 74 of the Patent Act, 1970 (39 of 1970)
(d) “Reciprocity Application” means an application in India under section 44 of the Act.
(e) “Set” means a number of articles of the same general character ordinarily sold together or intended to be used together, all bearing the same design, with or without modification not sufficient to alter the character or substantially to affect the identity thereof.
3. Leaving and serving documents. - (1)Any application, notice or other document authorised or required to be filed, left, made or given at the Office, or to the Controller or to any other person under the Act or these rules, may be sent by hand or by a prepaid letter through the post or registered post or speed post or courier service, and, if sent by a prepaid letter or registered post or speed post or courier service, shall be deemed to have been filed, left, made or given at the time when the letter containing the same would be delivered in the ordinary course of mail ,and in proving such sending, it shall be sufficient to prove that the letter was properly addressed and mailed. If the documents sent through tele-fax/e-mail, are clear and fully legible, they shall also be accepted provided that original documents corresponding to the one sent by tele-fax/e-mail is submitted to the office within fifteen days from the date of receipt of the documents so faxed/e-mailed.
(2) Any written communication addressed to a registered proprietor of a design at his address as it appears on the Register of Designs, or at his address for service, or to any applicant or opponent in any proceedings under the Act or these rules, at the address appearing on the application or notice of opposition, or given for service, as hereinafter provided, shall be deemed to be properly addressed.
(3) Any application for registration of design, application for extension of copyright, petition for cancellation of registration of design and application for rectification of Register of Design along with the prescribed fees authorized or required may be filed, left, made or given to the branch offices also by the applicant.
(4) The branch offices shall transmit such applications or documents along with the fees to the Head Office of the Patent Office for processing and prosecuting the same.
4. Address for Service. - Every applicant or opponent in any proceeding under the Act or these rules, and every person who shall hereafter become a registered proprietor of a design, shall give an address for service in India and such address may be treated, for all purpose connected with the design as the actual address of such applicant, opponent, registered proprietor. Unless such an address is given, the Controller shall be under no obligation either to proceed with the application or the opposition, or to send any notice that may be required by the Act or rules framed there under:
Provided that such address for service may include e-mail or digital address of the agent/applicant.
5. Fees.- (1) The fees to be paid in respect of the registration of designs, and application therefor, and in respect of other matters, with relation to Designs Act and rules framed there under, shall be those as specified in the First Schedule of the rules.
(2) (a) Fees may be paid in cash at the office, or the same may be paid by Cheque or Demand Draft on a scheduled bank payable to the Controller at Calcutta and if sent through the post or registered post or speed post or courier service shall be deemed to have been paid at the time when properly addressed and prepaid letter containing the cheque would be delivered in the ordinary course of mail.
(b) Cheques or Demand Drafts not carrying the correct amount of commission, and cheques or demand drafts on which the full value specified therein cannot be collected in cash within the time allowed for payment of the fee, shall be accepted only at the discretion of the Controller.
(c) Stamps and Indian postal order shall not be accepted in payment of fees.
(d) Subject to the approval of the competent authority any applicant or an agent may deposit money in advance once in a financial year and request the Controller to realise any fee payable by him from the said deposit and in such case date of the receipt of the request to realise the fee or the date on which the request to realise the fee is deemed to have been received, which ever is earlier, shall be taken as date of payment of fee:
Provided that the requisite amount of money is available at the credit of the person making the request.
6. Forms. - (1) The forms set forth in the Second Schedule, with such variations, as the circumstances of each case require, shall be used for the purposes mentioned therein.
(2) When no form is so specified for any purpose, the applicant may adopt any form specified in the Second Schedule with such modification and variation as the controller may permit.
7. Size, etc., of documents. - (1) All documents and copies of documents except drawings or representation, sent to or filed, left at the Office or otherwise furnished to the Controller shall be written, typewritten, lithographed, or printed in the English/Hindi language (unless otherwise directed), in large and legible character with deep permanent ink upon one side only of strong white paper of A4 size with a margin of at least one inch and a half or four centimeters on the left hand part thereof.
Signatures thereto shall be written in a large and legible hand and any signature which is not legible or which is written in a script other than English shall be accompanied by a transcription of the name in English in block letters.
(2) Additional copies of documents shall be filed at the Office, if at any time required by the Controller.
(3) Names and addresses of applicants and other persons shall be given in full together with their nationality and such other particulars, if any, as are necessary for identification.
8. Signature and verification of documents specified in sections 5, 12, 19 and 37. The documents specified in sections 5,12,19 and 37 of the Act shall be dated and signed at the foot, and shall contain a statement that the facts and matters stated therein are true to the best of the knowledge, information and belief of the person signing them.
9. Agency. -For all matters falling under the provisions of section 43 of the Act, applicant may, unless otherwise directed by the Controller, authorize under his personal signature, any person specified in section 43 to act as his agent and to receive all notices, requisitions and communications. The authority may be given in Form- 21.
10. Classification of Goods.- (1) For the purposes of the registration of designs and of these rules, article shall be classified as specified in the Third Schedule hereto.
(2) If any doubt arises as to the class to which any particular description of article belongs, it shall be determined by the Controller in consultation with the applicant wherever required.
Application for Registration
11. Application. - (1) An application under section 5 of the Act for the registration of a design shall be accompanied by four copies of the representation of the design and the application and each of copy of the representation of the design shall be dated and signed by the applicant or his agent.
(2) The application shall state the class in which the design is to be registered, and the article or articles to which the design is to be applied.
(3) If it is desired to register the same design in more than one class of article, a separate application shall be made in each class of article and the application shall contain the number or numbers of the registration or registrations already effected.
(4) If so required by the Controller, the applicant shall state purpose for which the article is used.
12. Statement of novelty. - The applicant may, and shall, if required by the Controller in any case so to do, endorse on the application and each of the representation a brief statement of the novelty he claims for his design.
13. Additional copies of representation or specimens. - If the controller in any case so requires, the applicant shall supply one or more representations or specimens of the design in addition to those supplied with the application.
14. Representation. - (1)The four copies of the design required by rule 11 shall be exactly similar drawings, photographs, tracings or other representations of the design or shall be specimens of the design.
(2) When a design is to be applied to a set, each representation accompanying the application shall show all the various arrangements in which it is proposed to apply the design to the articles included in the set.
(3) Each representation of the design whether to be applied to a single article or to a set, shall be on durable paper of A4 size (and not on cardboard) and shall appear on one side only of the paper. The figure or figures shall be placed in an upright position on the sheet. When more figures than one are shown, these shall , where possible, be on one and the same sheet, and each shall be designated (e.g. perspective view; front view, side view).
(4) When a design is to be applied to a set, any doubt whether the given articles do or do not constitute a set shall be determined by the controller.
(5) If the specimens are not, in the opinion of the Controller, suitable for record in the office they shall be replaced by representations.
(6) Where words, letters or numerals are not of the essence of the design, they shall be removed from the representations or specimens; where they are of the essence of the design, the Controller may require the insertion of a disclaimer of any right to their exclusive use.
(7) Each representation of a design, which consists of a repeating surface pattern, shall show the complete pattern and a sufficient portion of the repeat in length and width, and shall not be of less size than 5 by 4 inches or 13.00 centimeters by 10.00 centimeters.
(8) If the name or representations of living persons appear on a design the Controller shall, if he so requires, be furnished with consents from such persons before proceeding to register the design. In the case of deceased person, the Controller may call for consent from the legal representative before proceeding with registration of the design on which the names or representations appear.
15. Reciprocity application for the registration of a design. - (1) Every reciprocity application for the registration of a design shall contain a statement that an application in United Kingdom or convention country or group of countries or inter-governmental organisation has been made for the protection of the design to which such reciprocity application relates and shall specify convention country or group of countries or inter-governmental organisation in which any such application has been made and the official date or dates thereof respectively. The application shall be made within six months from the date of the first application in United Kingdom or convention country or group of countries or inter-governmental organisation by the person by whom such application in United Kingdom or convention country or group of countries or inter-governmental organisation was made, or by the legal representative or assignee of the person either alone or jointly with any other person.
(2) In addition to the four copies of the representations of the design filed or left with every reciprocity application for the registration of a design, a copy of the design filed or deposited by the applicant or his predecessor in title as the case may be, in respect of the first application in United Kingdom or convention country or group of countries or inter-governmental organization, duly certified by the Official Chief or Head of the organization in which it was filed, or deposited or otherwise verified to the satisfaction of the Controller, shall be filed or left at the office at the same time as the reciprocity application or within such further time not exceeding three months as the Controller may allow.
(3) Save as aforesaid and as provided by rule 30 all proceedings in connection with a reciprocity application shall be taken within the time and in the manner required by the Act or prescribed by these rules for ordinary application.
16. Manner in which a claim under sub-section (1) of section 8(1) shall be made.-
(1) A claim under sub-section (1) of section 8 shall be made in Form-2.
(2) The original assignment or agreement or other document affecting right,title or interest in the application or an official or notarially certified copy thereof shall also be furnished for the Controller’s inspection and the Controller may call for such other proof of title or written consent as he may require.
17. Acceptance.- Upon receipt of an application for registration, the Controller may accept it, if he considers that there is no lawful objection in the report of examiner to the design being registered.
18. Objections.- (1) If on consideration of the report of the examiner on the application referred under sub-section (1) of section 5, any objection appear to the Controller is adverse to the applicant or requires any amendment of the application, a statement of such objections shall be sent to the applicant or his agent in writing, and unless within three months from the date of official communication of objection the applicant or his agent removes the objection or applies for hearing,the applicant shall be deemed to have withdrawn his application:
Provided that the period for removal of the objection shall not exceed the time period of six months from the date of filing of the application.
(2) If the applicant or his agent applies for a hearing under sub-rule (1) within a period of three month from the date of communication of the statement of objections or if the Controller considers it desirable to do so, whether or not the applicant has refiled his application, fix a date for hearing having regard to the time remaining for completion of the application as provided under rule 21.
(3) When a hearing has been fixed under sub-rule (2) the applicant shall be given at least 10 days notice of such fixation or such shorter notice as appear to the Controller to be reasonable in the circumstances of the case and applicant shall as soon as possible notify the Controller whether he shall attend the hearing.
(4) Hearing, as required under sub-rules (1), (2) and (3) may be allowed whenever possible on phone followed by detailed submission on tele-fax/e-mail.
(5) After hearing the applicant or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may register or refuse to register the design as he thinks fit.
19. Decision of Controller. - The decision of the Controller containing the grounds and materials used by him in arriving the decision at such hearing as aforesaid shall be communicated in writing to the applicant or his agent
20. Date for appeal. - The date on which the decision of the Controller is dispatched shall be deemed to be the date of the Controller’s decision for the purpose of appeal.
21. Non-completion within six months. - An application which owing to any neglect or default of the applicant, has not been completed so as to enable registration to be effected within six months from the date of application, shall be deemed to be abandoned.
22. Publication of the particulars of registered design under section 7. -On acceptance of the design filed in respect of an application, the Controller shall direct the registration and publication of the particulars of the application and the representation of the article to which the design has been applied, in the Official Gazette. When publishing in the Gazette, the Controller may select one or more views of the representation of the design, which, in his opinion, would depict the design best
23. Manner of making an application under sub-section (2) of section 11. - An application under subsection (2) of section 11 shall be made in Form -3.
24. Restoration of Designs.- (1)An application for the restoration of a design under section 12 shall be made in Form - 4.
(2) Upon consideration of the application and the evidence adduced by the proprietor of the design, if any, if the Controller is satisfied that a prime facie case for the restoration of the design has not been made out he shall intimate the proprietor of the design accordingly, and unless within one month from the date of such intimation the proprietor requests to be heard in the matter, the Controller shall refuse the application.
(3) If the registered proprietor requests for hearing within the time allowed and the Controller after giving the register proprietor such a hearing, is prima facie satisfied that the failure to pay the fee for extension of copy right was unintentional, he shall allow the application for restoration.
25. Payment of unpaid extension fee. - (1) If the Controller decides in favour of the registered proprietor of the design, the proprietor shall pay the unpaid fees for the extension of copyright and additional fee specified in the First Schedule, within a month from the date of the order of the Controller allowing the proprietor for restoration of the deisign.
(2) The Controller shall advertise in the Official Gazette his decision on the application for restoration.
Marking of Articles
26. Marking of articles before delivery on sale. - Before delivery on sale of any article to which a registered design has been applied, the proprietor of such design shall cause each such article to be marked with the word REGISTERED or with the abbreviation REGD., or with the abbreviation RD, as he may choose, and also (except in the case of articles made of soft or brittle in nature to which have been applied designs registered in different classes of articles) with the number appearing on the certificate of registration:
Provided that the requirements of this rule and clause (b) of sub-section (1) of section 15 of the Act shall be dispensed with as regards-
(i) textile goods in which the design is printed or woven, other than handkerchiefs; and
(ii) articles made of charcoal dust, which are brittle and which are not sold in single pieces.
Inspections and Searches
27. Inspection of designs. - Registered designs shall be open to public inspection after the notification of the said design in Official Gazette and the application together with representation of the design may be inspected on a request made in Form - 5.
28. Search under section 18. - (1) Request for information as specified in section 18 of the Act may be made by any person in Form 6 with the fee as specified in the Schedule of fees and shall contain the registration number of the design for which information is required.
(2) If the applicant is unable to furnish the registration number of the design, he shall lodge with the Controller, in Form 7 together with such information as is in his possession, and the Controller shall thereupon cause search to be made in the class indicated therein as much as be possible on the information supplied, and shall furnish such information as may be obtainable. Where Form 7 is accompanied by a representation or specimen of the design, such representation or specimen shall be furnished in duplicate.
29. Cancellation of registration of designs under section 19. - (1) A petition to the Controller for the cancellation of the registration of a design shall be made in duplicate in Form - 8 and shall be accompanied by a statement in duplicate setting out the nature of the applicant’s interest and the facts upon which he bases his application.
(2) If the petition for the cancellation of the registration of a design is made by person who is not the registered proprietor, a copy of the petition along with the statement shall be transmitted by the Controller to the registered proprietor.
(3) If the registered proprietor intends to oppose the application he shall within a time to be specified by the Controller, leave at the office a counter statement setting out the grounds on which he intends to oppose the application and shall, within the same time, deliver to the applicant a copy of the counter-statement.
(4) The applicant may, after delivery to him of the copy of the registered proprietor’s counterstatement, leave at the office, evidence by way of affidavits in support of his case and shall also deliver to the registered proprietor a copy thereof.
(5) The registered proprietor may, after delivery to him of the applicant’s evidence, leave at the office evidence by way of affidavits in support of his case and shall also deliver to the applicant a copy thereof.
(6) The applicant may, after delivery to him of a copy of the registered proprietor’s evidence, leave at the Office evidence in reply by way of affidavits and shall also deliver to the registered proprietor a copy of such evidence.
(7) No further statement of evidence shall be left by either party except by leave of or on requisition by the Controller.
(8) Where a document is in a language other than English and is referred to in any statement or evidence filed in connection with an petition under section 19 or opposition thereto, an attested translation thereof in English shall be furnished in duplicate.
(9) The time allowed for filling the counter-statement or for leaving evidence shall ordinarily be one month which may be extended only by a special order of the Controller given on a petition made by party seeking extension of time:
Provided that the extension so granted shall in no case exceed three months in aggregate.
(10) On completion of the filing of the statement and the evidence referred to sub-rules (3) to (8) or at such other time as he may decide, the Controller shall appoint a hearing of the petition for cancellation and shall give the parties not less than ten days’ notice of such hearing.
(11) If either party desires to be heard, he shall give to the Controller a notice in Form 20 of his intention to attend the hearing.
(12) If, at the hearing, either party intends to refer to any publication, he shall give to the Controller and to the other party not less than five days’ notice of such intention, together with the details of the publication to which he intends to refer.
(13)After hearing the party or parties desirous of being heard or without a hearing, if neither party desires to be heard or attends the hearing, the Controller shall decide on the petition and the opposition, if any, and notify his decision to the parties.
GENERAL - Register of Designs
30. Registering designs.- (1)When a design is accepted, there shall be entered in the Register of Design, in addition to the particulars required by the Act, the number of the design, the class in which it is registered, the date of filling the application for registration in this country, the reciprocity date, if any, claim for the registration, and such other matters as would effect the validity or proprietorship of the design.
(2) When such Register of Design is maintained wholly or partly on computer under floppies or diskettes, such computer floppies or diskettes shall be maintained under superintendence and control of Controller and in case of any dispute or doubt with regard to information of designs, the information as contained in the backup file or master file shall be final.
(3) Where the accepted design is one in respect of which a reciprocity date has been allowed, the registration, the extension or the expiration of the copyright in the said design shall be reckoned from such reciprocity date.
31. Alteration of address.- A proprietor of a registered design may make a request in Form 22 to the Controller for alteration of his name, or address, or addresses for service, in the Register of Design. The Controller may require such proof of alteration so requested as he may think fit before acting on the request and on satisfaction, the Controller shall cause the Register to be altered accordingly.
32. Registration of documents under sub-section (3) of section 30.- An application referred to in subsection (3) of section 30 shall be made in Form- 10.
33. Application for entry of subsequent proprietorship.- An application referred to in sub-section (1) or (2) of the section 30 shall be made to the Controller in Form 11 or 12 or 13 as the case may be.
34. Particulars in applications.- An application under rule 33 shall contain the name, address and nationality of the person claiming to be entitled, together with full particulars of the instrument, if any, under which he claims.
35. Production of documents of title and other proof.- Every assignment, and every other document containing, giving effect to or being evidence of the transmission of copyright in a registered design or affecting the proprietorship thereof or creating an interest therein as claimed in application under rule 33 shall unless the Controller otherwise directs, be presented to him either in original, or notarially certified true copy together with the application and he may call for such other proof of title or written consent as he may require for his satisfaction:
Provided that in the case of a document which is a public document, an official or certified copy thereof may be presented.
36. Form of entry.- The entry to be made in the Register on request under rule 34 shall be in the following form :-
“In pursuance of an application received on the [……………………………………………………]
Registered as Proprietors
By virtue of Assignment
Mortgage deed etc.
dated _____________ and made between ______________ of the one part and _______________ of the other part.
37. Entry of notification of documents.- An application for entry in the Register of Design of notification of any document (not already provided for), purporting to affect the proprietorship of a registered design, shall be accompanied by an attested copy of the document, the accuracy of such copy being certified as the Controller may direct, and the original or notarially certified true copy of the document shall at the same time be produced and left at the Office if required for further verification.
38. Hours of inspection of Register.- The Register of Designs shall be open to the inspection of the public at all times on which the Office is open to the public, except at times when they are required for actual official use.
39. Rectification of Register.- If an application is made for the rectification of the Register of Design under section 31 of the Act, the Controller shall notify all persons whose names, at the time of the application are entered on the Register as claiming an interest in the design, and shall advertise the application in the Official Gazette.
40. Opposition to rectification.- (1) Notice of opposition to any rectification of the Register of Design may be given within three months of the advertisement of the application for rectification.
(2) The opponent shall, within fourteen days of giving notice of opposition, leave at the office his written statement in duplicate setting out the nature of his interest, the facts upon which he bases his opposition and the relief, which he seeks.
(3) The Controller shall furnish the applicant with a copy each of the notice of opposition and the written statement.
(4)The procedure specified in sub-rules (4) to (13) for rule 29 relating to leaving evidence and hearing shall, so far as may be, apply to the hearing of the application under section 31 as they apply to the hearing of a petition under section 19.
41. Certified copies of documents. - Certified copies of an entry in the Register of Design or certified copies of, or extracts from disclaimers, affidavits, declarations and other public documents in the Office, or from Register and other records, shall be furnished by the Controller on payment of the prescribed fee.
42. Form etc. of affidavits. - (1) The affidavits required by the Act and these rules, or used in any proceedings thereunder, shall be headed in the matter or matters to which they relate, shall be drawn up in the first person, and shall be divided into paragraphs consecutively numbered; and each paragraph shall, as far as possible, be confined to one subject. Every affidavit shall state the description and true place of abode of the person making the same, shall bear the name and address of the person leaving it and shall state on whose behalf it is left.
(2) Affidavits shall be confined to such facts as the deponent is able of his own knowledge to prove, except on interlocutory applications, on which statements of his belief may be admitted, provided that the grounds thereof are stated.
(3) Affidavits shall be sworn to as follows :-
(a) In India, before any court or person having by law authority to receive evidence, or before any officer empowered by such court or person as aforesaid to administer oaths or to take affidavits;
(b) In any country or place outside India, – before a diplomatic or consular office, within the meaning of the Diplomatic and Consular Officers (Oaths and Fees) Act, 1948 (41 of 1948) in such country of place or before a notary of the country or place, recognized by the Central Government under section 14 of the Notaries Act, 1952 (53 of 1952), or before a judge or magistrate of the country of place.
(4) The person before whom an affidavit is sworn shall state the date on which and the place where the same is sworn to and shall affix thereto his seal, if any, or the seal of the court if the affidavit is sworn to before the court or an officer empowered by that court and signed his name and state his designation and address at the end thereof.
(5) Any affidavit purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorized under sub-rule (3), in testimony of the affidavit having been sworn to before him, may be admitted by the Controller without proof the genuineness of the seal or signature, or of the official position of that person.
(6) Alterations and interlineations shall, before an affidavit is sworn to or affirmed be authenticated by the initials of the person before whom the affidavit is sworn to.
(7) Where the deponent is illiterate, blind or unacquainted with the language in which the affidavit is written, a certificate by the person before whom the affidavit is sworn to, the effect that the affidavit was read, translated or explained in his presence to the deponent, and the deponent seemed perfectly to understand it and has signed the affidavit or affixed his mark in his presence, shall be attached at the end of the affidavit.
(8) Every affidavit filed before the Controller in connection with any proceeding under the Act or these rules shall be duly stamped under the provision of any law for that time being in force.
AWARD OF COST BY CONTROLLER
43. Scale of Costs. - In all proceedings before the Controller, the Controller may, save as otherwise expressly provided by the Act or these rules, award such costs as he considers reasonable, having regard to all circumstances of the case provided that the amount of costs awarded in respect of any matters set forth in the Fourth Schedule to these rules shall not exceed the amount therein specified.
MISCELLANEOUS POWERS OF CONTROLLER
44. Exercise of discretionary power of Controller, miscellaneous power of Controller. - The time within which a person entitled under section 33 of the Act, to an opportunity of being heard shall exercise his option of requiring to be heard shall be one month from the date of a notice which the Controller shall give to such person or his agent before determining the matter with reference to which such person is entitled to be heard. If within that month such person or his agent requires to be heard, the Controller shall appoint a date for the hearing and shall give ten days notice thereof:
Provided that if the giving of ten day’s notice would cause an application for the registration of design to be deemed to have been abandoned before the hearing, the Controller may curtail the period of notice.
45. Controller may require statement. - Whether an applicant or agent desires to be heard or not, the Controller may at any time require him to submit a statement in writing within a time to be notified by the Controller, or to attend before him and make explanations with respect to such matters as the Controller may require.
General Power of amendment. - Any document for the amending of which no special provision is made by the Act may be amended, and any irregularity in procedure which, in the opinion of the Controller, may be obviated without detriment to the interest of any person, may be corrected if the Controller thinks fit, and upon such terms as he may direct.
47. General Power to enlarge time. - The time prescribed by these rules for doing any act or taking any proceeding thereunder maybe enlarged by the Controller, if he thinks fit, and upon such terms as he may direct.
48. Repeal. - The Designs Rules, 1933 are hereby repealed:
Provided that any application or other matter pending under those rules on the date of the coming into force of these rules shall be disposed of under those rules.