Design registration India: post it and lose it

What a registered design protects, and what it cannot

Section 2(d) of the Designs Act, 2000 defines a design as only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article, in two dimensions or three or both, by any industrial process, which in the finished article appeal to and are judged solely by the eye. The test is the eye, not the lab.

The same clause strips out most of what founders assume they are filing for. A design does not include a mode or principle of construction, or anything in substance a mere mechanical device. It does not include a trade mark, a property mark, or an artistic work as defined in the Copyright Act, 1957. So the clever hinge on your jar is not a design, and nor is your logo. The silhouette, the printed pattern and the lines on the cap can be.

Prior publication kills novelty, and there is no grace period

Section 4 bars registration of a design that is not new or original, and separately of one disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way before the filing date or, where it applies, the priority date.

Read “or in any other way” slowly. A launch post, a live listing, a pre-order page, a trade fair stall and a factory floor reel are all disclosures. Disclosure anywhere in the world counts, including your overseas storefront and a supplier catalogue carrying your article.

The consequence is worse than refusal. Section 19 allows cancellation, section 22(3) makes every section 19 ground a defence in an infringement suit, and section 22(4) sends the suit to the High Court. A design you published before filing is not merely weaker. It is a registration you cannot safely sue on.

The two narrow escapes, and why neither covers a launch post

Section 16 covers confidential disclosure. A disclosure by the proprietor in circumstances that would make it contrary to good faith for the other person to use or publish the design is not publication. Nor is a disclosure in breach of good faith by someone other than the proprietor, nor acceptance of a first and confidential order for articles bearing a new or original textile design intended for registration. The saving holds only if registration follows, and it is about co-packers and sample rooms under confidence, not marketing.

Section 21 covers exhibitions, with three conditions. The Central Government must have extended section 21 to that exhibition by notification in the Official Gazette. The exhibitor must give the Controller previous notice in the prescribed form. The application must be filed within six months of first exhibiting the design.

So the Act gives no general grace period for prior publication, only a confidentiality saving and a conditional, pre-notified exhibition saving. A social post is covered by neither.

Term, class and what the registration lets you stop

Section 11(1) gives the registered proprietor copyright in the design for ten years from the date of registration. Section 11(2) allows a second period of five years where you apply to the Controller before the first ten years expire and pay the fee. Fifteen years is the ceiling, and you apply for the extension.

Section 5(3) says a design may be registered in not more than one class, with the Controller deciding in case of doubt. Articles are classified under rule 10 of the Designs Rules, 2001, and since the amendment in force from 25 January 2021 the Designs Office works to the Locarno Classification published by WIPO. The class is not trivia, because section 22(1) makes it unlawful, while copyright subsists, to apply the design or any fraudulent or obvious imitation of it, for the purpose of sale, to any article in any class of articles in which the design is registered. It also catches importing such an article for sale, and publishing or exposing it for sale knowing the design was applied without consent. File on the bottle and a copied bottle is caught; a copy sold in another class is harder.

What section 22 pays, and what it misses

Section 22(2) gives the proprietor a choice. Under clause (a) the infringer pays a sum not exceeding twenty-five thousand rupees for every contravention, recoverable as a contract debt, and a proviso caps the total recoverable for any one design under that clause at fifty thousand rupees. Under clause (b) the proprietor instead sues for damages and an injunction, with no statutory ceiling. The much-quoted cap applies to that contract debt route, not to damages. A second proviso bars any suit under the sub-section in a court below the court of District Judge.

What it misses matters as much. It bites only while copyright subsists, only inside the registered class, only against the design or a fraudulent or obvious imitation, and only on those acts. The remedies are civil; the Act carries no offence and no imprisonment for design piracy, unlike section 63 of the Copyright Act, 1957. And because section 2(d) excludes the mode or principle of construction, a competitor who reaches the same function with a different look sits outside the right.

A bottle, a fabric print and a logo are three instruments

A registered design covers appearance, for fifteen years at most, judged by the eye. A trade mark covers origin, renewably, and section 2(1)(zb) of the Trade Marks Act, 1999 lets a trade mark include the shape of goods and their packaging, so a distinctive bottle can be both a registered design and a shape mark. That is overlap, not contradiction, and trademark and Brand Registry basics belong in their own file. Copyright runs far longer, but section 15 of the Copyright Act, 1957 polices the border: copyright does not subsist in a registered design, and copyright in a registrable but unregistered design ceases once articles bearing it have been reproduced more than fifty times by an industrial process by or under licence from the owner. A fabric print you never registered and have now run across five thousand metres is a design you have lost twice.

Packaging design can run in parallel, but the order matters: file the design, then shoot it, then post it. The registration is also what makes a counterfeit takedown evidence pack worth building.