Published in
the Gazette of India
(Extraordinary Part II-Section I)
dated May 12,
2000
THE DESIGNS
ACT, 2000
No. 16 of 2000
[25thMay,
2000]
An
Act to consolidate and amend the law relating to protection of designs.
BE
it enacted by Parliament in the Fifty first Year of the Republic of India as
follows:-
CHAPTER I
PRELIMINARY
Short
Title, Extent and Commencement
1.-(1) This Act may be called the Designs
Act, 2000.
(2) It extends to the whole of India.
(3) It shall come into force on such date as the
Central Government may, by notification in the Official Gazette, appoint; and
different dates may be appointed for different provisions of this Act, and any
reference in any such provision to the commencement of this Act shall be
construed as a reference to the coming into force of that provision.
Definitions
2. In this Act, unless there is anything
repugnant in the subject or context.
(a) "article"
means any article of manufacture and any substance, artificial, or partly
artificial and partly natural; and includes any part of an article capable of
being made and sold separately;
(b) "Controller" means The
Controller-General of Patents, Designs and Trade Marks referred to in section
3;
(c) "copyright"
means the exclusive right to apply a design to any article in any class in
which the design is registered;
(d) "design" means only the
features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional
or three dimensional or in both forms, by any industrial process or means,
whether manual, mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye; but does not
include any mode or principle of construction or anything which is in substance
a mere mechanical device, and does not include any trade mark as defined in
clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks
Act, 1958 or property mark as defined in section 479 of the Indian Penal Code
or any artistic work as defined in clause (c) of section 2 of the
Copyright Act, 1957.
[43 of 1958, 45 of 1860, 14 of 1957]
(e) "High Court" shall have the
same meaning as assigned to it in clause (i) of
section 2 of the Patents Act, 1970;
[39 of 1970]
(f) "legal
representative" means a person who in law represents the estate of a
deceased person;
(g) "original",
in relation to a design, means originating from the author of such design and
includes the cases which though old in themselves yet are new in their
application;
(h) "Patent Office" means the
patent office referred to in section 74 of the Patents Act, 1970.
[39 of 1970]
(i) "prescribed" means prescribed by rules made under this
Act;
(j) "proprietor
of a new or original design",-
(i) where
the author of the design, for good consideration, executes the work for some
other person, means the person for whom the design is so executed;
(ii) where any person
acquires the design or the right to apply the design to any article, either
exclusively of any other person or otherwise, means, in the respect and to the
extent in and to which the design or right has been so acquired, the person by
whom the design or right is so acquired; and
(iii) in any other case,
means the author of the design; and where the property in or the right to
apply, the design has devolved from the original proprietor upon any other
person, includes that other person.
CHAPTER II
REGISTRATION OF DESIGNS
Controller
and Other Officers
3.-(1) The Controller General of Patents,
Designs and Trade Marks appointed under sub-section (1) of section 4 of the
Trade and Merchandise Marks Act, 1958 shall be the Controller of Designs for
the purposes of this Act.
[43 of 1958]
(2) For the purposes of this Act, the Central
Government may appoint as many examiners and other officers and with such
designations, as it thinks fit.
(3) Subject to the provisions of this Act, the
officers appointed under sub-section (2) shall discharge under the
superintendence and directions of the Controller such functions of the
Controller under this Act as he may, from time to time, by general or special
order in writing, authorise them to discharge.
(4) Without prejudice to the generality of the
provisions of sub-section (3), the Controller may by order in writing and for
reasons to be recorded therein, withdraw any matter pending before an officer
appointed under sub-section (2) and deal with such matter himself either de
novo or from the stage it was so withdrawn or transfer the same to another
officer appointed under sub-section (2) who may, subject to special directions
in the order of transfer, proceed with the matter either de novo or from
the stage it was so transferred.
Prohibition
of Registration of Certain Designs
4. A design which-
(a) is not new or
original; or
(b) has been
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 prior to the filing
date, or where applicable, the priority date of the application for
registration; or
(c) is not
significantly distinguishable from known designs or combination of known designs;
or
(d) comprises or
contains scandalous or obscene matter,
shall not be registered.
Application
for Registration of Designs
5.-(1) 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 registration country and which is not
contrary to public order or morality, register the design under this Act:
Provided that the Controller shall before such
registration refer the application for examination, by an examiner appointed
under sub-section (2) of section 3, as to whether such design is capable of
being registered under this Act and the rules made thereunder
and consider the report of the examiner on such reference.
(2) Every application under sub-section (1) shall
be in the prescribed form and shall be filed in the patent office in the
prescribed manner and shall be accompanied by the prescribed fee.
(3) A design may be registered in not more than
one class, and, in case of doubt as to the class in which a design ought to be registered, the Controller may decide the question.
(4) The Controller may, if he thinks fit, refuse
to register any design presented to him for registration; but any person,
aggrieved by any such refusal may appeal to the High Court.
(5) An application which, owing to any default or
neglect on the part of the applicant, has not been completed so as to enable
registration to be effected within the prescribed time shall be deemed to be
abandoned.
(6) A design when registered shall be registered
as of the date of the application for registration.
Registration
to be in Respect of Particular Article
6.-(1) A design
may be registered in respect of any or all of the articles comprised in a
prescribed class of articles.
(2) Any question arising as to the class within
which any article falls shall be determined by the Controller whose decision in
the matter shall be final.
(3) Where a design has been registered in respect
of any article comprised in a class of article, the application of the
proprietor of the design to register it in respect of some one or more other
articles comprised in that class of articles shall not be refused, nor shall
the registration thereof invalidated-
(a) on the ground of the design not being
a new or original design, by reason only that it was so previously registered;
or
(b) on the ground of the design having
been previously published in India or in any other country, by reason only that
it has been applied to article in respect of which it was previously
registered:
Provided that such subsequent
registration shall not extend the period of copyright in the design beyond that
arising from previous registration.
(4) Where any person makes an application for the
registration of a design in respect of any article and either-
(a) that design
has been previously registered by another person in respect of some other
article; or
(b) the design to
which the application relates consists of a design previously registered by
another person in respect of the same or some other article with modifications
or variations not sufficient to alter the character or substantially to affect
the identity thereof,
then, if at any time while the application is
pending the applicant becomes the registered proprietor of the design
previously registered, the foregoing provisions of this section shall apply as
if at the time of making the application, the applicant, had been the
registered proprietor of that design.
Publication
Particulars of Registered Designs
7. 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 such manner as may be prescribed
and thereafter the design shall be open to public inspection.
Power of
Controller to Make Orders Regarding Substitution of Application, etc
8.-(1) If the Controller is satisfied on a
claim made in the prescribed manner at any time before a design has been
registered that by virtue of any assignment or agreement in writing made by the
applicant or one of the applicants for registration of the design or by
operation of law, the claimant would, if the design were then registered, be
entitled thereto or to the interest of the applicant therein, or to an
undivided share of the design or of that interest, the Controller may, subject
to the provisions of this section, direct that the application shall proceed in
the name of the claimant or in the names of the claimants and the applicant or
the other joint applicant or applicants, accordingly, as the case may require.
(2) No such direction as aforesaid shall be given
by virtue of any assignment or agreement made by one of two or more joint
applicants for registration of a design except with the consent of the other
joint applicant or applicants.
(3) No such direction as aforesaid shall be given
by virtue of any assignment or agreement for the assignment of the benefit of a
design unless-
(a) the design is
identified therein by reference to the number of the application for the
registration; or
(b) there is produced to the Controller an
acknowledgement by the person by whom the assignment or agreement was made that
the assignment or agreement relates to the design in respect of which that
application is made; or
(c) the rights of
the claimant in respect of the design have been finally established by the
decision of a court; or
(d) the
Controller gives directions for enabling the application to proceed or for
regulating the manner in which it should be proceeded with under sub-section
(5).
(4) Where one of two or more joint applicants for
registration of a design dies at any time before the design has been
registered, the Controller may, upon a request in that behalf made by the
survivor or survivors, and with the consent of the legal representative of the
deceased, direct that the application shall proceed in the name of the survivor
or survivors alone.
(5) If any dispute arises between joint
applicants for registration of a design whether or in what manner the
application should be proceeded with, the Controller may, upon application made
to him in the prescribed manner by any of the parties, and after giving to all
parties concerned an opportunity to be heard, give such directions as he thinks
fit for enabling the application to proceed in the name of one or more of the
parties alone or for regulating the manner in which it should be proceeded
with, or for both those purposes, as the case may require.
Certificate
of Registration
9.-(1) The Controller shall grant a
certificate of registration to the proprietor of the design when registered.
(2) The Controller may, in case of loss of the
original certificate, or in any other case in which he
deems it expedient, furnish one or more copies of the certificate.
Register
of Designs
10.-(1) There shall be kept at the patent
office a book called the register of designs, wherein shall be entered the
names and addresses of proprietors of registered designs, notifications of
assignments and of transmissions of registered designs, and such other matter
as may be prescribed and such register may be maintained wholly or partly on
computer floppies or diskettes, subject to such safeguards as may be
prescribed.
(2) Where the register is maintained wholly or
partly on computer floppies or diskettes under sub-section (1), any reference
in this Act to any entry in the register shall be construed as the reference to
the entry so maintained on computer floppies or diskettes.
(3) The register of designs existing at the
commencement of this Act shall be incorporated with and form part of the
register of designs under this Act.
(4) The register of designs shall be prima facie
evidence of any matter by this Act directed or authorized to be entered
therein.
CHAPTER III
COPYRIGHT IN REGISTERED DESIGNS
Copyright
on Registration
11.-(1) When a
design is registered, the registered proprietor of the design shall, subject to
the provisions of this Act, have copyright in the design during ten years from the date of registration.
(2) If, before the expiration of the said ten
years, application for the extension of the period of copyright is made to the
Controller in the prescribed manner, the Controller shall, on payment of the
prescribed fee, extend the period of copyright for a second period of five
years from the expiration of the original period of ten years.
Restoration
of Lapsed Designs
12.-(1) Where a design has ceased to have
effect by reason of failure to pay the fee for the extension of copyright under
sub-section (2) of section 11, the proprietor of such design or his legal
representative and where the design was held by two or more persons jointly,
then, with the leave of the Controller one or more of them without joining the
others, may, within one year from the date on which the design ceased to have
effect, make an application for the restoration of the design in the prescribed
manner on payment of such fee as may be prescribed.
(2) An application under this section shall
contain a statement, verified in the prescribed manner, fully setting out the
circumstances which led to the failure to pay the prescribed fee, and the
Controller may require from the applicant such further evidence as he may think
necessary.
Procedure
for Disposal of Applications for Restoration of Lapsed Designs
13.-(1) If, after hearing the applicant in
cases where the applicant so desires or the Controller thinks fit, the
Controller is satisfied that the failure to pay the fee for extension of the
period of copyright was unintentional and that there has been no undue delay in
the making of the application, the Controller shall upon payment of any unpaid
fee for extension of the period of copyright together with prescribed
additional fee restore the registration of design.
(2) The Controller may, if he thinks fit as a
condition of restoring the design, require that any entry shall be made in the
register of any document or matter which under the provisions of this Act, has
to be entered in the register but which has not been so entered.
Rights of
Proprietor of Lapsed Design which have been Restored
14.-(1) Where the registration of a design
is restored, the rights of the registered proprietor shall be subject to such
provisions as may be prescribed and to such other provisions as the Controller
thinks fit to impose for the protection or compensation of persons who may have
begun to avail themselves of, or have taken definite steps by contract or
otherwise to avail themselves of, the benefit of applying the design between
the date when the registration of the design ceased to have effect and the date
of restoration of the registration of the design.
(2) No suit or other proceeding shall be
commenced in respect of piracy of a registered design or infringement of the
copyright in such design committed between the date on which the registration
of the design ceased to have effect and the date of the restoration of the
design.
Requirements
Before Delivery on Sales
15.-(1) Before
delivery on sale of any articles to which a registered design has been applied,
the proprietor shall-
(a) (if exact representations or specimens
were not furnished on the application for registration) furnish to the
Controller the prescribed number of exact representations or specimens of the
design; and, if he fails to do so, the Controller may, after giving notice
thereof to the proprietor, erase his name from the register and thereupon the
copyright in the design shall cease; and
(b) cause each such article to be marked
with the prescribed mark, or with the prescribed words or figures denoting that
the design is registered; and, if he fails to do so, the proprietor shall not
be entitled to recover any penalty or damages in respect of any infringement of
his copyright in the design unless he shows that he took all proper steps to
ensure the marking of the article, or unless he shows that the infringement
took place after the person guilty thereof knew or had received notice of the
existence of the copyright in the design.
(2) Where a representation is made to the Central
Government by or on behalf of any trade or industry that in the interest of the
trade or industry it is expedient to dispense with or modify as regards any
class or description of articles any of the requirements of this section as to
marking, the Central Government may, if it thinks fit, by rule under this Act,
dispense with or modify such requirements as regards any such class or
description of articles to such extent and subject to such conditions as it
thinks fit.
Effect of
Disclosure on Copyright
16. The disclosure of a design by the
proprietor to any other person, in such circumstances as would make it contrary
to good faith for that other person to use or publish the design, and the
disclosure of a design in breach of good faith by any person, other than the
proprietor of the design, and the acceptance of a first and confidential order
for articles bearing a new or original textile design intended for
registration, shall not be deemed to be a publication of the design sufficient
to invalidate the copyright thereof if registration thereof is obtained
subsequently to the disclosure or acceptance.
Inspection
of Registered Designs
17.-(1) During
the existence of copyright in a design, any person on furnishing such
information as may enable the Controller to identify the design and on payment
of the prescribed fee may inspect the design in the prescribed manner.
(2) Any person may, on an application to the
Controller and on payment of such fee as may be prescribed, obtain a certified
copy of any registered design.
Information
as to Existence of Copyright
18. On the request of any person
furnishing such information as may enable the Controller to identify the
design, and on payment of the prescribed fee, the Controller shall inform such
person whether the registration still exists in respect of the design, and, if
so, in respect of what classes of articles, and shall state the date of
registration, and the name and address of the registered proprietor.
Cancellation
of Registration
19.-(1) Any
person interested may present a petition for the cancellation of the
registration of a design at any time after the registration of the design, to
the Controller on any of the following grounds, namely:-
(a) that the
design has been previously registered in India; or
(b) that it has
been published in India or in any other country prior to the date of
registration; or
(c) that the
design is not a new or original design; or
(d) that the
design is not registrable under this Act; or
(e) that it is
not a design as defined under clause (d) of section 2.
(2) An appeal shall lie from any order of the
Controller under this section to the High Court, and the Controller may at any
time refer any such petition to the High Court, and the High Court shall decide
any petition so referred.
Designs
to Bind Government
20. A registered design shall have to all
intents the like effect as against the Government as it has against any person
and the provisions of Chapter XVII of the Patents Act, 1970 shall apply to
registered designs as they apply to patents.
[39 of 1970]
CHAPTER III
COPYRIGHT IN REGISTERED DESIGNS
Copyright
on Registration
11.-(1) When a
design is registered, the registered proprietor of the design shall, subject to
the provisions of this Act, have copyright in the design during ten years from the date of registration.
(2) If, before the expiration of the said ten
years, application for the extension of the period of copyright is made to the
Controller in the prescribed manner, the Controller shall, on payment of the
prescribed fee, extend the period of copyright for a second period of five
years from the expiration of the original period of ten years.
Restoration
of Lapsed Designs
12.-(1) Where a design has ceased to have
effect by reason of failure to pay the fee for the extension of copyright under
sub-section (2) of section 11, the proprietor of such design or his legal
representative and where the design was held by two or more persons jointly,
then, with the leave of the Controller one or more of them without joining the
others, may, within one year from the date on which the design ceased to have
effect, make an application for the restoration of the design in the prescribed
manner on payment of such fee as may be prescribed.
(2) An application under this section shall
contain a statement, verified in the prescribed manner, fully setting out the
circumstances which led to the failure to pay the prescribed fee, and the
Controller may require from the applicant such further evidence as he may think
necessary.
Procedure
for Disposal of Applications for Restoration of Lapsed Designs
13.-(1) If, after hearing the applicant in
cases where the applicant so desires or the Controller thinks fit, the
Controller is satisfied that the failure to pay the fee for extension of the
period of copyright was unintentional and that there has been no undue delay in
the making of the application, the Controller shall upon payment of any unpaid
fee for extension of the period of copyright together with prescribed
additional fee restore the registration of design.
(2) The Controller may, if he thinks fit as a
condition of restoring the design, require that any entry shall be made in the
register of any document or matter which under the provisions of this Act, has
to be entered in the register but which has not been so entered.
Rights of
Proprietor of Lapsed Design which have been Restored
14.-(1) Where the registration of a design
is restored, the rights of the registered proprietor shall be subject to such
provisions as may be prescribed and to such other provisions as the Controller
thinks fit to impose for the protection or compensation of persons who may have
begun to avail themselves of, or have taken definite steps by contract or
otherwise to avail themselves of, the benefit of applying the design between
the date when the registration of the design ceased to have effect and the date
of restoration of the registration of the design.
(2) No suit or other proceeding shall be
commenced in respect of piracy of a registered design or infringement of the
copyright in such design committed between the date on which the registration
of the design ceased to have effect and the date of the restoration of the
design.
Requirements
Before Delivery on Sales
15.-(1) Before
delivery on sale of any articles to which a registered design has been applied,
the proprietor shall-
(a) (if exact representations or specimens
were not furnished on the application for registration) furnish to the
Controller the prescribed number of exact representations or specimens of the
design; and, if he fails to do so, the Controller may, after giving notice
thereof to the proprietor, erase his name from the register and thereupon the
copyright in the design shall cease; and
(b) cause each such article to be marked
with the prescribed mark, or with the prescribed words or figures denoting that
the design is registered; and, if he fails to do so, the proprietor shall not
be entitled to recover any penalty or damages in respect of any infringement of
his copyright in the design unless he shows that he took all proper steps to
ensure the marking of the article, or unless he shows that the infringement
took place after the person guilty thereof knew or had received notice of the
existence of the copyright in the design.
(2) Where a representation is made to the Central
Government by or on behalf of any trade or industry that in the interest of the
trade or industry it is expedient to dispense with or modify as regards any
class or description of articles any of the requirements of this section as to
marking, the Central Government may, if it thinks fit, by rule under this Act,
dispense with or modify such requirements as regards any such class or
description of articles to such extent and subject to such conditions as it
thinks fit.
Effect of
Disclosure on Copyright
16. The disclosure of a design by the
proprietor to any other person, in such circumstances as would make it contrary
to good faith for that other person to use or publish the design, and the
disclosure of a design in breach of good faith by any person, other than the
proprietor of the design, and the acceptance of a first and confidential order
for articles bearing a new or original textile design intended for
registration, shall not be deemed to be a publication of the design sufficient
to invalidate the copyright thereof if registration thereof is obtained
subsequently to the disclosure or acceptance.
Inspection
of Registered Designs
17.-(1) During
the existence of copyright in a design, any person on furnishing such
information as may enable the Controller to identify the design and on payment
of the prescribed fee may inspect the design in the prescribed manner.
(2) Any person may, on an application to the
Controller and on payment of such fee as may be prescribed, obtain a certified
copy of any registered design.
Information
as to Existence of Copyright
18. On the request of any person
furnishing such information as may enable the Controller to identify the
design, and on payment of the prescribed fee, the Controller shall inform such
person whether the registration still exists in respect of the design, and, if
so, in respect of what classes of articles, and shall state the date of
registration, and the name and address of the registered proprietor.
Cancellation
of Registration
19.-(1) Any
person interested may present a petition for the cancellation of the
registration of a design at any time after the registration of the design, to
the Controller on any of the following grounds, namely:-
(a) that the
design has been previously registered in India; or
(b) that it has
been published in India or in any other country prior to the date of
registration; or
(c) that the
design is not a new or original design; or
(d) that the
design is not registrable under this Act; or
(e) that it is
not a design as defined under clause (d) of section 2.
(2) An appeal shall lie from any order of the
Controller under this section to the High Court, and the Controller may at any
time refer any such petition to the High Court, and the High Court shall decide
any petition so referred.
Designs
to Bind Government
20. A registered design shall have to all
intents the like effect as against the Government as it has against any person
and the provisions of Chapter XVII of the Patents Act, 1970 shall apply to
registered designs as they apply to patents.
[39 of 1970]
CHAPTER IV
INDUSTRIAL AND INTERNATIONAL EXHIBITIONS
Provisions
as to Exhibitions
21. The exhibition of a design, or of any
article to which a design is applied, at an industrial or other exhibition to
which the provisions of this section have been extended by the Central
Government by notification in the Official Gazette, or the publication of a
description of the design, during or after the period of the holding of the
exhibition, or the exhibition of the design or the article or the publication
of a description of the design by any person else-where during or after the
period of the holding of the exhibition, without the privity
or consent of the proprietor, shall not prevent the design from being
registered or invalidate the registration thereof:
Provided that-
(a) the exhibitor
exhibiting the design or article, or publishing a description of the design,
gives to the Controller previous notice in the prescribed form; and
(b) the application for
registration is made within six months from the date of first exhibiting the
design or article or publishing a description of the design.
CHAPTER V
LEGAL PROCEEDINGS
Piracy of
Registered Design
22.-(I) During
the existence of copyright in any design it shall not be lawful for any person-
(a) for the purpose of sale to apply or
cause to be applied to any article in any class of articles in which the design
is registered, the design or any fraudulent or obvious imitation thereof,
except with the licence or written consent of the
registered proprietor, or to do anything with a view to enable the design to be
so applied; or
(b) to import for the purposes of sale,
without the consent of the registered proprietor, any article belonging to the
class in which the design has been registered, and having applied to it the
design or any fraudulent or obvious imitation thereof, or
(c) knowing that
the design or any fraudulent or obvious imitation thereof has been applied to
any article in any class of articles in which the design is registered without
the consent of the registered proprietor, to publish or expose or cause to be
published or exposed for sale that article.
2.-(1) If any person
acts in contravention of this section, he shall be liable for every
contravention-
(a) to pay to the registered proprietor of
the design a sum not exceeding twenty-five thousand rupees recoverable as a
contract debt, or
(b) if the proprietor elects to bring a
suit for the recovery of damages for any such contravention, and for an
injunction against the repetition thereof, to pay such damages as may be
awarded and to be restrained by injunction accordingly:
Provided that the total sum
recoverable in respect of any one design under clause (a) shall
not exceed fifty thousand rupees:
Provided further that no suit
or any other proceeding for relief under this sub-section shall be instituted
in any court below the court of District Judge.
(3) In any suit or any other proceeding for
relief under sub-section (2), every ground on which the registration of a
design may be cancelled under section 19 shall be available as a ground of defence.
(4) Notwithstanding anything contained in the second
proviso to sub-section (2), where any ground on which the registration of a
design may be cancelled under section 19 has been availed of as a ground of defence and sub-section (3) in any suit or other proceeding
for relief under sub-section (2), the suit or such other proceeding shall be
transferred by the court in which the suit or such other proceeding is pending,
to the High Court for decision.
(5) When the court makes a decree in a suit under
sub-section (2), it shall send a copy of the decree to the Controller, who
shall cause an entry thereof to be made in the register of designs.
Application
of Certain Provisions of the Act as to Patents to Designs
23. The provisions of the Patents Act,
1970 with regard to certificates of the validity of a patent, and to the remedy
in case of groundless threats of legal proceedings by a patentee shall apply in
the case of registered designs in like manner as they apply in the case of
patents, with the substitution of references to the copyright in a design for reference
to a patent, and of references to the proprietor of a design for references to
the patentee, and of references to the design for references to the invention.
[39 of 1970]
CHAPTER VI
GENERAL
Fees
Fees
24.-(1) There
shall be paid in respect of the registration of designs and applications therefor and in respect of other matters relating to
designs under this Act such fees may be prescribed.
(2) A proceeding in respect of which a fee is
payable under this Act or the rules made thereunder
shall be of no effect unless the fee has been paid.
Provisions
as to Registers and Other Documents in the Patent Office
Notice of
Trust not to be Entered in Registers
25. There shall not be entered in any
register kept under this Act, or be receivable by the Controller, any notice of
any trust expressed, implied or constructive.
Inspection
of and Extracts from Registers
26. Every register kept under this Act
shall at all convenient times be open to the inspection of the public, subject to
the provisions of this Act; and certified copies, sealed with the seal of the
patent office, of any entry in any such register shall be given to any person
requiring the same on payment of the prescribed fee:
Provided that where such register is maintained
wholly or partly on computer, the inspection of such register under this
section shall be made by inspecting the computer print out of the relevant
entry in the register so maintained on computer.
Privilege
of Reports of Controller
27. Reports of or to the Controller made
under this Act other than the report referred to in section 45 shall not in any
case be published or be open to public inspection.
Prohibition
and Publication of Specification, Drawings, etc
where Application Abandoned, etc
28. Where an application for a design has
been abandoned or refused, the application and any drawings, photographs,
tracings, representations or specimens left in connection with the application
shall not at any time be open to public inspection or be published by the
Controller.
Power of
Controller to Correct Clerical Errors
29. The Controller may, on request in
writing accompanied by the prescribed fee, correct any clerical error in the
representation of a design or in the name or address of the proprietor of any
design, or in any other matter, which is entered upon the register of designs.
Entry of
Assignment and Transmissions in Registers
30.-(1) Where a person becomes entitled by
assignments, transmission or other operation of law to the copyright in a
registered design, he may make an application in the prescribed form to the
Controller to register his title, and the Controller shall, on receipt of such
application and on proof of title to his satisfaction, register him as the
proprietor of such design, and shall cause an entry to be made in the
prescribed manner in the register of the assignment, transmission or other
instrument affecting the title.
(2) Where any person becomes entitled as
mortgagee, licensee or otherwise to any interest in a registered design, he may
make an application in the prescribed form to the Controller to register his
title, and the Controller shall, on receipt of such application and on proof of
title to his satisfaction, cause notice of the interest to be entered in the
prescribed manner in the register of designs, with particulars of the
instrument, if any, creating such interest.
(3) For the purposes of sub-section (1) or
sub-section (2), an assignment of a design or of a share in a design, a
mortgage, licence or the creation of any other
interest in a design shall not be valid unless the same were in writing and the
agreement between the parties concerned is reduced to the form of an instrument
embodying all the terms and conditions governing their rights and obligation
and the application for registration of title under such instrument is filed in
the prescribed manner with the Controller within six months from the execution
of the instrument or within such further period not exceeding six months in the
aggregate as the Controller on the application made in the prescribed manner
allows:
Provided that the instrument shall, on entry of
its particulars in the register under sub-section (1) or sub-section (2), have
the effect from the date of its execution.
(4) The person registered as the proprietor of a
design shall, subject to the provisions of this Act and to any rights appearing
from the register to be vested in any other person, have power absolutely to
assign, grant licences as to, or otherwise deal with,
the design and to give effectual receipts for any consideration for any such
assignment, licence or dealing:
Provided that any equities in respect of the
design may be enforced in like manner as in respect of any other moveable
property.
(5) Except in the case of an application made under
section 31, a document or instrument in respect of which no entry has been made
in the register in accordance with the provisions of sub-sections (1) and (2)
shall not be admitted in evidence in any court in proof of the title to
copyright in a design or to any interest therein, unless the court, for reasons
to be recorded in writing, otherwise directs.
Rectification
of Register
31.-(1) The Controller may, on the
application in the prescribed manner of any person aggrieved by the
non-insertion in or omission from the register of designs of any entry, or by
any entry made in such register without sufficient cause, or by any entry
wrongly remaining on such register, or by an error or defect in any entry in
such register, make such order for making, expunging or varying such entry as
he thinks fit and rectify the register accordingly.
(2) The Controller may, in any proceeding under
this section decide any question that may be necessary or expedient to decide
in connection with the rectification of a register.
(3) An appeal shall lie to the High Court from
any order of the Controller under this section and the Controller may refer any
application under this section to the High Court for decision, and the High
Court shall dispose of any application so referred.
(4) Any order of the Court rectifying a register
shall direct that notice of the rectification be served on the Controller in
the prescribed manner who shall upon the receipt of
such notice rectify the register accordingly.
(5) Nothing in this section, shall
be deemed to empower the Controller to make any such order cancelling the
registration of a design as is provided for in section 19.
CHAPTER VII
POWERS AND DUTIES OF CONTROLLER
Power of
Controller in Proceedings under Act
32. Subject to any rules made in this
behalf, the Controller in any proceedings before him under this Act shall have
the powers of a civil court for the purpose receiving evidence, administering
oaths, enforcing the attendance of witnesses, compelling the discovery and production
of documents, issuing commissions for the examining of witnesses and awarding
costs and such award shall be executable in any court having jurisdiction as if
it were a decree of that court.
Exercise
of Discretionary Power by Controller
33. Where any discretionary power is by or
under this Act given to Controller, he shall not exercise that power adversely
to the applicant for registration of a design without (if so required within
the prescribed time by the applicant) giving the applicant an opportunity of
being heard.
Power of
Controller to Take Directions of the Central Government
34. The Controller may, in any case of
doubt or difficulty arising in the administration of any of the provisions of
this Act, apply to the Central Government for directions in the matter.
Refusal
to Register a Design in Certain Cases
35.-(1) The Controller may refuse to
register a design of which the use would, in his opinion, be contrary to public
order or morality.
(2) An appeal shall lie to the High Court from an
order of the Controller under this section.
Appeals
to the High Court
36.-(1) Where an
appeal is declared by this Act to lie from the Controller to the High Court,
the appeal shall be made within three months of the date of the order passed by
the Controller.
(2) In calculating the said
period of three months, the time (if any) occupied in granting a copy of the
order appealed against shall be excluded.
(3) The High Court may, if it thinks fit, obtain
the assistance of an expert in deciding such appeals, and the decision of the
High Court shall be final.
(4) The High Court my make rules consistent with
this Act as to the conduct and procedure of all proceedings under this Act
before it.
CHAPTER VIII
EVIDENCE, ETC.
Evidence Before the Controller
37. Subject to any rules made under
section 44, in any proceeding under this Act before the Controller, the
evidence shall be given by affidavit in the absence of directions by the
Controller to the contrary; but in any case in which Controller thinks it right
so to do he may take evidence viva voce in lieu of or in addition to evidence
by affidavit or may allow any party to be cross examined on the contents of his
affidavit.
Certificate
of Controller to be Evidence
38. A certificate purporting to be under
the hand of the Controller as to any entry, matter or thing which he is authorised by this Act, or any rules made thereunder to make or do, shall be prima-facie evidence of
the entry having been made, and of the contents thereof, and of the matter or
thing having been done or left undone.
Evidence
of Documents in Patent Office
39. Printed or written copies or extracts,
purporting to be certified by Controller and sealed with the seal of the patent
office, of documents in the patent office, and of or from registers and other
books kept there, shall be admitted in evidence in all courts in India, and in
all proceedings, without further proof or production of the originals:
Provided that a court may, if it has reason to
doubt the accuracy or authenticity of the copies tendered in evidence, require
the production of the originals or such further proof as it considers
necessary.
Applications
and Notices by Post
40. Any application, notice or other
document authorized or required to be left, made or given at the patent office
or to the Controller, or to any other person under this Act, may be sent by
post.
Declaration
by Infant Lunatic, etc
41.-(1) If any person, is by reason of
infancy, lunacy or other disability, incapable of making any statement or doing
anything required or permitted by or under this Act, the lawful guardian,
committee or manager (if any) of the person subject to the disability, or, if
there be none, any person appointed by any court possessing jurisdiction in
respect of his property, may make such statement or a statement as nearly
corresponding thereto as circumstances permit, and do such thing in the name
and on behalf of the person subject to the disability.
(2) An appointment may be made by the court for
the purposes of this section upon the petition of any person acting on behalf
of the person subject to the disability or of any other person interested in
the making of the statement or the doing of the thing.
Avoidance
of Certain Restrictive Conditions
42.-(1) It shall
not be lawful to insert-
(i) in
any contract for or in relation to the sale or lease of an article in respect
of which a design is registered; or
(ii) in a licence to manufacture or use an article in respect of
which a design is registered; or
(iii) in a licence to package the article in respect of which a design
is registered,
condition the effect of which may be-
(a) to require the purchaser, lessee, or
licensee to acquire from the vendor, lessor, or
licensor or his nominees, or to prohibit him from acquiring or to restrict in
any manner or to any extent his right to acquire from any person or to prohibit
him from acquiring except from the vendor, lessor, or
licensor or his nominees any article other than the article in respect of which
a design is registered; or
(b) to prohibit the purchaser, lessee or
licensee from using or to restrict in any manner or to any extent the right of
the purchaser, lessee or licensee, to use an article other than the article in
respect of which a design is registered which is not supplied by the vendor, lessor or licensor or his nominee,
and any such condition shall be void.
(2) A condition of the nature referred to in
clause (a) or clause (b) of sub-section (1) shall not cease to be
a condition failing within that sub-section merely by reason of the fact that
the agreement containing it has been entered into separately, whether before or
after the contract relating to the sale, lease or licence
of the article in respect of which a design is registered.
(3) In proceeding against any person for any act
in contravention of section 22, it shall be a defence
to prove that at the time of such contravention there was in force a contract
relating to the registered design and containing a condition declared unlawful
by this section:
Provided that this sub-section shall not apply if
the plaintiff is not a party to the contract and proves to the satisfaction of
the court that the restrictive condition was inserted in the contract without
his knowledge and consent, express or implied.
(4) Nothing in this section shall-
(a) affect a
condition in a contract by which a person is prohibited from selling goods
other than those of particular person;
(b) validate a
contract which, but for this section, would be invalid;
(c) affect a condition in a contract for
the lease of, or licence to use, an article in
respect of which a design is registered, by which the lessor
or licensor reserves to himself or his nominee the right to supply such new
parts of the article, in respect of which a design is registered, as may be
required or to put or keep it in repair.
(5) The provisions of this section shall also
apply to contracts made before the commencement of this Act if, and in so far
as, any restrictive conditions declared unlawful by this section continue in
force after the expiration of one year from such commencement.
CHAPTER IX
AGENCY
Agency
43.-(1) All applications and
communications to the Controller under this Act may be signed by, and all
attendances upon the Controller may be made by or through a legal practitioner
or by or through an agent whose name and address had been entered in the
register of patent agents maintained under section 125 of the Patents Act,
1970.
[39 of 1970]
(2) The Controller may, if he sees fit, require-
(a) any such
agent to be resident in India;
(b) any person
not residing in India to employ an agent residing in India;
(c) the personal
signature or presence of any applicant or other person.
CHAPTER X
POWERS, ETC. OF CENTRAL GOVERNMENT
Reciprocal
Arrangement with the United Kingdom and Other Convention Countries
or Group of Countries or Inter-Governmental Organisations
44.-(1) Any person who has applied for
protection for any design in the United Kingdom or any of other convention
countries or group of countries or countries which are members of
inter-governmental organisations, or his legal representative or assignee
shall, either alone or jointly with any other person, be entitled to claim that
the registration of the said design under this Act shall be in priority to
other applicants and shall have the same date as the date of the application in
the United Kingdom or any of such other convention countries or group of
countries or countries which are members of inter-governmental organisations,
as the case may be:
Provided that-
(a) the application is made within six
months from the application for protection in the United Kingdom or any such
other convention countries or group of countries or countries which are members
of inter-governmental organisations, as the case may be; and
(b) nothing in
this section shall entitle the proprietor of the design to recover damages for
piracy of design happening prior to the actual date on which the design is
registered in India.
(2) The registration of a design shall not be
invalidated by reason only of the exhibition or use of or the publication of a
description or representation of the design in India during the period
specified in this section as that within which the application may be made;
(3) The application for registration of a design
under this section has been made in the same manner as an ordinary application
under this Act.
(4) Where it is made to appear to the Central
Government that the legislature of the United Kingdom or any such other
convention country or a country which is member of any group of countries or
inter-governmental organisation as may be notified by the Central Government in
this behalf has made satisfactory provision for the protection of designs
registered in India, the Central Government may, by notification in the
Official Gazette, direct that the provisions of this section, with such
variations or additions, if any, as may be set out in such notification, shall
apply for the protection of designs registered in the United Kingdom or that
other convention country or such country which is member of any group of
countries or inter-governmental organisation, as the case may be.
Explanation-(1) For the purposes of this
section, the expression "convention countries", "group of
countries" or "inter-governmental organisation" means,
respectively, such countries, group of countries or inter-governmental
organisation to which the Paris Convention for Protection of Industrial
Property, 1883 as revised at Stockholm in 1967 and as amended in 1979 or the
Final Act, embodying the results of the Uruguay Round of Multilateral Trade
Negotiations, provided for the establishment of World Trade Organisation
applies.
Explanation-(2) Where more than one
application for protection referred to in sub-section (1) have been made for
similar protections in the United Kingdom or one or more convention countries,
group of countries or countries which are members of inter-governmental
organisations, the period of six months referred to in clause (a) of
that sub-section, shall be reckoned from the date of which the earlier or the
earliest application, as the case may be, of such applications has been made.
Report of
the Controller to be Placed before Parliament
45. The Central Government shall cause to
be placed before both Houses of Parliament once a year a report respecting the
execution of this Act by or under the Controller.
Provision
of Security of India
46. Notwithstanding anything contained in
this Act, the Controller shall-
(a) not disclose
any information relating to the registration of a design or any application
relating to the registration of a design under this Act, which he considers
prejudicial to the interest of the security of India; and
(b) take any
action regarding the cancellation of registration of such designs registered
under this Act which the Central Government may, by notification in the
Official Gazette, specify in the interest of the security of India.
Explanation:-For the purposes of this section,
the expression "security of India" means any action necessary for the
security of Indian which relates to the application of any design registered
under this Act to any article used for war or applied directly or indirectly
for the purposes of military establishment or for the purposes of war or other
emergency in international relations.
Power of
Central Government to Make Rules
47.-(1) The Central Government may, by
notification in the Official Gazette, make rules for carrying out the
provisions of this Act.
(2) In particular, and without prejudice to the
generality of the foregoing power, such rules may provide for all or any of the
following matters, namely:-
(a) the form of application for
registration of design, the manner of filing it at the patent office and the
fee which shall accompany it, under sub-section (2) of section 5;
(b) the time
within which the registration is to be effected under sub-section (5) of
section 5;
(c) the
classification of articles for registration under sub-section (1) of section 6;
(d) the
particulars of design to be published and the manner of their publication under
section 7;
(e) the manner of
making claim under sub-section (1) of section 8;
(f) the manner of
making applications to the Controller under sub-section (5) of section 8;
(g) the
additional matters required to be entered in the register of designs and the
safeguards to be made in maintaining such register in computer floppies or
diskettes under sub-section (1) of section 10.
(h) the manner of making application and
fee to be paid for extension of the period of copyright and the fee payable
thereto, under sub-section (2) of section 11;
(i) the manner of
making application for restoration of design and the fee to be paid with it
under sub-section (1) of section 12;
(j) the manner of
verification of statement contained in an application under sub-section (2) of
section 12;
(k) the
additional fee to be paid for restoration of the registration of design under
sub-section (1) of section 13;
(l) the
provisions subject to which the right of the registered proprietor shall be
under sub-section (1) of section 14;
(m) the number of
exact representation or specimen of the design to be furnished to the
Controller under clause (a) of sub-section (1) of section 15;
(n) the mark,
words or figures with which the article is to be marked denoting that the
design is registered under clause (b) of sub-section (1) of section 15;
(o) the rules to
dispense with or modify as regards any class or description of articles and any
of the requirements of section 15 as to marking under sub-section (2) of that
section;
(p) the fee to be
paid for and the manner of inspection under sub-section (1) of section 17;
(q) the fee to be
paid to obtain a certified copy of any design under sub-section (2) of section
17;
(r) the fee on
payment of which the Controller shall inform under section 18;
(s) the form for
giving notice to the Controller under clause (a) of the proviso to
section 21;
(t) the fee to be
paid in respect of the registration of designs, and application therefor, and
in respect of other matters relating to designs under sub-section (1) of
section 24;
(u) the fee to be
paid for giving certified copy of any entry in the register under section 26;
(v) the fee to be
accompanied with requests in writing for correcting any clerical error under
section 29;
(w) the form in which an application for
registration as proprietor shall be made and the manner in which the Controller
shall cause an entry to be made in the register of the assignment, transmission
or other instrument effecting the title under sub-section (1) of section 30;
(x) the form in which an application for
title shall be made and the manner in which the Controller shall cause notice
of the interest to be entered in the register of designs with particulars of
the instrument, if any, creating such interest under sub-section (2) of section
30;
(y) the manner of filing the application
for registration and for making application for extension of time as referred
to in sub-section (3) of section 30;
(z) the manner of
making application to the Controller for rectification of register under
sub-section (1) of section 31;
(za) the manner
in which the notice of rectification shall be served on the Controller under
sub-section (4) of section 31;
(zb) the rules
regulating the proceedings before the Controller under section 32;
(zc) the time
which shall be granted to the applicants for being heard by the Controller
under section 33;
(zd) the fee to
be accompanied with an appeal under sub-section (1) of section 36;
(ze) any other
matter which is required to be, or may be, prescribed.
(3) The power to make rules under this section
shall be subject to the conditions of the rules being made after previous
publication.
(4) Every rule made under this Act shall be laid,
as soon as may be after it is made, before each House of Parliament, while it
is in session, for a total period of thirty days which may be comprised in one
session or in two or more successive sessions, and if, before the expiry of the
session immediately following the session or the successive session aforesaid,
both House agree in making any modification in the rule or both Houses agree
that the rule should not be made, the rule shall thereafter have effect only in
such modified form or be of no effect, as the case may be; so, however, that
any such modification or annulment shall be without prejudice to the validity
of anything previously done under that Act.
CHAPTER XI
REPEAL AND SAVING
Repeal
and Savings
48.-(1) The Designs Act, 1911 is hereby
repealed.
[2 of 1911]
(2) Without prejudice to the provisions contained
in the Gentral Clauses Act, 1897 with respect to
repeals, any notification, rule, order, requirement, registration, certificate,
notice, decision, determination, direction, approval, authorisation,
consent, application, request or thing made, issued, given or done under the
Designs Act, 1911, shall, in force at the commencement of this Act, continue to
be in force and have effect as if made, issued, given or done under the
corresponding provisions of this Act.
[10 of 1897; 2 of 1911]
(3) The provisions of this Act shall apply to any
applications for registration of designs pending at the commencement of this
Act and to any proceedings consequent thereon and to any registration granted
in pursuance thereof.
(4) Notwithstanding anything contained in this
Act, any proceeding pending in any court at the commencement of this Act may be
continued in that court as if this Act has not been passed.
(5) Notwithstanding anything contained in
sub-section (2), the date of expiration of the copyright in the designs
registered before the commencement of this Act shall, subject to the provisions
of this Act, be the date immediately after the period of five years for which
it was registered or the date immediately after the period of five years for
which the extension of the period of copyright for a second period from the
expiration of the original period has been made.