Design Act 2000

THE DESIGNS ACT, 2000
No. 16 of 2000
[25
th
May, 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 1
P
RELIMINARY
1. (1) This Act may be called the Design 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, 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.
Short title, extent and
Commencement
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
(e) “High Court” shall have the same meaning as assigned to it in
clause (i) of sub-section (I) of section 2 of the Patents Act, 1970;
(f) “legal representative” means a person who in law represents the estate of a
deceased person;
Definition
43 of 1958
45 of 1860
14 of 1957
39 of 1970
(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 under this Act; and
Page 2
(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
R
EGISTRATION OF DESIGNS
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.
Controller and other
officers
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 mater 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.
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.
Prohibition of
registration of certain
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 country
and which is not contrary to public order or morality, register the design under
this Act.
Application registration
of designs
Page 3
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, 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.
6. (1) A design may be registered in respect of any or all of the articles comprised
in a prescribed class of articles.
Registration on to be in
(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.
respect of
particular article.
(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
the section shall apply as if at the time of making the application the applicant had
been the registered proprietor of that design.
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
Publication of
particulars of registered
Design
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
Power of Controller to
make orders regarding
substitution of
application etc.
Page 4
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 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.
9. (1) The Controller shall grant a certificate of registration to the
proprietor of the design when registered
Certificate of
registration
(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.
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.
Register of designs
(2) Where the register is maintained wholly or partly on computer
floppies and diskettes under sub-section (1), any reference in this Act
to any entry in the register shall be construed as the reference to 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
Page 5
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
C
OPYRIGHT IN REGISTERED DESIGNS
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.
Copyright on
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 copy-right for a second period of five years
from the expiration of the original period of ten years.
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 jointing
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.
Restoration of lapsed
designs.
(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.
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.
Procedure for disposal
of applications for
restoration of lapsed
designs.
(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 provision of this Act, has to be
entered in the register but which has not been so entered.
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
Rights of proprietor of
lapsed design which
have been restored.
Page 6
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.
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 finished 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
Requirements before
delivery on sales.
(b) causes 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.
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.
Effect of disclosure on
copyright.
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.
Inspection of registered
designs
(2) Any person may, on application to the Controller and on payment
of such fee as may be prescribed, obtain a certified copy of any
registered design.
18. On the request of any person furnishing such information
Information as to
Page 7
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.
existence of copyright.
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) it is not a design as defined under clause (d) of section 2.
Cancellation of
registration.
(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.
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.
Designs to bind
Government. 30 of
1970.
CHAPTER IV
INDUSTRIAL AND INTERNATIONAL 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:
Provisions as to exhibitions.
Provided that-
(a) the exhibitor exhibiting the design or article, or publishing a
description of the design, gives to the Controller previous notice in
Page 8
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
L
EGAL PROCEEDINGS
22. (I) During the existence of copyright in any design it shall not be lawful for any
person-
Piracy of
registered
design.
(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 license 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 subsection 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), ever 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 or 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 proceedings
shall be transferred by the Court in which the suit or such other
proceeding is pending, to the High Court for decision.
Page 9
(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.
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 patentee, and of references to the design for
references to the invention.
Application of certain of the
provisions the Act as to the
patents to designs.
CHAPTER VI
G
ENERAL
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.
Fees
(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.
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.
Notice of trust not to be
entered in 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.
Inspection of and
extracts from registers.
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
Privilege of reports of
Controller
Page 10
or be open to public inspection.
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.
Prohibition and
publication of
specification, drawings,
etc where application
abandoned, etc.
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.
Power for Controller
to Correct Clerical
errors.
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 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.
Entry of assignment
and transmitions in
registers.
(2) Where any person becomes entitled as mortgage, licensee or
otherwise to any interest in a registered design, he may make
application 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 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 licenses as to, or otherwise deal with, the design and to
give effectual receipts for any consideration for any such assignment,
Page 11
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.
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.
Rectification of
Register
(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 canceling the registration of a
design as is provided for in section 19
.
CHAPTER VII
POWER AND DUTIES OF CONTROLLER
32. Subject to any rules in this behalf, the Controller in any
proceedings before him under this Act s hall have the powers of a
civil court for the purpose of receiving evidence, administering
oaths, enforcing the attendance of witnesses, compelling the
discovery and production of under 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.
Powers of Controller
in Proceedings under
Act.
33. Where any discretionary power is by or under this Act given to
Controller, he shall not exercise that power adversely to the
Exercise of the
discretionary power by
Page 12
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.
Controller.
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.
Power of Controller to
take directions of the
Central Government.
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.
Refusal to register a
design in certain cases.
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.
Appeals to the High
Court
(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
E
VIDENCE, ETC.
37. Subject to any rules made under section 44, in any proceeding under this before
the Controller, the evidence shall be given by affidavit in the absence of
directions by the Controller to the before the contrary; but in any case in which
the Controller thinks it right so to do he may to 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.
Evidence before the
Controller.
38. A certificate purporting to be under the hand of the Controller as to 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.
Certificate of Controller to
be evidence.
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 al courts in
India, and in all proceedings, Office without further proof for
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.
Evidence of
documents in patent office.
40. Any application, notice or other document authorized or
Application & notices by
Page 13
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.
post.
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.
Declaration by
infant, lunatic,
etc.
(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 person interested in the making of
the statement or the doing of the thing.
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, a 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 I 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.
Avoidance of
certain restrictive
conditions.
(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:
Page 14
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
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 has 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 either to employ an argent
residing in India;
(c) the personal signature or presence of any applicant or other
person.
CHAPTER X
POWERS ETC. OF CENTRAL GOVERNMENT
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
Receiprocal arrangement
with the United Kingdom
and other convention
countries or group of
countries of
intergovernmental
Page 15
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 of 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, design happening prior to the
actual date on which the design is registered in India.
organisations.
(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 of a design under this
section must be 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.
Page 16
45. The Central Government shall cause to be placed before both
House of Parliament once a year a report respecting the execution of
this Act by or under the Controller.
Report of the Controller to
be placed before Parliament.
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 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.
Protection of
security of India.
47. (1) The Central Government may, by notification in the Official
Gazette, make rules for carrying out the purposes of this Act.
(2) In particular, and without prejudice to the generally of the
forgoing power, such rules may provide for all or any of the
following matters, namely:-
(a) the form of application, the manner of filing it at the Patent Office
and the fee to be accompanied with 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 application to the Controller under sub-
section (5) of section 8;
(g) the additional matters required to be entered in the register of
design and safegurard to be made in maintaining such register in
computer floppies or diskettes under sub-section (1) of section 10.
Power of Central
Government to make rules
Page 17
(h) the manner of making application and fee to be paid for
extension of the period of copy right 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 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 request 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
Page 18
other instruments 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 an 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
48. (1) The Designs Act, 1911 is hereby repealed.
2 of 1911
Repeal and savings.
(2) Without prejudice to the provisions contained in the General
10 of 1897.
Page 19
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.
2 of 1911
(3) The provisions of this Act shall apply to any application for
registration of design 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 design 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.