THE DESIGNS ACT, 2000
ACT NO. 16 OF 2000
[25th 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:-
CHAP
PRELIMINARY
Chapter
Preliminary
1.
Short title, extent and commencement.
1. Short title, extent and commencement.-(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 commencem nt of this Act shall
be construed as a reference to the coming into force of that
provision.
2.
Definitions.
2. Definitions.-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 (43 of 1958) or property mark as defined
in section 479 of the Indian Penal Code (45 of 1860) or any artistic
work as defined in clause (c) of section 2 of the Copyright Act, 1957
o(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 b 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.
CHAP
REGISTRATION OF DESIGNS
Chapter II
Registration of Designs
3.
Controller and other officers.
3. Controller and other officers.-(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 (43 of 1958)
shall be the Controller of Designs for the purposes of this Act.
(2) For the purposes of this Act, the Central Government may appoint
as many examiners and other officers 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 th stage it was so
transferred.
4.
Prohibition of registration of certain designs.
4. Prohibition of registration of certain designs.-A design which-
(a) is not new or original; or
(b) has been disclosed to the public any where 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.
5.
Application for registration of designs.
5. Application for registration of designs.-(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: 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 the eunder 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.
6.
Registration to be in respect of particular article.
6. Registration to be in respect of particular article.-(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 b 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, has been the registered
proprietor of that design.
7.
Publication of particulars of registered designs.
7. Publication of particulars of registered designs.-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 thereaf er the
design shall be open to public inspection.
8.
Power of Controller to make orders regarding substitution ofapplication, etc.
8. Power of Controller to make orders regarding substitution of
application, etc.-(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 shar 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 ap licants, 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 acknowledgment 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 repr sentative 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, o for both those purposes, as the case
may require.
9.
Certificate of registration.
9. Certificate of registration.-(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.
10.
Register of designs.
10. Register of designs.-(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 regi tered
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 iskettes.
(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.
CHAP
COPYRIGHT IN REGISTERED DESIGNS
CHAPTER III
COPYRIGHT IN REGISTERED DESIGNS
11.
Copyright on registration.
11. Copyright on registration.-(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.
12.
Restoration of lapsed designs.
12. Restoration of lapsed designs.-(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 th 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 f 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.
13.
Procedure for disposal of applications for restoration of lapseddesigns.
13. Procedure for disposal of applications for restoration of lapsed
designs.-(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 extens on 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 be n so entered.
14.
Rights of proprietor of lapsed design which have been restored.
14. Rights of proprietor of lapsed design which have been
restored.-(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 C
ntroller 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 he 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 r storation of the
design.
15
Requirements before delivery on sales.
15. Requirements before delivery on sales.-(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 g ving 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
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 entitled to recover any
penalty or damages in respec of any 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 requ rements 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 i thinks fit.
16
Effect of disclosure on copyright.
16. Effect of disclosure on copyright.-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 b each 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 th design sufficient to invalidate the
copyright thereof if registration thereof is obtained subsequently to
the disclosure or acceptance.
17
Inspection of registered designs.
17. Inspection of registered designs.-(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.
18
Information as to existence o copyright.
18. Information as to existence of copyright.-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 registra ion 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.
19.
Cancellation of registration.
19. Cancellation of registration.-(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.
20
Designs to bind Government.
20. Designs to bind
Government.-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 (39 of 1970) shall
apply to registered design as they apply to patents.
CHAP
INDUSTRIAL AND INTERNATIONAL EXHIBITIONS
CHAPTER IV
INDUSTRIAL AND INTERNATIONAL EXHIBITIONS
21.
Provisions as to exhibitions.
21. Provisions as to exhibitions.-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 elsewhere dur ng 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.
CHAP
LEGAL PROCEEDINGS
CHAPTER V
LEGAL PROCEDINGS
22.
Piracy of registered design.
22. Piracy of registered design.-(1) 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 pu lished or exposed
for sale that article.
(2) 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 roceeding
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.
23.
Application of certain provisions of the Act as to patents to designs.
23. Application of certain provisions of the Act as to patents to
designs.-The provisions of the Patents Act, 1970 (39 of 1970) with
regard to certificates of the validity of a patent, and to the remedy
in case of groundless threats of legal proceedings y 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 fo references to the patentee, and of
references to the design for references to the invention.
CHAP
GENERAL
CHAPTER VI
GENERAL
24
Fees
24. Fees.-(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 as 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.
25
Notice iof trust not to be entered in registers.
25. Notice of trust not to be entered in registers.-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.
26
Inspection of and extracts from registers.
26. Inspection of and extracts from registers.-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.
27
Privilege of reports of Controller.
27. Privilege of reports of Controller.-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.
28.
Prohibition and publication of specification, drawings, etc., whereapplication
abandoned, etc.
28. Prohibition and publication of specification, drawings, etc.,
where application abandoned, etc.-Where an application for a design
has been abandoned or refused, the application and any drawings,
photographs, tracings, representations or specimens lef in connection
with the application shall not at any time be open to public
inspection or be published by the Controller.
29
Power of Controller to correct clerical error.
29. Power of Controller to correct clerical errors.-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.
30
Entry of assignment and transmissions in registers.
30. Entry of assignment and transmissions in registers.-(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 Controlle 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 app ication 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 be ween 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 movable 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 co rt 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
Rectification of register.
31. Rectification of register.-(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.
CHAP
POWERS AND DUTIES OF CONTROLLER
CHAPTER VII
POWERS AND DUTIES OF CONTROLLER
32
Powers of Controller in proceedings under Act.
32. Powers of Controller in proceedings under Act.-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 of receiving evidence, administering oaths, nforcing 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 o that court.
33
Exercise of discretionary power by Controller.
33. Exercise of discretionary power by Controller.-Where any
discretionary power is by or under this Act given to the 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.
34
Power of Controller to take directions of the Central Government.
34. Power of Controller to take directions of the Central
Government.-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
35
Refusal to register a design in certain cases.
35. Refusal to register a design in certain cases.-(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.
36
Appeals to the High Court.
36. Appeals to the High Court.-(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 may make rules consistent with
this Act as to the conduct and procedure of all proceedings under this
Act before it.
CHAP
EVIDENCE, ETC.
CHAPTER VIII
EVIDENCE, ETC.
37
Evidence before the Controller.
37. Evidence before the Controller.-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 the
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.
38
Certificate of Controller to be evidence.
38. Certificate of Controller to be evidence.-A certificate
purporting to be under the hand of the Controller as to any entry,
matter or thing which he is authorized by this Act, or any rules made
thereunder to make or do, shall be prima facie evidence f the entry
having been made, and of the contents thereof, and of the matter or
thing having been done or left undone.
39
Evidence of documents in patent office.
39. Evidence of documents in patent office.-Printed or written copies
or extracts, purporting to be certified by the Controller and sealed
with the seal of the patent office, of documents in the patent office,
and of or from registers and other books ke t 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.
40
Application and notices by post.
40. Application and notices by post.-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.
41
Declaration by infanct, lunatic, etc.
41. Declaration by infant, lunatic, etc.-(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.
42
Avoidance of certain restrctive conditions.
42. Avoidance of certain restrictive conditions.-(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 su plied 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 falling within
that sub-section merely by reason of the fact that the agreement
containing it has been entered into separately, whe her 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 a 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 resp ct of which a design is
registered, as may be required or to put or keep it in repair.
(5) The provision 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 comme cement.
CHAP
AGENCY
CHAPTER IX
AGENCY
43
Agency.
43. Agency.-(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 maintained under section 125 of the
Patents Act, 1970 (39 of 1970) and address had been enter d in the
register of patent agents (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.
CHAP
POWERS, ETC., OF CENTRAL GOVERNMENT
CHAPTER X
POWERS, ETC., OF CENTRAL GOVERNMENT
44
Reciprocal arrangement with the United Kingdom and othe conventioncountries or
group of countries or inter-governmental organizations.
44. Reciprocal arrangement with the United Kingdom and other
convention countries or group of countries or inter-governmental
organizations.-(1) Any person who has applied for protection for any
design in the United Kingdom or any of other convention cou tries 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 un er 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 or anisations, 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 appli ation 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 entral
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 a ditions, 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 organisat on, 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 Pari 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 rganisation applies.
Explanation 2.-Where more than one application for protection referred
to in sub-section (1) has 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-gover mental 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.
45
Report of the Controller to be placed before Parliament.
45. Report of the Controller to be placed before Parliament.-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.
46
Protection of security of India.
46. Protection of security of India.-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 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.
prejudicial to the interest of the security of India; and
(b) take 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 direct y or indirectly
for the purposes of military establishment or for the purposes of war
or other emergency in international relations.
47
Power of Central Government to make rules.
47. Power of Central Government to make rules.-(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 under and the fee payable thereto,
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 the 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-s ction (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 sessions aforesaid, both Houses agree in making any
modification in the rule or both Houses agree that the rule should not
be made, the rule shall thereafter hav 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.
CHAP
REPEAL AND SAVING
CHAPTER XI
REPEAL AND SAVING
48
Repeal and savings.
48. Repeal and savings.-(1) The Designs Act, 1911 (2 of 1911) is
hereby repealed.
(2) Without prejudice to the provisions contained in the
General Clauses Act, 1897 (10 of 1897) with respect to repeals, any
notification, rule, order, requirement, registration, certificate,
notice, decision, determination, direction, approval, authoris tion,
consent, application, request or thing made, issued, given or done
under the Designs Act, 1911 (2 of 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 corresp nding provisions of
this Act.
(3) The provisions of this Act shall apply to all 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 f ve 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.
SUBHASH C. JAIN, Secy. to the Govt. of India.