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Overview of Indian design system

Picture of 弁理士 杉浦健文

1. System overview (purpose, governing authority, underlying law)

In India, the Designs Act, 2000 has been enacted to protect the designs of industrial products. This law is a complete revision of the old Design Law enacted in 1911, and came into effect on May 11, 2001. The purpose of design law is to protect the visual design (aesthetic appearance) of a product rather than its purely functional aspects; it encourages the creation of product designs and prevents their imitation. India's design system adopts a "first to file" system, and those who file the application first obtain the rights.

This system is administered by the Controller General of Patents, Designs and Trade Marks (CGPDTM), which is under the Department of Promotion of Industries and Internal Trade (DPIIT) under the Ministry of Commerce and Industry. Applications for design registration are accepted at the Patent Offices (Chennai, Mumbai, Delhi, and Kolkata Patent Offices), but the Kolkata Patent Office (Designs Office) is the center of design examination and registration work.

India is a member of the Paris Convention and the WTO/TRIPS Agreement in the international framework of intellectual property rights, and also supports priority claims for designs based on the Paris Convention. On the other hand, as India is not a member of the Hague Agreement (International Registration System for Designs), international design applications with India as a designated country are not available. To obtain design protection in India, you need to file a direct application (or apply using Paris priority) in India.

2. Definition of protected designs and registration requirements

Definition of Design: Under Section 2(d) of the Indian Designs Act, a "Design" refers to a shape, contour, pattern, decoration or color scheme applied to the surface of a product (article) that is visually aesthetically appealing in the finished product (regardless of whether it is two-dimensional or three-dimensional, whether it is made by handicraft, mechanical or chemical means, and whether it is added to the article integrally or separately). In other words, the external design of industrial products, etc. itself is subject to protection. Please note that a design cannot exist separately from a product, and must always be applied to some kind of "article."

Registration requirements: A design to be registered must meet the following requirements:

  • Novelty & Originality: The submitted design must be new and original. The design must have never been published or published before in any country in the world (absolute novelty requirement). In other words, a design cannot be registered if it has been publicly announced or used in India or abroad before the application is filed. A design that appears to be substantially the same as a conventional design simply by combining multiple known designs will also be judged as lacking novelty.

  • Visible aesthetics: The design must create an aesthetic effect through sight in the finished product. Designs that are not visible to the naked eye, such as the shape of parts that are not visible from the outside during normal use, are not protected. In addition, Purely functional shapes and structures (shapes and principles that indicate the function and structure of the product itself) do not fall under the category of designs. Under the Design Act, design is only an aesthetic element, and the technical and functional features of a product are not protected.

  • Public order and morals: It is also a requirement that the contents of the design do not contravene public order and morals. For example, designs that offend public morals or sentiments, such as socially offensive or obscene designs, will be refused registration. Additionally, designs that may violate national security or order are not permitted.

  • Industrial applicability: Although not specifically stated in the Indian Design Act, it is assumed that a design is practically a design that can be applied to a product that can be industrially mass-produced. Therefore, pure works of art (works of art themselves) that are not practical products fall under the category ofcopyrightrather than designs, and are not subject to design registration.

Exceptions to loss of novelty: In principle, publication before filing is prohibited, but the Indian Design Act also has limited exceptions to loss of novelty. For example, in the case of a patent being released at a specific exhibition, etc., there is a remedy that allows the application to be filed within six months of publication to ensure that the novelty is not lost. This is limited to exhibitions at government-sanctioned international exhibitions, etc., and does not apply to general commercial exhibitions.

3. Unregistered designs (excluded)

A design that does not meet the above registration requirements cannot be registered. Section 4 of the Indian Designs Act enumerates the following designs which are not registrable:

  • Lack of novelty/originality: Designs that are identical or substantially similar to existing designs and are not new or original.

  • Prior public knowledge/public use: Designs that have beenpublicly published and usedin India or abroad before the application is filed.

  • Mere combination of known designs: A design that is composed of known designs or a combination thereof and is indistinguishable from existing designs.

  • Ugly/illegal designs: obscene, immoral, scandalous designs, or designs that violate public order and morals.

Furthermore, according to the definition provisions of the Design Act, things that do not fall under the category of "designs" in the first place cannot be registered. Specifically, the following are excluded:

  • Structure/function itself: The design does not include the method or principle of the structure of the product itself, or a mere mechanical device (a shape purely for performing a function).

  • Trademarks/Identification Marks: A Trademark as defined in the Trademark Act or a property mark under the Indian Penal Code (for example, a product indication to identify the owner) cannot be registered as a design.

  • Artistic work: artistic work as defined by the Copyright Act is not a design but is subject to copyright and cannot be registered as a design. Paintings, sculptures, and the design of buildings themselves fall into this category.

As mentioned above, it is important to note that designs that are only functional or that are subject to other legal protection systems (trademarks, copyrights, etc.) cannot be registered as designs in India.

4. Application procedures (required documents, language, format, fees)

Documents and information to be submitted: To apply for design registration in India, fill out the required documents (Form-1) and attach the following documents and information.

  • Applicant information: Applicant's name (or corporate name), address, nationality, etc. In India, not only the inventor (creator) himself/herself, but also his/her assignee (such as a company) can be an applicant. If you are applying through an agent, you will also need to submit a Power of Attorney.

  • Name of design: Name of the product (article) for which registration is sought. Be as specific as possible and state the product name to which the design is applied (e.g. "smartphone case", "chair", etc.).

  • Classification: Applicable Design Classification (Locarno Classification) class and subclass. India joined the Locarno Agreement in 2019 and has since adopted the International Classification of Industrial Designs (Locarno Classification). When filing an application, specify the classification according to the latest version of the Locarno Classification Table (one classification per application). In principle, only one design can be registered in one application, but sets of articles that are customarily sold as a set (e.g. cutlery sets, etc.) can be filed together as a "set design."

  • Drawings or photographs of the design: Submit drawings or photographs that represent the design. Normally, we prepare 6-sided views of the product (front, back, top, bottom, left side, right side) and perspective views (3D views) if necessary. In the case of drawings, there are regulations regarding line thickness and shading, but photographs may also be submitted. The drawings and photographs submitted should include a ``Statement of Novelty'' and, if necessary, a disclaimer (disclaimer of any part not included in the rights). For example, if a design includes a logo or text, it is recommended to clearly state that ``the text is not claimed as a design,'' or that the mechanisms of movable parts are not included in the scope of rights. When claiming a partial design, make it clear by using broken lines in the drawing as described below (see "Practical Points to Consider" below).

  • Priority document (Paris Convention): If you have previously filed an application in a country that is a member of the Paris Convention, it is possible to claim priority. If you wish to claim priority, you must file your application in India withinsix months from the date of the first application (you will not receive the benefit of priority after even one day of the six-month period). At the time of filing, you must submitthe priority document (copy of the original application bulletin or application) and its English translation (if the original language is other than English). Priority documents can be supplemented within 3 months after filing the application, but in that case, a prescribed extension request and fee will be required. Additionally, if the applicant is different from the creator, such as when priority is based on a U.S. application, an assignment certificate from the creator may be requested.

  • Small Entity/Startup Certification: In India, applicants who qualify as Small Entity or Startup are entitled to reduced fees. If applicable, you will be required to prove your qualifications by submitting a prescribed declaration (Form-24, etc.) at the time of application (if not submitted, you will be treated as a large company).

Language: Application documents can be written in English or Hindi. However, in practice, most communications with examiners and documents are conducted in English, so it is common to prepare in English. The Indian Patent Office can also provide English translations of documents, but English documents are recommended for smoother procedures.

Formal requirements: Indian design applications also support online electronic filing (e-filing) (from 2015). The drawings and photographs should be arranged in the specified A4 paper format, and an explanation (view name) should be added to each figure. When expressing a partial design, it is permitted to use dashed or dotted lines to indicate the parts that are not protected, and to draw only the parts that require protection using solid lines. An application can be filed for one design (one article) per project, but in the case of a "set design," the entire set can be filed as one design. There is also aone application, one class principle, meaning that goods in different classes must be filed separately.

Fee: At the time of application, you will pay the prescribed government fee. In India, fees vary depending on the applicant's attributes, and for individuals, small businesses, and startups, fees are reduced to 25% of large companies (75% reduction/exemption). For example, the application fee for a new design is 1,000 rupees for individuals/small businesses and 4,000 rupees for large companies (for electronic applications). In addition, fees are set for cases involving priority claims, addition of drawings, deadline extensions, registration fees, renewal fees, etc. Payments will be made through the Indian Patent Office's online payment system or designated banks. If you use an agent, you will need to pay a separate agent fee, but the fee paid to the government office itself is relatively low.

5. Flow of examination and registration (formal examination, substantive examination, notice of reasons for refusal, etc.)

Type of examination: After application, a Formal Examination is first conducted to check for deficiencies in required documents and formal requirements. The appearance of the drawings, omissions in the application form, appropriate classification, confirmation of payment of fees, etc. are inspected here, and if there are any deficiencies, correction instructions will be issued. Once you have cleared the formal requirements, you will proceed to Substantive Examination. During the substantive examination, the examiner determines whether the design satisfies the definition and registration requirements (novelty/uniqueness, public order and morals, etc.) under the Design Act. Indian design applications do not require arequest for examinationand are automatically submitted for examination after filing.

Examination results and response: As a result of the substantive examination, if there are no problems with the registration requirements, the design will be registration approved and the design will be registered by the registrar (controller). On the other hand, if the examiner finds reasons for refusal, a First Examination Report (FER) will be sent to the applicant in writing. This notice will specifically indicate the reason why it was determined that registration is not possible (for example, "similar to an existing design", "does not meet the definition of a design", etc.).

The applicant must resolve the points raised by the examiner by submitting a written opinion or amendment within 3 months after receiving the notification. Alternatively, you can request arequest for hearing within the same period and request an opportunity to make an oral defense. This three-month response period may be extended (grace) for up to three months with the examiner's permission. In any case, if the design does not reach "acceptance" within six months from the filing date, the application will be considered abandoned (withdrawn). Therefore, it is necessary to respond promptly to the notice of reasons for refusal. If the applicant does not respond within the deadline, the application will bedeemed abandoned (treated as rejected) and the procedure will be terminated.

If you request an examination, a hearing will be scheduled with the examiner (or senior examiner), and the examination result will be reconsidered after oral argument. If the reasons for refusal are finally resolved, the application will proceed to registration, but if the reasons for refusal cannot be resolved, a Decision of Refusal (decision to refuse registration) will be made. Applicants who are dissatisfied with this decision of refusal can file an appeal (suit to cancel the trial decision) to the designated High Court (usually the Kolkata High Court) within three months from the date of delivery of a copy of the decision. In India, the Intellectual Property Board (IPAB) was abolished in 2021, so currently there are no administrative remedies such as appeals against refusals, but judicial remedies (direct filing of a lawsuit with a high court).

Examination period: The examination of Indian design applications is relatively quick, with initial examination results expected to be available on average in about 6 to 9 months. In recent years, the Intellectual Property Office of India has been working to speed up the examination process, and in many cases, registration can be achieved within a year if appropriate measures are taken. However, it may take some time depending on the response to the reasons for refusal and the burden on the examiner.

6. Publication, opposition, and registration mechanisms

Registration and Publication: After passing the examination, the design isregistered in the Design Register. At the same time as registration, information about the design is published in the official gazette (design journal) and made available to the public. The registration announcement includes drawings/photos of the design, applicant/registration date, product name, classification, etc. Once registration is complete, a Certificate of Registration will be issued and delivered to the right holder (design right holder). The registration certificate contains information such as the registration number, registration date, and period of validity, and serves as evidence for future exercise of rights. After the details of the registered design are made public, anyone can view them on the database of the Indian Patent Office, etc., and the existence of the design right becomes publicly known. Note that India's current system does not have a secret design system (non-publication system after registration) like Japan, and all registered designs are immediately made public.

Opposition system: There is nopre-registration 'opposition' system in the Indian design system. In other words, unlike patents, there is no system in place for a third party to file an objection within a certain period before and after registration. Instead, there is a system for cancellation after registration.

Post-registration invalidation procedure (Cancellation): An "interested party" (an interested third party) can request the cancellation (invalidation) of the registration of a registered design at any time. A request for invalidation is filed with the Design Office using the prescribed form (Form-8). Jurisdiction for examining invalidation petitions is the Kolkata Patent Office (Designs Department), which manages the Design Registry.

The following are stipulated in Article 19 of the Design Act as grounds for filing a petition for invalidation (grounds for invalidation).

  • The design is already registered in India (lack of novelty)

  • The design was published and in public use in India or a foreign country before the date of registration (loss of novelty due to public knowledge/public use)

  • The design is neither new nor original (lack of creativity)

  • The design does not meet the registration requirements stipulated by the Design Act (e.g., it is a shape with only a function, it violates public order and morals, etc.)

  • In the first place, it does not fall under "design" as defined in Article 2(d) of the Design Act (registration of something that is not a design)

The invalidation petitioner submits evidence supporting these grounds and a statement indicating that he or she is an "interested party" along with the petition. When the Design Office (controller) receives a petition, it will serve a copy of the petition to the design right holder, and the design right holder can submit a counter statement and evidence within a certain period of time (usually within one month, but can be extended for up to three months if necessary). Thereafter, the petitioner will be given the opportunity to submit a second counter-argument, and after a written or oral hearing, the controller will make a decision whether to maintain the registration or cancel it. If any party is dissatisfied with the controller's decision, they can appeal (appeal) to a higher court.

As mentioned above, in India, rights are contested in an invalidation trial after a design is registered, and a third party cannot intervene by filing an opposition before the design is registered. Therefore, if a competitor registers a problematic design, invalidation procedures will be taken after registration. In addition, it is desirable in practice to regularly monitor the design registration gazette and check the registration trends of competitors.

7. Duration of rights and renewal system

The duration of design rights in India is, in principle, stipulated as 10 years from the filing date (or the highest priority date if priority is claimed) (Article 11 of the Design Act). This means that the registration will expire 10 years after the registration date (which is treated as the same day as the application date). If you wish to maintain the validity period further, it is possible to renew (extend) it only once, and by completing the prescribed procedures, you can extend the validity period for an additional 5 years (up to a total of 15 years). Therefore, the maximum term is a total of 15 years from the filing date. Unlike Japan and the United States, India does not allow further extensions or renewals, and the rights expire after 15 years.

Renewal procedure: If you apply for renewal (extension application) and pay the prescribed renewal fee by the initial 10-year deadline, you will be granted an extension for the remaining 5 years. Applications for extensions can be made at any time before the expiration of the registration period, but are usually filed closer to the expiration date. However, it is also permissible to pay the extension fee immediately after registration and secure an additional five years. The renewal fee varies depending on the applicant category, and is 2,000 rupees for individuals and small companies, and 8,000 rupees for others (large companies).

Extinguishment and restoration of rights: If extension procedures are not carried out by the expiration of 10 years, the design registration will expire (extinguish rights) at the expiry of the 10-year period. However, even after the design rights have expired, it is possible to revive the design rights by filing an application for restoration within one year. When requesting reinstatement, please submit the prescribed reinstatement application form within one year after the expiration, and pay the unpaid extension fee as well as the reinstatement fee. The application must state the reason for not renewing by the deadline. If a valid reason is found, reinstatement will be granted at the controller's discretion, and the design right will be deemed to have continued uninterrupted (no third party rights will arise). However, there is no guarantee that the reinstatement will be granted, so it is important to ensure that you renew as soon as possible.

8. Rights enforcement and infringement response (remedies, damages, injunctions)

Efficacy of design rights: Registered designs generate design rights (Design Copyright), which grants the right to exclusively implement the design related to the registered design. A design right holder can exclusively restrict the application of a registered design or a design similar to it to a product without permission. Specifically, the following acts without the consent of the design right holder constitute infringement of a design right (Piracy of a Registered Design).

  • Manufacturing and selling products (articles) with a registered design or a design that is almost the same as the registered design.

  • Selling, possessing for the purpose of selling, importing/exportingproducts bearing registered designs (or imitations thereof).

  • Any other act of using registered designs for business without permission.

Under Article 21 of the Indian Design Act, the above-mentioned unauthorized use is considered an infringement of design rights and is prohibited. In the event of infringement, the design right holder may seek civil injunctions and damages against the infringer.

Civil Remedies: Under Section 22 of the Indian Designs Act, a design right holder can seek the following remedies against an infringer:

  • Injunction: You can file a lawsuit in court to request an injunction to immediately stop the infringing activity or prohibit future infringement. If the court grants an injunction, the manufacture, sale, import, etc. of the infringing product can be immediately stopped.

  • Claim for damages: You can seek monetary damages for infringement through court. In some cases, it may be difficult to prove the actual amount of damages, but even in such cases, the court will order compensation in an amount that the court deems to be reasonable. In addition, under the Design Act, the estimation of the amount of damages is not as detailed as in patents, but based on case law, the amount of compensation is determined by taking into account loss of profits, etc.

  • Statutory damages (monetary claims): India's unique system allows design rights holders to demand a fixed amount of monetary damages (statutory damages) from infringers without resorting to litigation. Specifically, a design right holder can recover up to 25,000 rupeesfrom the infringer for each act of infringement, with an upper limit of 50,000 rupeesfor a single design. The purpose of this system is to settle the case with a legal amount when it is difficult to prove the amount of damages, but it is understood that if this option is chosen, a separate suit for compensation for damages cannot be filed (it is, so to speak, a simple conciliatory remedy).

  • Ancillary measures: If an injunction is obtained, the court may order additional relief (at the court's discretion), such as the seizure or destruction of infringing goods or manufacturing equipment, or an order to publicize the infringing activity.

Criminal Penalties: The Indian Design Act does not have provisions for criminal penalties like Japan. Infringement of design rights is basically considered a civil dispute, and there is no provision for criminal prosecution (fines, imprisonment, etc.) against infringers*. Therefore, rights will be enforced through civil litigation. (*However, the act of someone else intentionally copying a design acquired by a design right holder and developing a product without permission may be subject to criminal penalties under other laws such as the Unfair Competition Prevention Act, but the Design Act itself does not have any criminal provisions.)

Jurisdiction: Design infringement lawsuits are filed in the state'shigh court or lowerdistrict court, depending on the amount of infringement, etc. High courts in major cities, including the Delhi High Court, have dedicated intellectual property departments, and there are precedents in which design infringement lawsuits have been fought in Indian courts even between companies from other countries. The registration certificate serves as prima facie evidence of valid title (evidence of prima facie) and is a powerful element to support the validity of the registration in court. In an infringement lawsuit, the defendant (infringer) can claim invalidity by claiming that the design is not worthy of registration (lack of novelty, etc.), but the burden of proof is basically on the defendant. Additionally, proving infringement involves a comparison showing that the infringing product is "visually substantially identical" to the registered design. Infringement may be found if the differences are small but give the impression that they are substantially the same.

9. International application system (relationship with the Hague system, handling of foreign applicants)

As mentioned above, India is not a party to the Hague Convention. Therefore, it is not possible to directly obtain a design right in India through a Hague international design application. If a foreign company/designer wants to obtain design protection in India, he or she has tofile a national applicationdirectly with the Indian Patent Office. However, since India is a member of the Paris Convention, it is possible toclaimpriority in an Indian application within six months from the date of the first design application filed in your country (foreign country). In this case, novelty is determined based on the priority date, and even if the design has been published after the application was filed in the home country, it will not be disadvantageous. Therefore, foreign applicants can obtain rights smoothly by filing an application in India within six months of filing in their home country. On the other hand, priority cannot be claimed after six months, and the novelty requirements at the time of filing must be satisfied independently.

Handling of foreign applicants: Even foreign companies and individuals can apply and register Indian designs without any problems. Indian law adopts the principle of non-discrimination (national treatment based on the TRIPS Agreement). However,applicants who are not domiciled in India will need to specify an Address for Service in India. Usually, an Indian agent (patent attorney/attorney) also serves as this role. In addition, in practice, it is difficult to file an application directly with the Indian Patent Office from a foreign country, so it is common to request an Indian patent agent. In India, a person who is qualified as a patent agent can also represent you in design proceedings, and trademark agents and law firms also handle design application services. It would be desirable to have a system in place to cooperate with a local agent throughout the process, from application to registration and even infringement response. Although the application documents themselves may be prepared by a foreigner, since notices from examiners are issued in English, it is useful to have support from local experts in terms of technical communication.

Exhibition at international exhibitions: As mentioned above, in India, pursuant to the provisions of the Paris Convention, there is an exception in which designs announced at certain international exhibitions, etc. do not lose novelty if the application is filed within six months. Therefore, when a Japanese company or other company exhibits a new product at an international exhibition before entering the Indian market, it is important to complete the design application in advance if possible, or at the latest to file the application in India within six months of the exhibition. This exception is strictly enforced and limits the scope of permitted exhibitions.

International cooperation: In recent years, India has been moving toward international harmonization of its design system, and in 2019, it joined the Locarno Agreement (design classification) and introduced an international classification. Additionally, joining the Hague Agreement has been a topic of consideration for many years, and preparations are underway, including exchanging information regarding the Hague System with the USPTO in 2024. If India becomes a member of the Hague Agreement in the future, it is expected that it will be possible to designate India through an international application, but care must be taken as it is not yet a member as of 2025.

10. Practical points to note (prior design search, involvement of agent, local practice)

Importance of prior design search: Indian design applications requireabsolute novelty, which means that the design must have never been published anywhere in the world. Therefore, it is important to thoroughly research prior designs in Japan and overseas before filing an application. The Indian Patent Office provides a database search service for published designs, and you can also search for Indian registered designs from WIPO's Global Design Database.特に欧米や中国で既に公知となっているデザインがないか確認し、自社のデザインが新規性・独自性を備えているか事前に評価しておくことが推奨されます。 In addition, some companies request a design search from the Japan Patent Office (a search that includes overseas designs) before filing an application in India. If the application lacks novelty, there is a risk that the application will not only be rejected, but also invalidated after registration, so it is important to conduct preliminary research.

Involvement of an agent: When a foreign company or individual aims to register a design in India, the support of local experts (patent agents/patent attorneys) is almost essential. This is because not only language and procedural issues are required, but also know-how on drawing creation rules and legal claims specific to India. For example, it takes some practice to describe novelty in drawings and how to display partial designs. In India, only those who are qualified as patent agents can act as agents for patents and designs (there is no specific agent qualification that deals only with trademarks and designs). If a foreign applicant does not have an address in India, he or she will also need to secure service of address through an agent as mentioned above. Even after acquiring the rights, it is important to have a local agent's assistance in issuing warnings and responding to lawsuits in the unlikely event that infringement occurs, so it is a good idea to select a reliable IP firm.

Local practices and considerations:

  • Handling of partial designs: Although there is no explicit provision regarding partial designs in the Indian Design Act, in practice, it is possible to protect partial designs. In doing so, it is necessary to clearly indicate on the drawings the parts that require protection and the parts that do not. Generally, a method is adopted in which the parts that do not need to be protected are drawn with broken lines (dotted lines) or light colors, and the parts that are to be protected are drawn with solid lines. Please note in the application documents that ``the broken line area is not included in the design'' and attach an enlarged view of the relevant area if necessary. For example, if you want to obtain rights for only a specific part shape of the entire product, you will submit a diagram of the entire product, highlight the rights-protected parts with arrows or boxes, and indicate the rest with broken lines. In this way, even if there is no system for partial designs themselves, it is possible to substantially cover partial designs using drawing representations and disclaimers.

  • No system for secret designs: India does not have a system for secret designs that are kept private for a certain period of time after registration, as in Japan. Once a design is registered, it will be published immediately and anyone can view it, so the publication timing cannot be delayed. Applications must be planned in line with the timing of product announcements. If the design is made public in the registration gazette before the product is released, competitors will be at risk of copying it, so strategic scheduling is required, such as applying immediately before the product is released and registering quickly.

  • GUI/Screen Design: In India, there has traditionally been no explicit regulation regarding dynamic designs (changes in screen display, etc.), and there was once a view that GUIs with strong software elements could not be registered. However, in recent practice, it has been determined that GUIs and icons displayed on the screen of electronic devices can also be registered as "two-dimensional designs applied to articles (electronic display devices)." In fact, the Kolkata High Court judgment in 2023 affirmed the designability of GUIs, stating that ``GUIs (on-screen displays) are used industrially through source code embedded in display devices, and are applied to products by electrical means to appeal to the visual sense.'' Therefore, if you express your app's icon and UI screen design in the form of still images and submit an application, there is a chance that it will be registered. However, it is difficult to protect the transitions of multiple screens with a single application, and it is necessary to apply for each screen separately. Also, the static layout of each screen will be judged rather than the movement itself.

  • Citation of prior designs: Indian examiners search publicly known designs and documents from all over the world and strictly judge novelty and originality. Design publications, publicly known catalogs, images on the Internet, etc. may be presented as reasons for refusal. It has been pointed out that there is a tendency for applications to receive a notice of reasons for refusal at a higher rate than applications filed in Japan. Therefore, it is a good idea to be prepared to clearly explain the differences from the prior design in preparation for your response. If necessary, it is also effective to explain the creation background and usage of the design to help the examiner understand it.

  • Name and Classification of Designs: It is important to properly classify and name designs in Indian applications. If the name is inappropriate (for example, a name that does not match the classification, a name that is too vague, etc.), the examiner will request amendments. It is recommended that the product name be as specific and concise as possible, referring to the terms listed in the Locarno Classification Table. Also, applications that deviate from the principle of one application, one design, one classification may be ordered to be divided, so it is important to narrow down the scope when filing.

  • Using fee classifications: As mentioned above, fees can be significantly reduced for individuals, small businesses, and startups. If applicable, be sure to declare your qualifications at the time of application and receive a reduction or exemption. For example, if a small company does not apply and is treated as a large company, the fees it will have to pay will be quadrupled. In addition, startup companies must meet the conditions set by the Indian government (established within a certain number of years, annual sales below a certain level, etc.), so please check the requirements in advance.

  • Practice for enforcing rights: When faced with infringement of a design right in India, the first thing to do is to promptly obtain a preliminary injunction and stop the distribution of the infringing product in the market. We will then seek full-scale relief through civil litigation. Indian courts consider design registration certificates to bepresumptive evidence of valid rightsand place the burden of proof on the infringer. However, design rights holders can also defend themselves by thoroughly conducting preliminary design research before registration, in preparation for counterarguments that their designs lack novelty and originality. In addition, if it is difficult to calculate the amount of damage, we will consider simple compensation (the above-mentioned flat monetary claim) stipulated in the Design Act, but since the upper limit is as low as 50,000 rupees, if there is significant damage, we will choose to claim regular compensation.

  • Customs Measures: Similar to trademarks and copyrights, designs can also be subject to the customs import suspension system. If you register your design rights with the Indian Customs, there is a system in place where the Customs will detect and detain any suspected infringing products when they are imported. However, for it to actually work, information on infringing products and on-site follow-up are required. If foreign companies wish to prevent counterfeit goods from entering India from outside India, they may consider working with local agents to utilize customs registration.

The above is a comprehensive explanation of the outline and key points of the Indian design system. India is a rapidly growing market, and the protection of product designs is becoming increasingly important year by year. It is necessary to appropriately acquire and utilize rights while paying attention to institutional characteristics that differ from those in Japan (for example, the short duration of existence and the absence of an opposition system). We hope that this report will be of assistance in acquiring and exercising design rights in India.

Reference information sources: Original texts and regulations of the Indian Design Act, guidelines from the Directorate General of Patents, Designs and Trademarks of India, materials provided by the Japan Patent Office and JETRO, and commentary from local law firms. If necessary, please also refer to the relevant laws and regulations (Indian Designs Act 2000, Design Rules 2001 Amendment 2021) and the information on the official website of the Indian Intellectual Property Office.

Takefumi SUGIURA, Patent Attorney

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).