Procedure, Conditions, Requirements and Prohibitions for Registration — Intellectual Property Rights II Notes

Procedure, Conditions, Requirements and Prohibitions for Registration

The single word that decides most design problems is novelty. A design that the public has already seen — sold, advertised or published anywhere — is no longer new, and cannot be registered. That is why the recurring “shoe already sold in India” problem always fails: the cat is out of the bag.

Conditions, procedure and prohibitions

A. Conditions for registration — s.4

A design is registrable only if it is:

New or original — not previously in existence.
Not previously published or disclosed to the public anywhere in India or abroad (by prior use, sale or publication).
Significantly distinguishable from known designs or combinations of known designs.
Not containing scandalous or obscene matter, and not contrary to public order/morality.

Section 4 prohibits registration of a design that fails any of these — it is the mirror image of the conditions.

B. Procedure for registration — ss.5–9

Application (s.5) to the Controller in the prescribed form, with representations of the design and the class of article (Locarno classification, s.6).
Examination by the Controller for novelty and compliance.
Acceptance / objections — the Controller may refuse (appealable to the High Court) or require amendments (s.8).
Registration and certificate (s.9) — the design is entered in the Register of Designs and a certificate issued.
Publication (s.7) — the design is published in the Official Gazette after registration.

C. Duration — s.11

Copyright in the design subsists for 10 years from registration, extendable by a further 5 years on application before expiry — a maximum of 15 years.

Section 4: “A design which — (a) is not new or original; or (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date …; or (c) is not significantly distinguishable from known designs …; or (d) comprises or contains scandalous or obscene matter shall not be registered.”

In Simple Terms: To register, a design must be new, unpublished, significantly distinguishable and decent. Any earlier public disclosure — including sale abroad — destroys novelty and bars registration. The route is apply → examine → register → then publish.

🧩 WORKED EXAMPLE — the shoe already sold in India

Facts. A foreign company designs a shoe abroad and wants to register the design in India, but a similar shoe has already been sold in India.

Rule. s.4(b) — prior disclosure to the public (by sale/use/publication) anywhere destroys novelty; such a design cannot be registered.

Apply. The similar shoe was already on sale in India, so the design is no longer new or unpublished; the essential condition of novelty fails.

Decoy. That the company designed it “first” abroad does not help — what matters is prior public disclosure, not who thought of it first.

Conclusion. The company cannot register the design; novelty has been lost by prior sale in India.

flowchart TD
    ROOT["Application to register a design"]:::root
    ROOT --> A["Apply (s.5) with representations + class"]:::leaf
    A --> B{"New, unpublished, distinguishable, decent? (s.4)"}:::dec
    B -->|"No"| N["Refused (s.4 prohibition)"]:::no
    B -->|"Yes"| C["Register + certificate (s.9), then publish (s.7)"]:::leaf
    C --> D["10 years + 5 years extension (s.11)"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,stroke-width:1px,color:#000;
    classDef dec fill:#FDECC8,stroke:#B7791F,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;
    classDef no fill:#FDE2E2,stroke:#C0392B,color:#000;
    linkStyle default stroke:#888,stroke-width:1px;

Case Laws

Bharat Glass Tube Ltd. v Gopal Glass Works Ltd. (2008) — prior publication (in a UK register) destroyed novelty.
Reckitt Benckiser (India) Ltd. v Wyeth Ltd. (2013, Delhi FB) — prior publication abroad defeats novelty even if not used in India.

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