An Intellectual Property Right which protects the visual design only and not the functional part of the article is known as an industrial design. Registered Design Ordinance, 2000 governs the design laws in Pakistan. According to section 2(e) of the Ordinance Design is defined as under:
“Design” means features of shape, configuration, pattern ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by technical and functional considerations.
Industrial designs are applied to a wide variety of products of industry and handicraft: from technical and medical instruments to watches, jewelry and other luxury items; from house wares and electrical appliances to vehicles and architectural structures; from textile designs to leisure goods.
- Who is the Proprietor or Creator of a Design?
According to Section 2 (h) of the Registered Design Ordinance “proprietor or creator of a design means,-
- where the author or creator of the design, for good consideration executes the work for some other person, the person for whom the design is so executed,
- where a design or the right to apply a design to an article becomes vested, whether by assignment, transmission or operation of law, in any person other than the original proprietor, either alone or jointly with the original proprietor, in respect and to the extent in and to which the design or right has been so vested, that other person or, as the case may be, the original proprietor and that other person;
- if and to the extent to which two or more persons have created the same design independently of each other, the person whose application has the earliest filing date or, if priority is claimed, the earliest validity claimed priority date shall have the right to the registration of industrial design, as long as the said application is not withdrawn, .abandoned or rejected; and
- in any other case, the author or creator of the design as may be assigned or as may be transferred by succession;
- What may not be Registered as a Design?
- a) A design which is not original, new or novel.
- b) A design which is similar to the already registered design or have already published anywhere in the world before the application of registration the design.
- c) A priority claiming application of the design have published/registered before the priority date.
- d) A mere adjunction of two or more known articles of known shape or patterns.
- e) A design of artistic nature like works of sculpture, other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process, wall plaques and medals.
- f) A design of printed mater primarily of a literary or artistic character including book-jackets, calendars, certificates, coupons, dressmaking patterns, greeting cards, leaflets, maps plans, postcards, stamps, trade advertisements, trade forms and cards.
- g) Buildings and structures
- h) Parts of articles not sold separately
- Variations commonly used in the trade
- j) Mere workshop alterations of the components of an assembly
- k) Flags, emblems or signs of any country
Who Can Register A Design
An inventor/proprietor or any other person or assignee by the inventor can apply and obtain the registration for the design.
Requirements for Registration of a Design
An application for the registration of a design must be made on prescribed Form, and must be accompanied by the prescribed number of representations of the design or the specimen of the article bearing the design and by the prescribed fee and affidavit.
If it is desired to register the same design in more than one class, a separate application must be made in each class.
The Design Ordinance 2000 provides priority arrangements for all member countries of World Trade Organization (WTO) if application in Pakistan is filed within 6 months of the priority country filing. Under Section 11 of the Ordinance, any person who has made application to register a design in any of the member country of WTO (or his legal representative or assignee), either alone or jointly with any other person, is entitled to make an application for the registration of the same design in Pakistan, claiming priority of date for his registration. Similarly, any person who has filed an application for registration in Pakistan is entitled to claim that that the official date of the Pakistani application for any registration that may be affected in the aforesaid countries.
An application for claiming priority should be made on Form-16 within six months from the date of the first application in a foreign country, and should be accompanied by four identical representations. In addition, a copy of the representation or specimen of the design filed or deposited abroad in respect of the first application in a foreign country duly certified by the official Chief or head of the Patents Office of that country, or otherwise verified to the satisfaction of the Registrar, should be left with such application, or within three months thereafter and if such certificate or document is in a foreign language, a translation thereof (in English) verified by statutory declaration or otherwise to the satisfaction of the Registrar should be annexed thereto.
- Proceedings for Registration of Design
(1) An application for the registration of a design shall be in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
(2) For the purpose of deciding whether a design is new or original the Registrar may make such inquiries, if any, as he thinks fit.
(3) The Registrar may refuse any application for the registration of design or may register the design in pursuance of the application subject to such modifications, if any, as he thinks.
(4) An application which, owing to any default or neglect on the part the applicant, has not been completed so as to enable registration to be effected With the prescribed time shall be deemed to be abandoned.
(5) Except as otherwise expressly provided in this Ordinance, design when registered shall be registered as of the date on which the application registration was made, or such other date, whether earlier or later than that date, as the Registrar may in any particular direct:
Provided that no proceedings shall be taken in respect of any infringement committed before the date on which the certificate of registration of the design under this Ordinance is issued.
(6) An appeal shall lie to the High Court from any decision of the Registrar.
Duration for Registration
The registered design shall be protected for 10 years as of the filing date or priority date. Protection period may be extended for two further periods of 10 years.
- Benefits of Registration of Industrial Design
The following are the benefits of registration of industrial design application in Pakistan
- The proprietor has exclusive rights on the industrial design application in Pakistan.
- The proprietor can sue for infringement, if required.
- The industrial design becomes an intellectual property and can also be sold by the proprietor like any other Intellectual Property Right.
- The popularity of the industrial design is helpful in popularity of the business entity.
Disadvantages of Unregistered Designs
The owner is unable to prevent unauthorized copying or limitation of his or her design by third parties.
- Infringement of a Registered Design
If any person infringes a registered proprietor’s right, the registered proprietor may bring a suit against him for the recovery of damages and for an injunction against the continuation of the infringement.
Remedy for Groundless Threats of Infringement Proceedings
(1) Where any person whether entitled to or interested in a registered design or an application for registration of a design, by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of the registration in a registered design, any person aggrieved thereby may institute a suit against him for any relief specified hereunder.
(2) Unless in any suit under sub-section (1), the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of the registration in a registered design the registration of which is not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following reliefs, namely:-
(a) A declaration to the effect that the threats are unjustifiable;
(b) An injunction against the continuance of the-threats; and
(c) Such damages, if any, as he has sustained thereby.
(3) For the avoidance of doubt it is hereby declared that a mere notification that a design is registered does not constitute a threat of proceedings within the meaning of this section.
- Cancellation of Registration
(1) Any person interested may by a petition made at any time after the registration of a design, to the High Court or within two years of the registration of a design to the Registrar, seek cancellation of the registration of a design on the following grounds, namely:-
(a) the industrial design should not have been registered because the specific substantive requirements prescribed in this Ordinance have not been fulfilled;
(b) the industrial design is contrary to public order or morality; or
(c) person is whose name the industrial design is registered has no right to it.
(2) An appeal shall lie to the High Court from any order of the Registrar under sub section (1), and the Registrar may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.
Rectification of Register
The High Court may, on the application of any aggrieved person, order the register to be rectified by the making of any entry therein or the variation, or deletion, of any entry therein.
In proceedings of rectification the High Court may determine any question which it may be necessary or expedient to decide in connection with the rectification of the register.
Notice of any application of rectification to the High Court shall be given in the manner as may be prescribed to the Registrar who shall be entitled to appear and be heard on the application and shall appear if so directed by the Court.
Any order made by the High Court under-this-section shall direct that notice of the order shall be served on the Registrar in the manner as may be prescribed and the Registrar shall, on receipt of the notice, rectify the register accordingly.