Copyright in a Registered Design, and How Long It Lasts

The extension is a right, not a favour. Section 11(2) says the Controller "shall" extend on an application made in the prescribed manner before the ten years expire, on payment of the fee. He has no discretion to refuse a timely, properly made application.

The extension must be applied for before expiry. "Before the expiration of the said ten years". Miss it and the design ceases. The only route back is restoration under sections 12 to 14, within one year, and chapter 150 works that out.

There is no second extension. Section 11(2) gives "a second period of five years" and stops. After fifteen years the design is in the public domain and cannot be renewed. The Full Bench in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., AIR 2019 Delhi 23, put it in one line: the proprietor of a registered design has for a period of ten years, plus five, the exclusive right to manufacture the goods as per the registered design.

What the right actually stops

Read section 11 with section 22, which chapter 210 owns. During the existence of copyright it is unlawful for any person, without the licence or written consent of the proprietor:

• to apply the design or any fraudulent or obvious imitation of it to an article in the registered class for the purpose of sale, or to do anything with a view to enabling that;
• to import for the purposes of sale an article of that class to which the design or such an imitation has been applied; or
• knowingly to publish or expose for sale such an article.

So the right is against commercial dealing, not private making. A person who makes one copy for himself does not infringe, because each limb of section 22 is tied to sale.

A worked example

Rohit files a design application for a stackable stool on 12 August 2015. Registration issues on 3 April 2016.

When does the copyright begin? On 12 August 2015. Section 5(6) dates the registration back to the application.

When does the first period end? 11 August 2025.

What must Rohit do, and when? Apply for extension in the prescribed manner with the prescribed fee before 12 August 2025. If he does, the Controller must extend, and the second period runs from 12 August 2025 to 11 August 2030.

He forgets, and applies on 1 October 2025. The extension application is too late. The design has ceased to have effect. His route is section 12, restoration, within one year of 12 August 2025, on a verified statement fully setting out the circumstances, and he must satisfy the Controller under section 13 that the failure was unintentional and there has been no undue delay.

A competitor starts making the stool on 1 September 2025. If Rohit is restored, section 14(2) protects the competitor for that period: no suit may be commenced for piracy committed between the date the registration ceased and the date of restoration.

On 12 August 2030 the fifteen years end. The stool shape is free. Anyone may make it. Rohit's only remaining route is passing off, and only if the shape has become distinctive of him, which chapter 230 explains is much narrower than it sounds.

What this is not

It is not copyright. The term is ten plus five, not life plus sixty. The right is a monopoly, so independent creation is no defence. Chapter 60 sets out the comparison.

It is not a right in every article. Section 2(c) confines it to the class in which the design is registered. A design registered for glassware does not reach textiles.

It is not renewable indefinitely. One extension, of five years, and no more.

It does not require use. There is no working requirement, and Article 5B of the Paris Convention forbids forfeiture for failure to work or for importing the articles.

Limits and criticism

Fifteen years is short by international standards for some products. A design registered for the whole European Union lasts up to twenty-five years, renewed in five-year terms. India's fifteen was set in 2000 and has not been revisited.

The date-of-registration point is a drafting trap. Section 11 says "date of registration" and section 5(6) says registration is as of the date of application. A reader of section 11 alone gets the wrong answer, and this is worth pointing out in an examination.

Quick revision

• Section 11(1): copyright in the design for ten years from the date of registration, subject to the Act.
• Section 5(6): registration is as of the date of the application, so the ten years effectively run from filing.
• Section 11(2): one extension, of five years, on an application made before the ten years expire, with the fee. The Controller shall extend; he has no discretion.
• Section 2(c): the right is the exclusive right to apply the design to an article in the registered class.
• Total maximum fifteen years. TRIPS Article 26.3 requires only ten.
• Miss the extension and the only route is restoration, sections 12 to 14, within one year.

Test yourself

1. State the term of a registered design and the provision. Ten years from the date of registration under section 11(1), extendable once by five years under section 11(2), a maximum of fifteen.

2. A design is applied for on 1 June 2018 and registered on 4 March 2019. When does the first period expire? On 31 May 2028. Section 5(6) makes the registration effective as of the date of the application, so the ten years run from 1 June 2018.

3. May the Controller refuse a timely extension application? No. Section 11(2) says he "shall" extend on payment of the prescribed fee, provided the application is made in the prescribed manner before the ten years expire.

4. Can the fifteen years be extended by registering the same design for another article in the same class? No. The proviso to section 6(3) provides that a subsequent registration shall not extend the period of copyright beyond that arising from the previous registration.

5. Why does "subject to the provisions of this Act" matter in section 11(1)? Because the right is qualified throughout: by section 15 marking, section 19 cancellation, section 20 Government use, section 12 lapse, and section 22(3), which makes every cancellation ground a defence to an infringement suit.