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16 February 2021
India’s government has notified its Design (Amendment) Rules, 2021 in its Official Gazette on January 25, 2021.
The Design Amendment Rules streamline the application and prosecution procedures for industrial designs in India.
One of its most salient features is its adoption of the current edition of the Locarno Classification system by the World Intellectual Property Office.
“Previously, India followed its own classification system as provided for in the Designs Act. While efforts were made to keep the Indian classification in line with the Locarno system whenever it was updated, the very nature of following a separate classification system meant that there would naturally be a delay in updating the Indian classification if there were changes to the Locarno Classification. The amendment of the Rules to state that India will now follow the Locarno Classification is a welcome step that will likely remove any scope for confusion in terms of how articles may be classified in India,” said Nikhil Srivastava, senior associate at Selvam & Selvam in Tamil Nadu.
There are qualifications though.
Sneha Agarwal, senior associate at Obhan & Associates in New Delhi, explained: “Amended Rule 10(1) includes a proviso - registration of any design would be subject to the fulfillment of provisions of the Designs Act, 2000 specifically Section 2(a) and 2(d) of the Designs Act, 2000. Thus, even if a subject matter is included in Locarno Classification, it does not inherently become a subject matter eligible for design protection under the Designs Act. While this is in line with the practice followed prior to the amendment, the amended Rules have eliminated any doubts that existed previously.”
An example of a subject matter covered by the Locarno Classification but ineligible for protection under the Designs Act are Graphical User Interfaces (GUIs).
“The Design Office has, in the past, held that GUIs are not articles of manufacture - as required under Section 2(a) of the Designs Act - stating that a GUI is not a physical substance capable of being ‘made and sold separately,’ and has refused some such applications in the past,” said Srivastava. “While this may change over the years with expanded jurisprudence and India’s acceptance of the Locarno Classification, it is certainly something to keep an eye out for.”
The Design Amendment Rules also acknowledges startups as a separate category of industrial design applicants. It also provides rebates on official fees payable for startups.
In addition, it provides for individual, small entity or startup applicants to pay the same fees, in the amount of INR1,000 (US$14), among other important features.
Previously, small entities paid higher fees than did individual applicants - INR2,500 (US$34) per design for small entities as compared to INR 1000 (US$14) per design for individuals.
“In my view, the introduction of startups as a category of applicants for industrial designs will bring about uniformity in the filing process and procedures in India,” said Srivastava. “The trademarks and patents e-filing system has already created a separate category for startups for some years now. Filing as a small entity or startup came with certain benefits such as a 50% rebate on official filing fees, among others. However, in India, different processes and criteria are required for an entity to register as either a startup or a small entity - with different benefits as well - so there were many instances where entities which are registered as startups are not registered as small entities and vice versa. This meant that registered startups could not claim the reduction in official fees when applying for industrial design protection in India, as the law did not recognize this certification. The new Rules therefore streamline and harmonize the filing process/criteria for applicants in India.”
“Startups have been recognized under the ‘Startup India initiative’ of the Government of India,” said Agarwal. “Under this initiative, to promote entrepreneurship, a host of benefits are being provided to entities recognized as startups including tax benefits, easier compliance, IPR fast-tracking and more. Amendment in Design Rules to recognize ‘startups’ as a new category is an extension of this initiative. It was necessary to add ‘startups’ as a separate category as the eligibility criterion for a startup varies from that of a natural person or a small entity.”
Though he believes the reduction of official fees will make the Design Amendment Rules 2021 especially beneficial for Indian applicants, Srivastava said he is doubtful about its benefits to foreign applicants.
“I am not sure that the reduction in filing fees will be a major benefit, as the Rules require foreign applicants to produce some documentation to claim startup/small entity status. If a foreign entity seeks to claim startup status, the Rules also state that an affidavit must be submitted, which would also have to be notarized as per Indian practices. The costs of preparing and notarizing the affidavit to obtain the INR3,000 (US$41) rebate for startups may be far higher than simply filing the design application without claiming startup status,” Srivastava explained.
Nevertheless, Srivastava said any development which aims to standardize Indian practices with global ones should be a welcome move. The Design Amendment Rules’s adoption of the Locarno Classification in particular will allow foreign entities to more easily plan their design filings in India, he added.
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