Six months after it became a signatory to the Locarno Agreement (which establishes a classification for industrial designs), on 25 January 2021, India notified the Design (Amendment) Rules, 2021 to formally adopt the "Locarno Classification".
The previous Design Rules already provided for a design classification which was essentially based on the 10th edition of the Locarno Classification, even when India was not a signatory to the Locarno Agreement. The new amended Rule 10(1) clarifies that the designs will now be formally classified as per the current edition of Locarno Classification, as published by World Intellectual Property Organization (WIPO).
Although amended Rule 10 (1) seeks to adopt the Locarno Classification, this adoption is not without qualification. Amended Rule 10(1) includes a proviso, I.e., "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."
As per Section 2 (a), an "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately. Section 2(d) provides at least the following conditions, amongst other things, should be satisfied for the "design" to be registrable:
- Design means only the features of shape, configuration, pattern, ornament or composition of lines or colors; and
- Design has to be applied to an article.
Thus, even if a subject matter is included in the Locarno Classification, it does not automatically become a subject matter eligible for design protection under the Designs Act, 2000. While this is in line with the practice followed before the amendment, the amended Rules have eliminated any doubts that existed previously. In practice, this amendment adds nothing new to what was already being followed in design registrations in India.
Design Registration of GUIs and Icons
The presently amended rules are specifically relevant for design registration of "screen displays" and "icons" provided under Class 14-04 of the Locarno Classification. The Designs Office has consistently refused design registration of Graphical User Interfaces (GUIs) and icons even if they formed a part of 10th edition of the Locarno Classification and introduced in "Class 14-04: Screen Display and Icons" in the amendment of 2008, stating that, "GUIs and icons do not meet the requirements of Section 2(a) and 2(d) of the Designs Act, 2000".
With the present amendments, it appears that the acceptance of design registration for GUIs and icons has been formally kept in abeyance.
Addition of Class 32
The current edition of Locarno classification contains 32 classes and 237 subclasses, with explanatory notes. The amended rules will introduce a new Class 32: Graphic symbols and logos, surface patterns, ornamentation. The class includes designs of graphic symbols, logos, arrangement of the interior of a room, train interior, boat interior, shop interior, logos, and so on.
It remains to be seen whether or not the Designs Office takes a view that these designs meet the definition of "article" and "design" in Section 2(a) and Section 2(d) of the Designs Act, respectively, and allows them to be registered.
Originally Published by Obhan & Associates, February 2021
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