[This post is authored by SpicyIP intern Kartikeya Srivastava. Kartikeya is a second-year law student in the LL.B. course at NLSIU Bangalore. Having freelanced as a patent research analyst, he developed an interest in patent prosecution and in exploring the Patents Act through various interpretative approaches. He is currently engaged in WIPO-Harvard Law School Course in Patent Law and Global Public Health. His previous posts can be accessed here.]

It took nearly two decades of negotiation, but member states of the World Intellectual Property Organization (WIPO) have finally adopted the landmark Design Law Treaty (DLT) during the Diplomatic Conference in Riyadh on November 22. By being a signatory to the treaty, India has reaffirmed its position as a leader in Intellectual Property Rights, championing equitable access to such IP protections. This Treaty was long overdue and marks a significant step towards harmonizing procedural frameworks for industrial designs. This post will highlight the key points of the Treaty which may impact India. It will also mention one of the key issues with the current Designs Act, 2000, as it may be a good opportunity to strengthen the legal framework around industrial designs in the country.  

Key Points of the Treaty

This treaty primarily focuses on relaxing and simplifying procedural requirements, especially benefiting small and medium-sized enterprises (SMEs), startups, and independent designers. The Articles that were proposed in the Treaty can be accessed here. It includes reinstatement of lost rights and extension of missed deadlines. Multiple designs within a simple application will now be possible under the DLT, subject to specific conditions. Applicants will be given an opportunity to modify and add priority claims in their applications. It also encourages member states to use electronic filing systems and facilitate the exchange of priority documents.

In the Indian context, one of the most significant aspects of the DLT is its inclination to protect traditional knowledge (TK). This is achieved through a provision under which contracting parties may require applicants to file information on traditional cultural expressions and traditional knowledge relevant to the eligibility for registration of the design. Interestingly, on May 24, 2024, the World Intellectual Property Organization (WIPO), adopted the historic new Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge. Article 3.2 of the Treaty provided mandatory disclosure of Traditional Knowledge in patent applications (discussed here by Praharsh). Subsequently, the Department for Promotion of Industry and Internal Trade (DPIIT) has informed its intention to amend Section 10 dealing with “Content of Specification” of the Indian Patents Act, 1970. This is especially important for countries like India where cultural heritage and traditional knowledge play a pivotal role. Below is an example to explain how this disclosure provision may be significant in the protection of traditional knowledge.

Consider a scenario involving the intricate Phulkari embroidery of Punjab. This traditional craft is of tremendous cultural value in North India and has been practiced for centuries. Given the recent trend of modern brands commercializing traditional designs, such art and craft are vulnerable to exploitation without proper IP protection. As per the DLT, if an international brand seeks to register a design involving Phulkari embroidery, it may need to disclose any traditional knowledge associated with it. This provision would enable the authorities to assess whether the design is rooted in traditional culture and whether the applicant has obtained appropriate permissions or recognized the original creators. Additionally, this framework could facilitate the development of databases or registries of traditional knowledge (Traditional Knowledge Digital Library ‘TKDL’) helping indigenous communities document their heritage better.

Further, the DLT provides for countries to decide whether they need to protect partial designs, giving more flexibility for framing the provision as per their national policies. A provision for a 12-month grace period has been inserted, following a first disclosure of the design, during which such disclosure will not affect its validity for registration. This is subject to some reservations. The proposal for a 15-year term of protection was rejected, allowing member states to decide the term of protection. The DLT will allow applicants to keep their designs unpublished for at least six months after having secured a filing date. Finally, it sets a maximum list of indications or elements that designers must submit with an application. While the treaty encourages flexibility, it also highlights gaps in India’s compliance with international standards, particularly in cases involving GUIs.

Indian Design Law and Compliance with the Locarno Classification

India’s design law is governed by the Designs Act, 2000. The government introduced the Designs (Amendment) Rules in 2021 to update the legal framework regarding industrial designs in the country. However, one of the issues is still prevalent in the country regarding the registration and protection of industrial designs, especially when the India legal framework is compared with international standards. India became a signatory of the Locarno Classification in June 2019. The amended Rule 10(1) includes a proviso, “registration of any design would be subject to the fulfilment of provisions of the Designs Act, 2000 specifically Section 2(a) and 2(d) of the Designs Act, 2000.” Find a screenshot of the relevant Sections below.

Even though Class 14-04 of the Locarno Classification mentions “SCREEN DISPLAYS AND ICONS” for design registration, the Indian stance has always been in the negative for its registration. According to the Designs Office, registration of Graphical User Interfaces (GUIs) and icons violate Section 2(a) and 2(d) of the Designs Act. Class 32 has been added in the latest edition of the Locarno Classification, which specifically mentions “Graphic symbols and logos, surface patterns, ornamentation”. In 2023, Calcutta High Court gave a landmark decision, (covered here by Anjali) where it held in favour of the appellant for registration of a design titled “Touch Screen” for a novel surface ornamentation, which is a Graphical User Interface (GUI). It held that GUIs are registrable under Section 2(a) and 2(d) of the Designs Act and under Class 32 of the Locarno Classification. This contradicts existing jurisprudence on GUI registration in India. While this gives new hope for industrial design protection in India, it is important to highlight Section 15 of the Copyright Act, which specifies that copyright shall cease to exist on a work eligible for design protection if the article to which the design is applied is reproduced more than fifty times by an industrial process. Given the ease in mass reproduction of GUIs, Section 15 will play a crucial role as GUIs will lose copyright protection after fifty reproductions.

Way Forward

Building on the treaty’s emphasis on flexibility and cultural heritage, India has an opportunity to modernize its legal framework to align with global norms. Key provisions such as procedural flexibility, protection of traditional knowledge, and support for SMEs and startups can significantly enhance India’s design ecosystem. The Treaty’s emphasis on safeguarding cultural expressions will help protect India’s rich heritage while fostering innovation. However, challenges persist, particularly in integrating emerging design elements like Graphical User Interfaces (GUIs) within the existing Designs Act, 2000 and complying with international standards. This is a good opportunity for the government to clear some ambiguities in the legal framework regarding industrial designs in India and rectify it to make it more accessible. This is imperative for India’s aim of becoming an undisputed global leader in Intellectual Property Rights.