India’s accession to the Locarno Agreement in June 2019 (with the treaties effective since September 7, 2019) aims to harmonise the Indian classification system for industrial designs with the international system. At the same time India also acceded to the WIPO Nice Agreement and Vienna Agreements.
The Indian draft Designs (Amendment) Rules, 2019 propose to provide a classification in accordance with the “International classification for Industrial Designs (12th Edition)”. The benefits of this amendment may be enumerated as follows:
a) A single classification system facilitates better design searches for determining “novelty” criteria; and
b) Ease in classifying design applications to be filed in multiple jurisdictions. This will provide uniformity in the selection of class based on the Locarno system of classification, which will be applicable in various different jurisdictions.
The present Indian classification for industrial designs is based on the 10th Edition of the Locarno Classification and comprises 31 classes along with a miscellaneous Class 99.
Under the current classification system, Class 14-04 covers Screen Displays and Icons. With India’s accession to Locarno system of classification, based on the 12th edition of the Locarno Classification (containing 32 classes and 237 subclasses, with explanatory notes), the proposed amendment to the Rules will introduce a new Class 32 which will cover “Graphic symbols, logos, arrangement of the interior of a room, train interiors, boat interiors, shop interiors, graphic symbols and logos”.
In broad terms, “graphical user interface” is a form of user interface that allows users to interact with electronic devices through graphical icons or audio indicators such as primary notation, instead of text-based user interfaces, typed command labels or text navigation. Going by this definition, “screen displays and icons” will fall within the scope of “Graphical user interfaces” and should be protected under the new Class 32 as well as Class 14-04 of the present classification.
There are design registrations for “icons” which are now held as “bad precedents”…
However, the proposed Amendment to the Designs Rules will not alter the criteria for registration of industrial designs in India. The current requirements under Sections 2(a) and 2(d) of the Designs Act, 2000 (the Act) are as follows:
Section 2 (a), “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) design means only the features of shape, configuration, pattern, ornament or composition of lines or colors; and that Design has to be applied to an article.
Going by the above definitions, a Graphical User Interface and its components cannot be considered as:
a) An Article of manufacture
b) A design feature with static shape, configuration, pattern, ornament ——
The current view of the Indian Patent Office is that “GUIs” are not static when it comes to their visual existence. They exist only until such time as “there is a technical effect produced through a hardware means”.
Thus, while the proposed amendment to Designs Rules will provide for the categorisation of graphical user interfaces and the like according to the current version of the Locarno Agreement, it may still not be possible to register such designs in India if they fail the “static shape” test.
It’s time to “wait and watch”!
Incidentally, FICPI passed a Resolution at its World Congress in June 2018 calling for IP Authorities to ensure the availability of design protection for GUIs and Icons, provide clear guidelines for the filing of applications directed to GUIs and Icons, and to work towards international convergence of the criteria for the representation of such designs within a reasonable time-frame. (Congress Resolution CONGRESS/2018/RES/001). This Resolution was discussed with the Indian Patent Office during FICPI’s visit there last November.
Other proposed amendments in the Designs Rules, 2019
a) Recognition of Start-ups: Start-ups are proposed to be recognised as a separate category of Applicants for the purposes of filing design applications in India. Indian as well as foreign start-ups are eligible to claim this special status and avail themselves of the applicable benefits in terms of reductions in official fees.
b) Streamlining of official fee framework: The existing framework of official fees, comprising 3-tiers (full fee for large entities, 50% concession for small entities, and 75% concession for natural persons) is proposed to be replaced with a simpler 2-tier system: Full fee for large entities and 75% concession for applicants who are natural persons, start-ups or small entities.
FICPI’s view and involvement
FICPI’s focus on legal and professional excellence ensures that local members share their expertise with the global FICPI IP community through communications such as news articles, events and reports from meetings, to ensure the community as a whole benefits and can help their clients build IP value based on the latest laws and cases. An important facet of FICPI’s work is to develop positions to improve and safeguard the IP rights of members’ clients and then discuss those with the relevant bodies to try and bring about change.