India’s Accession to the Locarno Agreement: Amendments to the Design Rules, 2001 & Other Impacts

We are pleased to bring you a guest post by Yashi Agrawal on India’s recent accession to the Locarno Agreement, discussing inter alia the resultant amendments to India’s design laws and prospective benefits to India on becoming a part of the Locarno Special Union and Assembly. Yashi is a fourth year student at the Maharashtra National Law University, Nagpur.

India’s Accession to the Locarno Agreement: Amendments to the Design Rules, 2001 & Other Impacts

Yashi Agrawal

June 7, 2019 was a breakthrough moment for India as it finally formally acceded to the Locarno Agreement establishing an International Classification for Industrial Designs (See) becoming the 57th member of the Agreement. In furtherance to this, the Design Rules, 2001 were amended as on 25 January 2021 through the introduction of Design (Amendment) Rules, 2021. By virtue of this amendment, Rule 10 of the 2001 Rules which dealt with ‘classification of goods’ was amended so as to classify all articles in accordance with the “current edition of International Classification for Industrial Designs (Locarno Classification) published by World Intellectual Property Organization (WIPO)”.

India and the Locarno Agreement

Even though India’s accession to the Locarno Agreement is very recent, its relationship with the Locarno Classification dates back to 2008, when through the Design (Amendment) Rules, 2008, the 10th edition of the Locarno Classification system was incorporated in the 2001 Rules. Prior to this, in India, designs were regulated by the Design Act, 1911. This legislation also classified designs, but unlike the Locarno Agreement, the designs were classified according to the material the product was made of. India was not using the universally accepted classification system which was causing a major impediment to foreign applicants while protecting their designs in India. The adoption of the Locarno Classification eliminated chances for reclassification of applications filed in multiple jurisdictions. Design rights like most IP rights are territorial rights. Hence, separate applications have to be filed in each jurisdiction where the applicant seeks design protection. In addition to aligning India with international norms, it also facilitated design searches. Before the adoption of the 2000 Act, applicants were compelled to reclassify their applications according to the classification standards which were followed in India. Since foreign applicants had to study the Indian classification system separate from the internationally recognized classification standards, chances for rejection of applications became higher, preventing them from choosing India as a potential jurisdiction for design registration. Subsequently, the Design Act of 2000 was adopted, which made Indian law TRIPS compliant by introducing several reforms to the pre-existing legal position, such as introduction of the concept of ‘absolute novelty’ under Section 4, according to which novelty became an indispensable criterion for registering designs. In order to satisfy the criteria of novelty, a prior art search was required. Hence, similar to patents, after the introduction of the 2000 Act, an international design search became essential. This spurred the need for adopting a uniform classification system to facilitate design search. Thus, the 2000 Act inherently adopted the Locarno Classification system in which designs were classified according to the subject matter of the design.

With all of the above in perspective, the question is, if India adopted the Locarno Classification without being a member to the Agreement, was becoming a member even necessary? I believe, it was important for India to become a member to the Agreement due to the benefits it has to offer to India, as described below in detail.

Benefits of the Agreement to India

According to Article 1 of the Agreement, all countries which are party to the Agreement constitute a Special Union which adopt the international classification comprising:

  1. A list of classes and subclasses
  2. An Alphabetical list of goods in which industrial designs are incorporated, with an indication of the classes and subclasses into which they fall
  3. Explanatory notes

There is also a Committee of Experts. Each country of the Special Union is represented on the Committee of Experts. The Committee is finally organized according to the rules of procedure adopted by a simple majority of the countries which are represented. The content of the international classification is adopted by the Committee. They also have the power to amend or supplement the classification. They can be made by a simple majority of the countries of the Special Union, although unanimity is required for the setting up of a new class or transferring any good from one class to another (Article 3).

India’s benefits from formal accession to the agreement emanates from the main tasks of the Assembly and the Committee of Experts (See). India is a member of the Locarno Union or the Special Union and hence, is also the member of the Assembly (See). The objectives of the Assembly are provided in Article 5 of the Locarno Agreement. Amongst the many important functions which the Assembly is entrusted with, its most important task is to determine the program and adopt the biennial budget of the Union In other words, the Assembly manages the finances and other budgetary obligations of the Union. Thus, India, by becoming an active member of the assembly, would be empowered to vote with regards to all the monitory decisions of the Union. It can ensure that no such decision is detrimental to India’s growth and also to the international relationship India shares with its allies enhancing India’s position globally.

Similarly, the objectives of the Committee of Experts have been provided in Article 2 of the Agreement.  Its primary task is to revise the classifications periodically. For amending or adding international classifications, a proposal may be made by any country of the special union and subsequently a decision would be arrived at by a simple majority of the countries of Special Union or unanimity in cases of setting up of a new class or any transfer of goods from one class to another. The Agreement also provides the liberty to members of the Special Union to use the international classification as a principal or as a subsidiary system. (Article 2) In other words, the Locarno Agreement does not impose a strict obligation to adopt the international classification verbatim or as a ‘principal system’. Countries can flexibly adopt any such classifications which they deem fit by adopting Locarno Classification as a ‘subsidiary system’. However, such flexibility is allowed only to the extent that the spirit of the classification system is not defeated.  This further adds a layer of advantage to India as even after becoming a member to the Agreement, India would have the liberty to exercise its sovereignty over the classification system. In other words, India could still modify the system according to its suitability.  Hence, joining the Locarno Agreement is suitable for India as despite being a member, India would have the autonomy to take independent decisions.

India And the Global Innovation Index

On June 7, 2019, Mr. Francis Gurry, WIPO Director General received India’s instruments of accession to the Locarno Agreement from Ambassador Rajiv K. Chander, India’s Ambassador and Permanent Representative to the UN and other International Organizations in Geneva. Mr. Chander said, “In recent years, we’ve had a substantial jump in the Global Innovation Index ranking of India. And I’m sure these treaties would also be a major step in that direction of improving India’s competitiveness.” (here)  India has been showing a consistent improvement in its ranking in the Global Innovation Index. In 2015, India ranked 81 out of 141 countries. In 2019, it improved from 76 in the year 2014 to 57 (here). In 2020, India was ranked at 48 out of 131 countries. (here) With this, India entered the list of top 50 innovative countries in the WIPO annual ranking.  The aim of Global Innovation Index is to facilitate the production of insightful data on innovation such that it assists countries in the evaluation of their innovation performance. India’s statistics show that slowly and gradually India is climbing the ladders of becoming one of those countries which foster and facilitate innovation. Accession to the Locarno Agreement is a further step forward to India’s innovation goals.

Finally, Locarno Agreement is one of the many WIPO-Administered Treaties. This means that the WIPO will administer its role and extend its facilities to all the members of the Agreement. India’s accession has indeed strengthened India’s relation with WIPO as was also pointed out by Ambassador Rajiv K. Chander, who said, “This is a big event in India’s intellectual property rights space… This also shows that our relations with WIPO are getting stronger and increasing and we are confident that this trend will continue in the coming years.”

All these reasons make India a much more desirable country for registering designs, hence, widening opportunities for innovation, business growth, and foreign investment.

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