Reforms In The Indian Designs Act

Indian Design Office, placed among top ten design offices across the world, registered the highest growth rate among the top twenty jurisdictions in 2024 in terms of filings of design applications¹. However, the Indian Designs Act, 2000 ('the Designs Act') which came into being more than twenty five years ago, has not seen any substantial amendments since its passing.

With the objective of modernising India's design protection framework and aligning it with international best practices, the Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce & Industry, has recently released a Concept Note ('the Note') proposing amendments to the Designs Act. This article aims to capture the proposed reforms in the Designs Act.

Virtual Design Protection

The current design framework only protects tangible objects and visual features applied to such objects. However, with the ongoing evolution of technology, design protection is not limited to physical goods. To address the gap in protection of virtual designs subsisting in graphical user interfaces, icons, animated characters and immersive virtual environments, the Note proposes to clarify and modernise the definitions of "design" and "article" to expressly enable protection of virtual designs, independent of any physical carrier.

DPIIT has proposed expanding the definition of "design" by broadening the scope as well as meaning of "industrial process" and by expressly including animation, movement, and transition. It has also proposed revising the definition of "article" to expressly cover items in physical or non-physical form, including graphical user interfaces, icons, graphic symbols, typefaces, augmented reality graphical user interfaces, and other virtual products.

Design-Copyright Interface

The Note also proposes to resolve the conflict due to overlap in protection under the Designs Act as well as the Copyright Act, 1957 ('the Copyright Act'). As per the current regime, while a design that is registered under the Designs Act is expressly excluded from copyright protection², there is ambiguity in relation to works that are capable of being registered as designs but which have not been so registered and are applied to articles through an industrial process. Section 15(2) of the Copyright Act says that copyright protection for designs that are registrable under the Designs Act but remain unregistered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process.

As the term of protection granted under the Copyright Act is longer than the term of designs registered under the Designs Act, applicants, in certain instances, try to seek protection under the Copyright Act of designs which are otherwise capable of registration under the Designs Act. To address this concern, the Note proposes amending Section 15(2) in a way that it restricts the duration of such copyright protection to fifteen years only. By aligning the term of protection with commercial lifespan of designs, any attempts to claim long term copyright monopolies over the subject matter should be reasonably prevented.

Full Grace Period

The Designs Act currently provides a limited exception of disclosure i.e., a six months grace period in cases where the disclosure is made at exhibitions notified by Central Government³. However, in today's age, as designs are commonly disclosed through online launches, investor presentations, pilot sales, crowdfunding platforms, academic publications, and digital marketplaces, a much broader grace period provision is warranted to accommodate such disclosures. Therefore, the Note proposes a blanket grace period of twelve months without any pre-conditions, and regardless of the manner of disclosure.

Deferment of Publication

As per the current provisions of the Designs Act, designs are published immediately upon registration and there is no provision for deferred publication. However, sometimes it is crucial for the applicants to keep their designs confidential until their product is ready for launch as early disclosure could compromise commercial strategy, reveal their strategic intent, or expose products to copying before market entry.

Therefore, the DPIIT has proposed to introduce a mechanism for deferred publication of registered designs, for a maximum period of thirty months, at the request of the applicant. This will not only protect the interests of the applicants, but it will also align India's design protection regime with widely followed international standards.

The Note also clarifies that the applicants who decide not to proceed with publication would need to surrender their design registration at least one month before the expiry of the deferment period. In such cases, the design will not be published and the related documents will remain confidential.

DPIIT has also suggested incorporating an innocent infringer defense under law, which would apply if a registered design is infringed during the deferment period when the design is not publicly available and the third party is unaware of its protection. This will allow the defendant to show that they had no knowledge, and no reasonable way to know, that the design was registered.

Statutory Damages

As the Designs Act currently does not provide criminal remedies for infringement, the Note proposes a maximum damages of fifty lakhs for first instance of infringement, in cases where proving actual damages is difficult or impractical.

Term of Protection

The Designs Act grants initial protection for ten years, which can be renewed for a further period of five years. To align with the Hague Agreement, the Note proposes an initial term of five years (for both national as well as Hague applications), with the option of two successive renewals of five years each. The intention is to allow designs which are no longer of any value to design owners to lapse and fall into public domain sooner, while simultaneously protecting those where continued protection is desired by the design owners.

Multiple Designs in Single Application

India currently does not allow filing of multiple design variants in a single application, unlike many other international systems such as the EU, UK, and the Hague System. To reduce filing costs and administrative effort for applicants, the Note proposes filing of multiple designs falling in the same class under a single design application.

Division of Applications

If multiple distinct designs are claimed in a single filing, all designs will face delay in registration due to issues with any one of such designs. To address this issue, the Note proposes divisional applications allowing an applicant to split a pending design application into one or more separate applications.

Access to Hague Agreement and Riyadh Design Law Treaty

DPIIT has proposed that India become a part of the Hague System of designs and introduces a dedicated chapter in the Designs Act to implement the provisions of the Hague Agreement. Doing so would allow Indian applicants to seek design protection in several countries by way of filing a single application through WIPO and foreign designers to seek protection in India by designating India under their international application with WIPO.

DPIIT has also proposed that India accede to Riyadh Design Law Treaty, which was signed by India in 2024. In fact, most of the changes as proposed above, are in line with India's obligations under the treaty.

Conclusion

Considering the advancements in technology and the framework of design protection globally, amendments to the Designs Act are likely to benefit the applicants positively. The amendments extend the protection to virtual designs, simplify and improve the existing procedural efficiency, strengthen enforcement and promotes accession to the Hague Agreement and the Riyadh Design Law Treaty.

The Note has currently been placed in public domain for consultation with the stakeholders. After receiving inputs from public, DPIIT will likely formulate formal amendments to the Designs Act, incorporating the above changes.

Footnotes

1. https://www.wipo.int/publications/en/details.jsp?id=4822

2. Section 15(1) of the Copyright Act, 1957

3. Section 21 of the Designs Act.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.