Riyadh Ready: Harmonising India’s Design laws with Global Standards

Summary: India is aligning its design law with the Riyadh Treaty. The government has issued a new Concept Note that paves the way for global design harmonization and streamlined registration, including protection for GUIs, revised damages, access to the international Hague / WIPO registration system, and alignment of copyright and design laws.

Following India becoming a signatory to the Riyadh Design Law Treaty (“DLT”), discussed here, the Department for Promotion of Industry and Internal Trade (DPIIT) has released a Concept Note proposing substantial amendments to the Designs Act, 2000 and the Copyright Act, 1957.

The amendments propose a robust, balanced, and forward-looking legal framework for design protection, and also incentivise designers, and align Indian design law with international best practices. The proposed amendments also seek to ensure that India’s design law remains relevant in an evolving landscape characterised by digital innovation, virtual products and immersive consumer experiences.

The key proposed amendments to Designs Act, 2000 are summarised below:

1. Virtual Designs Protection – Recognizing the aesthetic and commercial importance of digital and virtual designs in modern consumer experiences across industries, the international practice of protecting graphical user interfaces (GUIs) under design laws, and long-standing stakeholder demands to extend design protection to such digital interfaces, the Concept Note proposes to expand the scope of “design” and “article” to include virtual and digital designs such as GUIs, icons, animations, and other immersive visual elements.Several aspects of this proposal warrant further consideration. For example, representation requirements for digital designs, particularly animations, need clarification, such as whether they should be depicted through a series of static images or video clips. It is also necessary to consider whether hardware depiction is mandatory to illustrate the digital design, given that the same design may be implemented across multiple devices such as phones, tablets, watches, and laptops.
2. Full Grace Period of 12 Months – The Concept Note proposes a blanket 12-month grace period for all pre-filing disclosures, in line with Article 7 of the DLT. The objective is to provide a uniform 12-month grace period without any pre-conditions, irrespective of the manner of disclosure.
3. Deferred Publication of Designs – Option to defer publication of registered designs for up to 30 months, in line with Article 10 of the DLT and the Hague Agreement.
4. Statutory Damages for Design Infringement – Statutory damages of up to INR 50 lakh for first-instance wilful infringement where actual damages are difficult to prove.
5. Revision of Term of Design Protection – Replacing the existing 10+5 term with a 5+5+5 term of protection, in line with Article 17 of the Hague Agreement.
6. Multiple Designs in a Single Application – Permitting filing of multiple designs in a single application, in line with Article 9 of the DLT.
7. Divisional Applications – Divisional applications to enable separation of designs during prosecution, in line with Article 9 of the DLT.
8. Accession to the Hague System – Enabling India to be designated under the Hague System and allowing Indian applicants to file international design applications through the World Intellectual Property Organisation (WIPO) system.
9. Accession to the DLT – Alignment of Indian design law with DLT provisions, including timeline extensions for convention filings and restoration of design rights.

The concept note also proposes amendments to reduce the conflict between the Designs Act, 2000 and the Copyright Act, 1957. Section 15(2) of the Copyright Act, 1957, as it stands presently, extinguishes copyright in a design once it is capable of registration and has been reproduced more than fifty times by an industrial process. The amendment proposes to allow copyright protection for designs that are capable of registration under the Designs Act but remain unregistered, while limiting the term of such copyright protection to 15 years.