From the powers conferred by Section 47 of the Designs Act, 2000, the Central Government amended the Designs Rules, 2001. On January 25th, 2021, The Ministry Commerce Industry published the Design (Amendment) Rules, 2021(“New Rules”) amending Design Rules, 2001 which have been earlier amended through Design (Amendment) Rules, 2014. Although the copies of the said Gazette were made available to the public on the 19th day of October, 2019 but they are deemed to come into effect from the date of being notified in the Official Gazette. The key Amendments are as follows:
1. Introduced the definition of Startups
Startups are defined under Rule 2(eb) of the Design Rules, 2021. The new rule defines startup as;
(a) an entity in India as a startup by the competent authority under Startup India initiative; and
(b) in case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation or registration as per Startup India Initiative and submitting declaration to that effect.
This rule is as a category of Applicant, in uniformity with Patents Rules 2003 and The Trade Marks Rules, 2017 that already start-ups as a category of Applicant. Now, an Applicant having a legal recognition of a statue can claim benefit of reduced fee structure under Design as well. Also, a Foreign Applicant in order to claim benefit of being a startup, has to submit an affidavit, along with supporting documents. To calculate the turnover, the foreign currency rates of the Reserve Bank of India would prevail.
2. Authorization of latest Locarno Classification
Earlier, In the Third Schedule, the Indian Designs Office maintained its own Classification system which was 10th edition of the Locarno Classification which comprised of 31 classes and a miscellaneous Class 99 but now, Rule 10 of the New Rules confers that Design Applications shall be classified as per the current edition of ‘International Classification for Industrial Designs (Locarno Classification)’ published by World Intellectual Property Organization. On January 1st, 2021, the 13th Edition of Locarno Classification was adopted by the WIPO. The latest edition of Locarno classification contains 32 classes and 237 subclasses, with explanatory notes.
Using the current edition for classification would avoid confusion related to nature and use of the articles and would facilitates the filing of the Design Applications by using the best suitable classes/sub-classes for designs pertaining to newly developed articles.
3. Revised Fee Schedule as mention in First Schedule and Cost in Fourth Schedule
Earlier, Fee Schedule per application for Natural persons, start-ups and small entities varied according to the Applicant but, per the amended First Schedule, Natural persons, start-ups, and small entities are now all the Applicants are divided into two categories in which the First category has a concession of 75% in the official fee in comparison to the second category of Other than Natural person(s)/Startup(s)/Small (y)/(). This amendment would lead to a small entity and start up benefiting from lower fees than under the present Designs Rules, 2001.
4. Service Communications
Under rule 4 address for service shall include e-mail address and mobile number registered in India, of the agent or applicant.
5. Revising Form 1 and Form 24
Form 1 has been revised to include Start-up as a category of Applicant. As per the Amendment Rules under Form 1, and now four categories of Applicant are included:
(1) Natural Person,
(3) Small Entity, and
Form 24, which was earlier introduced, for claiming the status of small entity has been amended to claim the status of either a small entity or a start-up.
6.Transfer of Rights
Under Rule 5(2), in case of transfer of the application of a startup to an entity other than a natural person/small entity /start-up, the difference in the fees is to be paid by the new applicant along with the request for transfer of rights.