The Designs (Amendment) Rules, 2021
Author – Bharat Sharma , Pallavi Paul
The recent amendment of the Designs Rules, 2021 was published by the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade), through its notification dated 25th January, 2021.
The notable features of the Amendment Rules are:
- RECOGNITION TO START-UPS
The Amendment Rules have given due recognition to start-ups and included the same in the category of applicants, in uniformity with Patent Rules, 2003 and The Trade Marks Rules, 2007 and have also reduced the fee-structure for such entities.
Indian entities will be perceived as start-ups by the competent authority under the Central Government’s startup scheme, under Rule 2(eb).
Foreign entities will also be perceived as start-ups by the competent authority, provided that it is a private limited company, LLP (limited liability partnership), or a partnership firm and the turn-over of the entity during the span of his business should not exceed 100 crores.
The entity would only be considered a start-up for a period of 10 years from the date of incorporation and if the entity is a recreation of the current business, then it would not come under the definition of start-up.
- REVISION OF FORM-1 (APPLICATION FOR REGISTRATION OF DESIGNS)
Till now, start-up entities were not included in the category of applicant. After the 2021 Amendment, start-ups have been included in the category of applicant and while filing an application under Form 1, the applicant will have the option to choose between four categories of applicant: Natural person, start-up, small entity and others.
- UPDATE OF FORM-24 (TO BE SUBMITTED FOR CLAIMING THE STATUS OF SMALL ENTITY)
Earlier, FORM 24 was used to claim the status of small entity which can now be used for claiming the status of start-ups as well. The Applicant has to file Form 24, along with a recognition certificate, from the Department for Promotion of Industrial Policy and Internal Trade to claim the status.
- COMMUNICATION OF INFORMATION VIA E-MAIL AND MOBILE NUMBER
Earlier, under Rule 4, an applicant/opponent could only be communicated, via the address of service in India. All the services pertaining to the design could only be communicated through address. But, after the 2021 amendment, keeping in mind the trend of digital communication, the amendment Rules made mandatory an Indian phone number to be provided at the time of recording an address of service of documents. Communication through mobile number is now considered as valid under Rule 4 of the 2021 Amendment Rules.
- REVISION OF FEES FOR TRANSFER OF RIGHTS
In case, the applicant wants to transfer his application of start-up, fully or partially, to any entity other than a natural person/small entity/start-up, the difference in fees (the difference in fees chargeable from the natural person/entity/start-up and the fees chargeable from the new entity) is to be paid by the new applicant, along with transfer request in accordance to Rule 5(2).
- DIMINUTION AND REVISION OF FEE STRUCTURE
The 2021 Amendment has led to the reduction of almost 50% of the fee payable by small entities. Earlier, the fees payable by small entities were higher than the fees payable by natural person and other entities.
As per the amendment, in lieu of first schedule natural person, small entities and start-ups are required to pay the same application fees.
In accordance with the fourth schedule, the scale of costs allowable by Controller in the proceedings have also been revised.
- ADOPTION OF CURRNT LOCARNO CLASSIFICATION SYSTEM
The Locarno Classification System published by WIPO, has been formally adopted in the Amendment Rules, 2021. Earlier, Indian Designs System maintained its own classification system which was in a way was in accordance with the Locarno Classification but the 2021 Amendment eliminates any scope of discrepancies that might have existed previously. The applicants can now take into consideration, the 13th edition of Locarno Classification (comprising of 31 classes and 237 sub-classes), that was brought to force on 1st January, 2021 before filing for design registration.
However, it is mandatory to get a design registered under Section 2(a) and 2(d) of the Act, apart from the article being classified under Locarno Classification as per Rule 10.
The changes made in the Amendment Rules, 2001 are positive and simplifies the process of registration of design in India. It treats start-ups, small entities, and natural persons on equal footing. The adaption of the Locarno Classification and reduced filing fees will prove to be advantageous to the applicants especially for start-ups and small entities in near future.