Designs (Amendment) Rules, 2021 have been notified by Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) in the Official Gazette on January 25, 2021. Copy of the Designs (Amendment) Rules, 2021 can be accessed here.
Some notable amendments have been carried out under the New Rules, which are briefly discussed below:
1. Recognition to start-ups
Under the Trade Mark and Patent laws, startups have already been given recognition. Design laws are the new entrants in this list as under the Design Amendment Rules, 2021 startups have been given recognition and defined as:
“(eb) “startup” means-
(a) an entity in India recognised 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.”
To apply under the category of startup, the Indian applicant will be required to furnish the certificate of recognition from Department for Promotion of Industrial Policy and Internal Trade along with Form – 24.
In case of a foreign entity, Affidavit as evidence of eligibility along with supporting document and Form-24 needs to be filed.
2. Address for service
Address for service to now include e-mail address and mobile number registered in India, of the agent or applicant.
3. Fee payable in case of full or partial transfer of rights
In case an application processed by a natural person and/ or startup and/ or small entity is fully or partly transferred to a person other than a natural person, startup or small entity, the difference, if any, in the scale of fees between the fees charged from the natural person, startup or small entity and the fees chargeable from the person other than a natural person, startup or small entity in the same matter, shall be paid by the new applicant with the request for transfer.
However, it is important to note that where a startup or small entity, having filed an application for a design, ceases to be a startup or small entity due to the lapse of the period during which it is recognised by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no such difference in the scale of fees shall be payable.
4. Adoption of Locarno Classification
Till now the Indian Designs office had its own classification for Industrial Designs. Adoption of “International Classification for Industrial Designs (Locarno Classification)” published by World Intellectual Property Organization (WIPO) is in line with India’s accession to Locarno Agreement in June, 2019. For the purposes of design registration, the articles shall now be classified as per current edition of Locarno Classification, provided that registration of any design would be subject to the fulfillment of provisions of the Act specifically 2(a) (definitions of ‘article’) and 2(d) (definitions of ‘design’) under the Designs Act, 2000.
5. Reduction in fee payable by small entities and addition of startups
Good news for small entities, as there is reduction in fee payable by them. Earlier the fee payable was divided under three categories i.e. fee payable by natural person/individual, fee payable by small entity and fee payable by other entities. Under the New Rules, the fee payable by a natural person/individual, startup and small entity are same and fee payable by other entities is different, which is comparatively higher.
6. Changes made in the Fourth Schedule - Scale of costs
Changes have also been made in The Fourth Schedule which lays downs the Scale of costs allowable in proceedings before the Controller. As in the case of fees, the scale of costs allowable was also divided under three categories i.e. scale of cost to be awarded to a natural person/individual, scale of cost to be awarded to a small entity and scale of cost to be awarded to other entity(ies). Under the New Rules, the scale of cost for a natural person/individual or a startup or a small entity is the same and different for other entities.
Overall the amendments are positive.
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