International Instruments on Industrial Designs

1. Paris Convention for the Protection of Industrial Property, 1883

Industrial designs are listed among the objects of industrial property in Article 1(2). The relevant rules are:

• National treatment (Article 2): nationals of one Union country receive in every other the protection given to its own nationals.
• Right of priority (Article 4): an applicant who files a design in one Union country has six months to file in others with the benefit of the first filing date. India gives effect to this in section 44 of the Designs Act.
• Article 5quinquies: “Industrial designs shall be protected in all the countries of the Union.” The form of protection (design law, copyright or unfair competition) is left to each country.
• Article 5B: protection of designs may not be forfeited for failure to work or for importing articles corresponding to the design.
• Article 11: temporary protection for designs shown at official international exhibitions.

India has been a member of the Paris Union since 1998.

2. Berne Convention, Article 2(7)

Berne leaves it to member countries to decide how far their laws apply to works of applied art and industrial designs and models. Works protected in the country of origin solely as designs may claim in another country only the special protection that country gives to designs; if no such special protection exists there, they are protected as artistic works. This is the international source of the copyright–design boundary discussed in the note on section 15.

3. The Hague system for international registration

The Hague Agreement Concerning the International Deposit (later Registration) of Industrial Designs was concluded in 1925. It now operates through two Acts:

• the Hague Act of 1960; and
• the Geneva Act of 1999, which made the system attractive to examining countries (by allowing longer refusal periods and individual fees) and to intergovernmental organisations such as the EU.

The London Act of 1934 has been frozen and no longer governs new designations. Under the system:

1. An applicant files one international application at WIPO, in one language, with one set of fees, designating the contracting parties where protection is sought.
2. The International Bureau checks formalities, records the design in the International Register and publishes it in the International Designs Bulletin.
3. Each designated office may refuse protection within the prescribed period on substantive grounds under its own law; otherwise the registration has the effect of a national grant.
4. Up to 100 designs can be included in one application if they belong to the same Locarno class.
5. The Geneva Act requires a minimum term of fifteen years, made up of five-year periods.

The United States, Japan, Korea, China and the EU are members. India is not.

4. Locarno Agreement, 1968

The Locarno Agreement establishes an International Classification for Industrial Designs, a list of classes and subclasses with an alphabetical list of goods. It is administrative: it does not bind members on the scope of protection. India, though not a Locarno member, adopted the Locarno classes through the Designs Rules in 2008, which makes Indian searches and records comparable with other offices.

5. TRIPS Agreement, 1994: Articles 25 and 26

• Article 25(1): members shall protect independently created industrial designs that are new or original. They may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features, and they may exclude designs dictated essentially by technical or functional considerations. India’s section 4(c) copies this language.
• Article 25(2): requirements for protecting textile designs, particularly cost, examination or publication, must not unreasonably impair the opportunity to seek protection. Members may meet this through design law or copyright.
• Article 26(1): the owner may prevent third parties without consent from making, selling or importing articles bearing or embodying a design that is a copy, or substantially a copy, of the protected design, when done for commercial purposes.
• Article 26(2): limited exceptions are allowed if they do not unreasonably conflict with normal exploitation and do not unreasonably prejudice the owner’s legitimate interests, taking account of third parties.
• Article 26(3): the term of protection must be at least ten years.

TRIPS also brings design disputes within WTO dispute settlement and applies the enforcement obligations of Part III (civil remedies, provisional measures and, for counterfeit goods, criminal procedures and border measures, though the mandatory criminal and border obligations are framed around trade marks and copyright).

6. Design Law Treaty, 2024

WIPO members adopted the Riyadh Design Law Treaty in November 2024. Like the Patent Law Treaty and the Singapore Treaty on trade marks, it harmonises formalities, not substance: the contents of an application, the forms of representation, filing-date requirements, relief from missed time limits, and a grace period during which the applicant’s own disclosure does not destroy novelty. India took part in the negotiations. If India joins, it will need to add a grace period to section 4.

7. Regional systems

The EU’s registered and unregistered Community design (now “EU design” after the 2024 reform) is the leading regional system; the African Regional Intellectual Property Organization and the Benelux Office also grant regional designs. These matter to Indian exporters because a single EU filing covers the whole single market.

How this is examined

As a 16-mark note or as part of a question on design law and TRIPS. List the instruments with years, give two or three rules each with article numbers, explain the Hague procedure step by step, and finish with India’s position and the case for and against joining Hague.