After Riyadh: The future of India’s design laws

Brief summary: WIPO members, including India, recently signed a new Design Law Treaty at Riyadh, which harmonises design protection processes globally, and introduces a standardised framework for design registration. This note discusses key provisions of the treaty and its implications for the future of Indian design law.

After 20 years of negotiation, in November 2024, the member states of the World Intellectual Property Organization (WIPO) signed and adopted the 28th WIPO Treaty—the Riyadh Design Law Treaty (DLT) at a historic conference in Saudi Arabia. The next stage for the DLT is ratification, which requires 15 contracting parties for it to enter into force, and the DLT shall enter into force three months thereafter.

India, too, is a signatory to the DLT, which makes it easier, faster, and more affordable to obtain design registrations, both at home and abroad. A key target group for the DLT is micro, small and medium enterprises (MSMEs), startups, and independent designers.

The DLT is a procedural document, and contracting states are free to prescribe substantive law provisions relating to industrial designs as they wish. The main purpose of the treaty is to harmonize industrial design protection processes globally by introducing a standardized framework for design registration, reducing complexity and administrative burdens for applicants.

Key provisions of the DLT

• Exhaustive / maximum list of information to be submitted with an application.
• Choice of design representation (e.g., drawing, photograph, or, if admitted, video).
• Multiple designs in a single application (under certain conditions).
• Minimum requirements for grant of a filing date
• Grace period of 12 months after first disclosure, which will not impact validity for registration.
• Post-filing date, designs may remain unpublished for at least six months.
• Discretionary reliefs for missing deadlines
• Simplified renewal procedure
• E-filing systems and electronic exchange of priority documents.

Some of these procedural changes are significant improvements on existing domestic procedural requirements, and will likely have far-reaching impact, if fully adopted. This is because design rights are relatively far more vulnerable than other kinds of intellectual property rights, e.g., postponing a filing date can result in a definitive loss of design rights; missing a time limit can also result in an irreparable loss of rights.

Grace Period (Article 7)

Grace period, dealt with under Article 7 of the DLT, refers to the time granted to applicants to file a design application after first disclosure, during which time such disclosure will not be deemed to have affected the validity for seeking registration.

While the United States and the European Union (EU) recognize a 12-month grace period, China and India only offer a six-month grace period under specific circumstances. In India, specifically, this six-month grace period is available only if:

• the design is disclosed, used, or published in an exhibition notified by the government;
• the exhibitor exhibiting the design or article gives prior notice to the controller of designs; and
• the application for the design is filed within six months of the first exhibition of the design.

The conditions applicable for availing this grace period are clearly extremely stringent, and to the extent known, this provision has never been used in India.

DLT provides for a grace period of 12 months preceding the date of filing of the application or, if priority is claimed, the date of priority, without prejudice to the novelty and/or originality and, as the case may be, individual character or non-obviousness, of the design, where the disclosure was made. This grace period may be obtained by the creator or their successor in title, or by a person who obtained the disclosed information directly or indirectly, including as a result of an abuse, from the creator or their successor in title.

Thus, DLT provides a 12-month grace period, without requiring any preconditions or disclosures to be made by the applicant at the time of registration; it is also not limited to certain acts or circumstances.

While contracting states are not bound by this provision, should India choose to adopt Article 7 fully, the provision will assist particularly individual designers, start-ups, and MSMEs in avoiding an inadvertent loss of rights. Such parties often find themselves having lost the opportunity to file a design application because of a prior disclosure. Also, a broader scope for grace periods will not only support domestic designers but also attract foreign applicants who may benefit from similar provisions in their home jurisdictions.

Division of Application (Article 9)

The DLT, in Article 9, provides that if a design application includes more than one industrial design, and if the Contracting Party does not allow more than one industrial design in an application, the Office may require the applicant, at the option of the applicant, to either amend the initial application to comply with those conditions or divide the initial application into two or more divisional applications.

Presently, India allows an applicant to amend the application and select one design, but there is no provision for filing divisional applications. The advised practice, therefore, is for applicants to file multiple applications at the stage of filing itself. If this provision is adopted by India, it will provide much-needed relief to the applicants, and applicants may not have to undertake an upfront cost of filing multiple applications, and may defer the selection of the design for which the applicant would like to claim protection.

Deferral of Publication (Article 10)

To secure an early priority date, applicants try to file the application as soon as possible, and at times at the design stage itself. This comes at the cost of early public disclosure of the design, before even the product is introduced in the market, as product development may take a significant amount of time. The DLT has clearly taken cognizance of this concern, and includes a provision for filing a request for deferment of publication of design. This will surely boost the startup and MSME ecosystem in India, which often faces delays in the development and launch of products due to a shortage of capital or fund crunches, and will grant flexibility in the launch of the final product.

Presently, Indian design law does not have an equivalent provision, i.e., for requesting deferment of publication. This will be an entirely new procedural step for India, if it gets adopted here, and will help applicants defer publication.

Disclosure Requirements (Article 42)

Article 4(2) of the DLT provides that a contracting party may require that an application contain an indication of any prior application or registration, or of other information, including information on traditional cultural expressions and traditional knowledge, of which the applicant is aware, that is relevant to the eligibility for registration of the industrial design.

In India, there are presently no disclosure requirements. Should India mandate such disclosure, it is reasonable to expect that the applicants may find it an additional hurdle to obtaining design rights, which is counter to the purposes of implementing the DLT.

Conclusion

It remains to be seen how and when these provisions of DLT are implemented. However, the DLT, when combined with initiatives like the Startup India program and the Startups Intellectual Property Protection scheme, will empower startups and MSMEs to secure design rights globally, boosting their competitiveness and supporting market growth.