2D Designs – Their Viability in India

Designs

Under the law of designs in India, only the features of shape, configuration, pattern, ornament or composition of lines or colours, applied to an article, in either two-dimensional or three-dimensional or both forms, are eligible for protection.

Rights in a design accrue only on registration, which confers on its proprietor the exclusive right to apply the protected design to the concerned article for the period of registration.

Three-dimensional design registrations are quite prevalent in India. This post focuses on the road less travelled – registrability of two-dimensional designs in India.

Goods/ articles to which designs are applied are classified into classes and sub-classes under the Indian design law. The classification of goods followed by India is a prototype of an International Classification for Industrial Designs established by the Locarno Agreement (hereinafter “Locarno Classification”), to which India is not a signatory. Under the Indian classification, goods fall under thirty-one (31) classes. The Locarno Classification, on the contrary, comprises of thirty-two (32) classes, the last class being for “graphic symbols and logos, surface patterns, ornamentation”. This additional class in the Locarno Classification, in effect, addresses two-dimensional designs.

While three-dimensional designs can be easily classified into one of the 31 classes, classifying two-dimensional designs in India creates hurdles. Since there is no specific class that is akin to Class 32 of the Locarno Classification in India, a proprietor of a two-dimensional design application is very likely to receive an objection of misclassification from the Designs Office.

Further, since India does not accord design protection to graphic symbols, logos, surface patterns, ornamentation by themselves, i.e. in isolation of an article, claiming priority from a foreign design application filed in Class 32 is bound to attract an office action regarding the inconsistency in the particulars.

Insofar as the depiction of a design in India is concerned, ordinarily the Designs Office requires an applicant of a three-dimensional design to depict four to six views of the design (applied to the article) in which rights are claimed. It is yet to be tested whether a single view of a two-dimensional design hinders the registration process.

As against some jurisdictions, such as the European Union, where design rights can be accorded even to logos, the existence of an article carrying the design is a quintessential requirement under the design law in India. Further, rights to the exclusive use of any words, letters or numerals forming part of a design must mandatorily be disclaimed from the design in India.

Going by the Designs Office’s current practices, seeking protection for two-dimensional designs may not be viable. Further, claiming priority from a foreign application filed in Class 32 remains a grey area. Due to this, it is difficult, if not impossible, for design owners to claim priority in respect of their two-dimensional designs from foreign registrations.

Till the time there is some clarity regarding the fate of two-dimensional designs in India, claiming trademark or, where available, copyright protection for two-dimensional figures, is the best way forward.