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This article has been written by Sohini Goswami pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. This article has been edited by Dhruv Shah (Associate, Lawsikho) and Dipshi Swara (Senior Associate, Lawsikho). 

Introduction

Locarno Classification is an international classification for industrial designs that came into being as a part of the Locarno Agreement. India became the 57th member to be a part of the Locarno Agreement on June 7th, 2019 when it formally incorporated the Locarno classification as a part of its Intellectual Property protection regime for Industrial designs. To reflect this incorporation, on a national level, this change was incorporated through the Designs (Amendment) Rules, 2021. Henceforth, the classification of industrial designs is at par with the rest of the world as compared to the previous national classification. Through this article, we will be shedding light on what is the Locarno classification, its utility under different jurisdictions across the world and lastly, we will study and analyze whether any further amendments are required in the existing Locarno classification.

What is Locarno classification?

Prior to 2001, Locarno Classification was not an alien classification system with regard to Industrial designs classification in India. India then followed a basic system, according to which the classification was made as per the material of the product. Though not formally a part of the Locarno Union then, it followed the 10th edition of the Locarno Classification. This was, however, not the best way to classify industrial designs. India at that time, was not competent enough for the inclusion of a wider range of products under this classification scheme. In 2008, through the Design (Amendment) Rules, 2008, Locarno Classification was included in the classification process, but vaguely. Design rights are a territorial set of rights. Therefore, prior to this formal inclusion of the Locarno Agreement, India was not up to date with its classification system and was still operating as per the then outdated 10th edition of the Locarno Classification. However, as per the 2021 Amendment to the Designs Act, India is officially up to date with the latest edition of the Classification. The present Locarno Classification contains 32 classes and 237 sub-classes.

Formal endorsement of the Locarno Classification has its own perks as once a nation-state becomes a member of the Locarno Classification, they automatically become a part of the Locarno Union/Assembly. The assembly meets every two years to discuss development, limitations, and other specific issues.

List of subjects

Specifically speaking, the Locarno Classification deals with 32 subjects with a varied list of sub-subjects, such as foodstuffs;  articles of clothing and haberdashery;  travel goods, cases, parasols, and personal belongings; brushware; textile piece goods, artificial and natural sheet material; furnishing; household goods; tools and hardware; packages and containers for the transport or handling of goods; clocks and watches; articles of adornment; means of transport and hoisting; equipment for production, distribution or transformation of electricity; recording, communication or information retrieval equipment; machines; photographic, cinematographic and optical apparatus; musical instruments; printing and office machinery; stationery and office equipment, artists’ and teaching materials; sale and advertising equipment, signs; games, toys, tents and sports goods; arms, pyrotechnic articles, articles for hunting, fishing and pest killing; fluid distribution equipment, sanitary, heating, ventilation and air condition equipment, solid fuel; medical and laboratory equipment; building units and construction elements; lighting apparatus; tobacco and smokers supplies’; pharmaceutical and cosmetic products, toilet articles and apparatus; devices and equipment against fire hazards, for accident prevention and for rescue; articles for the care and handling of animals; machines and appliances for preparing food or drink; miscellaneous.

The Locarno Classification, as can be inferred from the above paragraph, is an extremely comprehensive system of classification for Industrial designs and is sustainable for the future generations to be incorporated within itself. 

Utility in different jurisdictions

Each member state of the union has the privilege to use the Locarno Classification as a principal or subsidiary system. For instance, the United States Patent and Trademark Office (USPTO) uses the United States design arrangement as their principal design arrangement, whereas, IP Australia’s AUSPAT, uses the Locarno arrangement as their principal design arrangement.

The Offices of the countries of the Special Union include within the official documents for the deposit or registration of styles, and just in case, of publications, the numbers of the classes and subclasses of the Locarno classification into which the products incorporating the designs belong. For instance, USPTO provides details associated with both US design classification codes and Locarno classification just in case of publications for industrial design.

The Industrial Bureau became the depository of the Locarno Classification. It shall incorporate the additions and amendments which have entered into force. The amendment or additions to the Locarno Classification are supposed to be communicated to the offices of the countries of the Special Union by the International Bureau. The International Bureau also publishes announcements associated with amendments and additions in periodicals to be designated by the assembly.

Hence, as discussed above, the distinguishing factor between utilization of the Locarno Classification under different jurisdictional systems is that it is at par with the guidelines of the World Intellectual Property Organization and works in accordance with the same system, however that is not the case with India. We will get to know more about the shortcomings of the recently amended design rules in consonance with the Locarno Classification in the next part of the article.

Are amendments required to the locarno classification for sustainability?

The corroboration of the existing design classification system of India to that with the Locarno Classification was a matter of great significance in the Intellectual Property arena for India. It set the nation at par with the majority of the world thus paving a way for a unanimously followed classification system. 

However, the addition of the Locarno Classification’s Class 32 to the existing system is a step in a positive way for the probable design owners of the future. The issue arises when the Locarno Classification system is read together with Rule 10(1) of the Designs Rules, 2001. Rule 10(1) of the Act states that “Provided that registration of any design would be subjected to the fulfilment of provisions of the Act specifically 2(a) and 2(d).” Additionally, according to the Design Act, 2000, Section 2(a) defines “article” as “an article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.”

Upon close study of both the above-mentioned statutes, it can be inferred that Section 2(d) lays down the criteria that the design should be applied to an article. This gives rise to an uncertain space for design owners who seek to protect their designs irrespective of the article or considering the article. If the new law is read word to word then, such practice is unlawful but in reality, the interpretation of the law is a complete game-changer as the power lies in the hands of the office-bearers of the Design Office. The inclusion of new systems and laws always lays down a challenging field for the prior existing system. Just like the mere presence of classes and subclasses were unable to guarantee design protection to many who sought for the same, the reference of application of design protection only limited to an article might not be exhaustive in a practical sense. It will be interesting to witness how the Design Office will be incorporating the new system with regard to the existing and future design applications. 

Conclusion

Though there has been much debate about the topic of the adoption of the latest Locarno Classification to the existing design system In India, it is clear that it will evidently turn things around for the Industrial designs sphere of the country. However, the vacuum left, such as the nexus drawn between Rule 10(1) and Class 32 as mentioned above, might give rise to a lacuna in the swift applicability of the law.  Looking back, there have been instances, precisely with the application of graphic designs for design protection. The law though recognized graphic designs for icons and screensavers as qualified to seek design protection, the Design Office interpreted the law as per its own discretion as denied registration to the graphic designs citing the reason that it was not “directly appealed to the eye”, and was only visible when the electronic gadgets were turned on. This leaves an air of apprehension as the items noted under Class 32 are particularly limited to the interiors of trains, rooms, etc. hence not technically falling under the “directly appeal to the eye” rule laid down discretionary by the Design Office. Nevertheless, it is an issue of crucial importance and should be therefore dealt with, with a sense of urgency. This lacuna in the law can cost a great deal of loss to the Intellectual Property garnered through Industrial design applications. As already stated, design is a territorial right and therefore requires jurisdictional protection in every nation-state that it is used. The uncertainty that this amendment looms over future design applicants, forbids foreign applicants to pursue protection for their industrial designs in India, thus resulting in loss of commerce.


References

  1. https://www.wipo.int/treaties/en/notifications/locarno/treaty_locarno_70.html 
  2. http://www.hktmd.com/Assets/classification/designs/Design%20Classification.pdf 
  3. http://www.bareactslive.com/ACA/ACT431.HTM 
  4. https://ipindia.gov.in/writereaddata/images/pdf/act-of-2000.pdf 

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