Protecting a Design Outside India
Chapter Thirty
Syllabus topic 1.1, "Laws Relating to Industrial Designs"
Pages 117 to 120 of 683
In one line
India has not joined the Hague Agreement, so an Indian proprietor with no establishment in a Hague country must file country by country within the Paris six months.
Where India stands
| Instrument | What it would give an Indian proprietor | India |
|---|---|---|
| Paris Convention, 1883 | A six-month priority for filings abroad | Party, acceded 7 September 1998, in force 7 December 1998 |
| TRIPS, 1994 | A guarantee that every member gives at least ten years' protection | Member of the World Trade Organisation since 1 January 1995; as a developing country it could delay applying the design provisions until 1 January 2000 |
| Hague Agreement, 1925 | One application covering many countries | Not a party |
| Locarno Agreement, 1968 | A seat on the Committee of Experts that revises the classification | Party, acceded 7 June 2019, in force 7 September 2019 |
The Hague Agreement, and what India is missing
What it does. The Hague System for the International Registration of Industrial Designs lets an applicant file one international application with the International Bureau of the World Intellectual Property Organisation, in one language, with one set of fees, designating the member countries in which he wants protection. Each designated office then examines it under its own law and either grants or refuses. The result is a bundle of national rights obtained through one filing.
Why it matters commercially. Design lives are short and markets are many. A furniture exporter who wants protection in fifteen countries currently needs fifteen applications, fifteen agents, fifteen sets of translations and fifteen fee schedules, all completed within the six-month Paris window.
Who may use it. Article 3 of the Geneva Act of 1999 gives the right to file an international application to a national of a Contracting Party, or to a person with a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of one. India is not a Contracting Party, so Indian nationality gives no entitlement. An Indian company qualifies only through a genuine establishment in a member's territory.
The position, not the reasons. Nothing in this book turns on why India has not acceded, and an answer should not assert a reason as settled policy. What a student must know is the position, which is that India is not a party.
The Locarno Agreement
It is a classification, not a right. Thirty-two classes with subclasses, and an alphabetical list of goods running to thousands of entries. It is kept up to date by a Committee of Experts on which, under Article 3(1), every member country is represented. Amendments pass by a simple majority, but a new class or a transfer of goods between classes needs unanimity, Article 3(4). The fifteenth edition took effect on 1 January 2025.
Protecting a Design Outside India
India is a party, and uses it. India acceded on 7 June 2019, with effect from 7 September 2019. The Designs Rules, 2001 long carried a Locarno list of classes in their Third Schedule, and since the Designs (Amendment) Rules, 2021, published on 25 January 2021, articles are classified under the current edition of the Locarno Classification itself. That is why an Indian application is filed in a Locarno class, and why the Supreme Court in Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, recorded that the design there was registered in class 25-01.
What membership gives. A seat and a vote on the Committee of Experts, and the right of the Indian Office to propose amendments under Article 3(3). It gives no design right anywhere, because the classification is administrative.
What an Indian proprietor actually does
A five-step route, and it is what a problem question is really asking for.
Step one: file in India first, before any disclosure. Section 4(b) makes disclosure to the public anywhere in the world before the filing date fatal, so the Indian application must come before the launch, the catalogue and the trade fair.
Step two: identify the markets. Design protection is territorial. There is no point paying for protection where the goods are not sold or made.
Step three: file abroad within six months. Paris Article 4 gives six months for designs. Every foreign filing made within that window takes the Indian date.
Step four: use the regional systems where they exist. One design application at the European Union Intellectual Property Office covers the whole European Union, and an Indian applicant may file it directly, without the Hague route. So the practical position is better than it sounds for Europe, and worse for the rest of the world.
Step five: watch the local grace periods. Some countries give a designer a twelve-month grace period for his own disclosures; India does not, and neither does every other country. Never rely on one.
A worked example
Sahara Furniture in Mumbai designs a folding desk and expects to sell in India, the European Union, the United Kingdom, the United States and Japan.
1 March 2026. It files in India under section 5. Nothing has been published anywhere.
Between 1 March and 1 September 2026 it must complete its foreign filings to keep the Indian date under Paris Article 4.
European Union. One application at the European Union Intellectual Property Office covers all member states.
United Kingdom. A separate United Kingdom registered design application is now needed.
United States. A design patent application, which in the United States is examined and lasts fifteen years from grant.
Protecting a Design Outside India
Japan. A national application to the Japan Patent Office.
How many applications? Five, counting India. Had India been in the Hague system, the last four might have been reduced to one international application designating the European Union, the United Kingdom, the United States and Japan, each of which is a member of the Hague system.
15 April 2026, Sahara exhibits the desk at a trade fair in Mumbai. Its Indian registration is safe, because it filed first. Its foreign filings are safe if they are made within the six months, because they take the 1 March date.
Now suppose it had exhibited on 15 February 2026, before filing anywhere. The Indian application would fail under section 4(b), and so would most of the foreign ones. Unless the fair had been notified under section 21 and previous notice given to the Controller, nothing would save it.
What this is not
There is no world design registration. Even the Hague system produces a bundle of national rights, each examined and each enforceable only locally.
Paris priority is not protection. It preserves a date. The applicant must still file in each country.
Being a party to Locarno does not give India's designs protection abroad. Locarno only sorts goods into classes. Protection abroad still needs a filing in each country or a Hague designation.
A European Union design registration is not a Hague registration. It is a regional right available directly.
Quick revision
- India is a party to Paris (acceded 7 September 1998, in force 7 December 1998) and a member of the World Trade Organisation, bound by TRIPS, from 1 January 1995, with a developing country's time to apply the design provisions until 1 January 2000.
- India is not a party to the Hague Agreement. It is a party to the Locarno Agreement, acceded 7 June 2019, in force 7 September 2019, and since 2021 the Designs Rules classify under the current Locarno classification, thirty-two classes with subclasses.
- The consequence: no single international application. File in India first, then country by country within the six-month Paris window.
- Regional systems still help: one European Union design registration covers every member state.
- File before you launch. India has no grace period, and section 4(b) counts disclosure anywhere in the world.
Test yourself
1. Can an Indian proprietor obtain design protection in twenty countries by one application? No, unless he has a domicile, habitual residence or real and effective establishment in a Hague member. India is not a party to the Hague Agreement, so he must file in each country, or use a regional system such as a European Union design registration where one exists, within the six-month Paris priority period.
Protecting a Design Outside India
2. Is India a party to the Locarno Agreement? Yes. It acceded on 7 June 2019, with effect from 7 September 2019. Since the Designs (Amendment) Rules, 2021 an Indian application is classified under the current edition of the Locarno Classification, as the Supreme Court recorded of class 25-01 in Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657.
3. What is the single most important practical rule for a designer planning to protect a design internationally? File the first application before any disclosure anywhere, and complete the foreign filings within six months of it. Section 4(b) makes disclosure to the public anywhere in the world before the filing or priority date fatal, and India has no general grace period.
4. Who may file an international application under the Hague system, and why can most Indian applicants not use it? Under Article 3 of the Geneva Act of 1999, a national of a Contracting Party, or a person with a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of one. India is not a Contracting Party, so an Indian applicant qualifies only through such a connection with a member.
The rest of this subject
These notes are cut from the University's printed syllabus. Open the syllabus itself, or the past papers, for the same subject.