Like other Intellectual Properties, Design is also prone to Infringement. An Infringement of Design is an illegal act to use a registered design, or fraudulent imitation of a registered design, without the authorization from the owner of such registered design. The registered owner of the design in such case of Infringement of Design can file a suit to recover a nominal sum as damages from the infringer, and also ask the infringer to stop such Infringement. In the article, we will discuss the concept of Design Infringement in India.
What is the history of the evolution of the Design Act, 2000, in India?
In India, the History of Designs Act can be sketched back to the period of British rule. The first legislature of India to grant protection and privileges for Designs was the Patent and Designs Act, 1872[1]. The 1872 Act supplemented the 1859 Act that Governor-General of India passed for granting exclusive privileges to inventors and added extra protection for Industrial Design. The enactment of the Inventions and Designs Act, 1888, repealed the 1872 act and protected designs and inventions. The Inventions and Designs Act of 1888 was a clear reflection of the Designs Act applicable in the United Kingdom (U.K.).
The 1872 Act supplemented the 1859 Act that Governor-General of India passed for granting exclusive privileges to inventors and added extra protection for Industrial Design. The enactment of the Inventions and Designs Act, 1888, repealed the 1872 act and protected designs and inventions. The Inventions and Designs Act of 1888 was a clear reflection of the Designs Act applicable in the United Kingdom (U.K.).
The British Government enacted the Patent and Designs Act in the year 1911 and repealed all the prior legislations. In the year 1930, the Patent and Design Act was amended that changed the eligibility criteria for registration of design from new and original design to new or original design. At first, this legislation governed the matters related to both Patents as well as Designs. Later on, in the year 1970, a separate Act called the Patent Act, 1970 was enacted by the Government to deal with matters related specifically to Patent, and thus, the provisions relating to Patent in the 1930 Act were repealed, but the Act continued to be the majorly followed legislation for Industrial Design till the year 2000.
In the year 1995, India joined the WTO (World Trade Organisation) as a Member State. Subsequently, the Patents and Designs Act, 1911, was repealed by the Government. Later on, the Government enacted the Designs Act, 2000, to make the law of Designs in India comply with the TRIPS Agreement. Furthermore, after the enactment of the Designs Act, 1911, there has been considerable progress in the field of technology, science, and other related fields. This progress in these fields necessitated the legislature to be more efficient and stronger for proper protection, administration, and promotion of the Industrial Designs and gave rise to the Designs Act, 2000. The new Design Act, 2000, came into force on 11th May, 2001.
What is a Design?
The term ‘Design’ under Design Act, 2000, is defined as the features of shape, any pattern, configuration, ornament or composition of colors or lines which is applied to 2 dimensional or 3 dimensional or in both the forms using any procedure or process including manual, mechanical, or chemical, combined or separate which in the finished or final article appeals to or is judged solely by the eyes.”
Design neither includes any mode of constructions nor any Trademark that is defined under Trademarks Act, 1999. Further, it does not even include any property mark defined in Section 479 of the Indian Penal Code (IPC) or any type of artistic works defined in Section 2 (c) of the Copyright Act 1957.
What is Design Infringement in India?
In the Design Act, 2000, the piracy of registered design is considered as an Infringement of Design in India. Section 22 of the Designs Act, 2000, provides the provisions related to the Piracy of registered Designs in India. As per Section 22 of the Design Act, 2000, any fraudulent or obvious imitation of a Design that is already registered without the consent of the owner or proprietor of the registered design is unlawful. The Section also prohibits the import of any kind of substance or material which is in close resemblance of such a registered design.
An Infringement of a registered Design means when any person, without the consent of the proprietor of the design, imports, applies, or publishes the registered design or any obvious or fraudulent or imitation thereof.
The acts mentioned above of a person become the Infringement of Design only in the circumstances as follows:
- The Act is committed during the existence of a Copyright in any Design;
- The design is imitated or applied without the prior consent of the registered owner or proprietor;
- The Act done is for the purpose of sale, and not for any private or personal use;
- The infringing articles must be in the same class in which the design is registered.
In order to ascertain Design Infringement in India, the court or any adjudicatory body is not required to compare the two articles directly, but should look at the articles from the point of view of an average consumer and should see if the two articles are causing any obvious confusion in the minds of the consumers.
What are the essential requirements for a Design for protection from Design Infringement in India?
The design of a product or good has become a paramount concern for any businessman. Some unique product designs, like Coca Cola’s contour bottles, are the identity of a brand. The primary purpose of the Designs Act, 2000, is to protect the intellect of an author or a proprietor of a design from the Infringement of Design. The 2000 Act provides certain essential requirements for products to be eligible for protection from Design Infringement in India.
The primary requirements are as follows:
In the case of Bharat Glass Tube Ltd. vs. Gopal Gas Works Ltd., the respondents registered their design for diamond-shaped glass sheets and also had a certificate of registration. Later on, the appellants started to use the registered design of respondents for marketing. The Designs of appellants were made in partnership with a German company.
After knowing that the appellants are using their registered design, the respondents moved to the court to stop such an Infringement of Design. In court, the appellants contended that design used by the respondent is not new as the German company is using the same design since 1992, and the design is already published in the Patent Office of the U.K., so the design has lost its originality. On Appeal, When the matter went to the High Court, the court restored the design to the respondents. Later on, when the matter reached the Supreme Court (S.C.) of India, it supported and upheld the decision of the High Court (H.C.) of Calcutta.
The essential requirements mentioned above were also stated in this case which are as follows:he essential requirements mentioned above were also stated in this case which are as follows:
- The design of a person has to be new or original. For further explanation, in the landmark case of Gammeter vs. Controller of Patents, the court explained that the design necessarily is not required to be created newly, but can also be used on an old Design in a unique way as long as the use of such new design on an already existing product is not already earlier discovered.
- The design should not have any kind of obscene or scandalous subject matter present in its content;
- The design should be differentiable or distinguishable from all other registered Designs or a combination of registered Designs which are already existing in the public domain.
- The design should not exist in the public domain or be published in any tangible or physical form within the territory of India or outside India. In the case of Steel bird Hi-tech India Ltd vs. SPS Gambhir, it was explained. In this case, the court clearly demonstrated that the design is required to be new or original as it is a product of the intellectual outcome of a person. The court also stated that the design should never be in existence before such a person has expressed such design in a tangible or physical form.
Read our article:Design Registration and Protection in India
What are the exclusive rights provided to the owner of registered design under the Design Act, 2000?
A Design which is registered under Chapter II of the Design Act, 2000, as per Section 11 provides for an advantage to the registered owner or proprietor of the design to not only protect his/her work under the Design Act, 2000, itself but can also acquire copyright protection for a Design for a period of 10 years from the same day that work was registered under the Design Act, 2000.
The owner or proprietor on the registration of a Design under the Act acquires certain exclusive rights which are as follows:
- The exclusive right to apply the registered design to any articles in any of the classes in which the design is registered;
- The exclusive right to expose or publish, or cause to be exposed or published, any articles in any classes of goods in which the design is registered to which such a Design is applied; and
- The exclusive right to import for the purposes of sale of any articles belonging to the classes in which the design is registered and having applied to it that design.
What is the liability of the infringing party in the case of Design Infringement in India?
The Design Act, 2000, under Section 22(2), provides for the liabilities of the infringer of a Design, which are the remedies available impliedly to the registered proprietor or owner of the design. The registered owner or proprietor is required to choose one of the alternative remedies provided in Section 22 of the Design Act, 2000.
The liability of the infringing party as provided in Section 22 of the Design Act, 2000, in case of Design Infringement in India is as follows:
- As per Section 22(2)(a) of the Design Act, 2000, the infringer is required to pay a sum not exceeding 25,000 Rupees for every contravention or breach recoverable as a contract debt to the registered owner or proprietor. The total sum of such amount, which is recoverable for one design, should not exceed 50,000 Rupees.
- As per Section 22(2)(b) of the Design Act, 2000, the registered owner or proprietor can choose to bring a suit for recovery of the damages, and can also plead for an injunction against repetition. In such a case, the infringing party is liable to pay such an amount as the court awards and is also restricted by an injunction, respectively.
The rationale behind such a liability for an infringing party is to make an infringing party liable for loss suffered by the registered owner or proprietor of the design and to confirm a fair return on the investment of proprietor or owner. Though, to claim damages, the registered owner or proprietor is required to mark his/her articles in some manner, which will denote that a particular Design is registered and take all necessary steps needed to ensure the marking of the articles of the registered owner or proprietor.
What are the Defences available to the Infringing Party in the case of Design Infringement in India?
The defenses available to the infringing party in case of Design Infringement are as follows:
- There is a Lack of novelty with the already registered design;
- Functional related to the product is different from the design which is already registered;
- Any grounds for cancellation of Registration od Design available under Section 19 of the Design Act, 2000;
- A contract relating to registered design at the time of contravention of Section 22 of the Design Act, 2000, with a condition stated to be unlawful under Section 42 of the Act.
- The contravention related to registered design should start from the date on which the registration of the design ceased to have effect and should continue till the date of restoration of such registered design.
- The suit for Design Infringement, recovery of damage, etc. should not be filed in any court below the District Judge court.
What are the case laws related to Design Infringement in India?
The case laws related to Design Infringement in India are as follows:
- Calico Printers Association Ltd. vs. Ahmed Abdul Karim
The court held that in the case of Infringement of Design, an order for the delivering of the infringed articles could be made by the court as an equitable or reasonable relief to the owner of the registered design, although the same was not expressly provided in the Design Act.
- Niki Tasha Pvt. Ltd., vs. Faridabad Gas Gadgets Pvt. Ltd.
The plaintiff should be able to show that the balance of convenience is in his/her favor while pleading for a grant of an interlocutory injunction. The court in the case held that there would be no grant an interlocutory injunction unless the court is satisfied that there is a real possibility of the plaintiff succeeding in the suit.
- Micro lube India vs. Rakesh Kumar
The larger bench of Delhi High Court (H.C.) upheld the availability of the remedy of Passing-Off with respect to Design Infringement in India.
- Good Earth vs. Krishna Mehta.
In this case, the company Good Earth sued India Circus for Passing Off of some of the Designs of the company Good Earth. The company India Circus took a defense that the designs used are not new or novel. The court decided in the case that even the Designs that are old and are applied to a new article should be protected. The court interpreted the term “original,” which includes Designs that are old but are unique in its applications.
The court also held that if both the Designs are registered in a case, then the courts should take a different approach by giving priority to the time period of usage and similarity of appeal, which would be the suitable method to examine Design Infringement.
Conclusion
In India, a better protection for Design Infringement law is an actual need of the hour. The law regarding design should be more explicit regarding the Design Registration and for the protection of registered Design proprietor or owner. Within the existing legislative framework related to Design in India, the courts should also help to maintain and monitor the rights of the registered owner or proprietor of design. The process of Design Infringement is long-lasting and lengthy. We at Corpbiz have qualified professionals to assist you throughout the process of filing for the Infringement of Design in India. Our professionals will assist and guide you for the timely and efficient completion of your work.
Read our article:What type of Works Protected by Copyright in India?
