THIS ARTICLE HAS BEEN WRITTEN BY MS. KEERTHI BAJJURI, A 4TH YEAR STUDENT OF RV INSTITUTE OF LEGAL STUDIES, BENGALURU.

 

INTRODUCTION

In order to catch the attention of the buyers, an article must be visually attractive. Visual attraction enhances the marketability of the articles. In order to be protected, the design of an article must appeal to the eye. This means that a design is primarily of an aesthetic nature. The design act 2000 has been discussing the design infringement and related remedies. 

 

WHAT IS DESIGN?

 “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.

 

PIRACY OF REGISTERED DESIGN 

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 .

 

Section 22(1) provides that the commission of any of the following three acts by the person other that the registered proprietor of that design amounts to piracy of registered design.

These acts are:

1.  For the purpose of the sale, to apply or cause to be applied t any article in any class of the article in which the design is registered, the design or any fraudulent obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be applied; or
2. To import for the purpose of sale, without consent of the registered proprietor; any article belonging to the class which the design has registered and having applied it to the design or any fraud there of; or
3. Knowing that the design or any fraudulent or obvious imitation thereof has been applied in any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

 Any of the above act shall constitute piracy only when it is committed during the existence of the copy right in any design. Further, it is necessary that the acts constitute piracy would have been done for the purpose of the sale not merely for the private or personal use.

 

M/Whirlpool of India Ltd. v. M/Videocon Industries Ltd.

Facts– In this case, whirlpool had got two signs registered. Later on, Videocon got a design registered which had the same features, configuration, shape as the Plaintiff i.e., whirlpool and was evident at the first look to be a replica. Videocon contended that they had already registered so they can’t be held liable for infringement and also for passing off which is not applicable for registered design.

Judgment- The Court held that there was a similarity between the design of the plaintiff and the defendant. The defendant i.e., Videocon was held liable for infringement and passing off of the Plaintiff’s design.

In kestors ltd. V. kempat ltd

It was held that where a registration has been made in respect of a design which lack novelty or originality on the ground the design was a mode or principal of construction or a mechanical device or on other ground, there cannot be any infringement of the copy right. 

OBVIOUS IMITATION AND FRADULENT IMITATION 

it was held by Calcutta high court in Castrol India ltd. V. tide water oil co. ltd., that it was not resemblance in respect of the same article which would be actionable at the instance of the registered proprietor of the registered design and that the copy must be a fraudulent or obvious imitation but, then the word imitation would not be duplication in the sense that the copy complaint of need not be an exact replica.

REMEDIES AGAINST THE PIRACY OF REGISTERED DESIGN

The design act has two alternative remedies to the proprietor of registered design under section 22(2). The proprietor has to elect one of them.

According to section 22 (2) 

If any person acts in contravention of this section, he shall be liable for every contravention— (a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or

 (b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly: 

  Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees: Provided further that no suit or any other proceeding for relief under this sub-section shall be instituted in any court below the court of District Judge

As already discussed, a plaintiff cannot avail both the remedies. He has to elect one of them. the Bombay high court in calico printers’ association ltd. V. gosho Kabushiki kaisha ltd.  Ruled that the defendant has the right to ask the plaintiff to elect between the rights available to him under section 22(2) at an early stage of the trail. 

SOME OF OTHER REMIDIES ARE 

1. Interlocutory injunction

1. Prima facie case 
2. Balance of convenience 
3. Irreparable loss or injury 
4. The plaintiff may seek interlocutory injunction under   Rules 1 and 2 of Order
5. 39 of the Civil Procedure Code (CPC) during the pendency of infringement
6. suit.
7. The plaintiff must make out a prima facie case and show that the balance of
8. convenience   is   in   his   favour.   An   interlocutory   injunction   will   not normally   be
9. granted where damages will provide an adequate remedy, should the plaintiff’s
10. claim succeeds. The Delhi High Court in Niki Tasha P. Ltd. v. Faridabad Gas
11. Gadgets P. Ltd., held that the court would not grant an interlocutory injunction
12. unless satisfied that there is a real probability of the plaintiff succeeding on the
13. trial of the suit
14. The plaintiff may seek interlocutory injunction under   Rules 1 and 2 of Order
15. 39 of the Civil Procedure Code (CPC) during the pendency of infringement
16. suit.
17. The plaintiff must make out a prima facie case and show that the balance of
18. convenience   is   in   his   favour.   An   interlocutory   injunction   will   not normally   be
19. granted where damages will provide an adequate remedy, should the plaintiff’s
20. claim succeeds. The Delhi High Court in Niki Tasha P. Ltd. v. Faridabad Gas
21. Gadgets P. Ltd., held that the court would not grant an interlocutory injunction
22. unless satisfied that there is a real probability of the plaintiff succeeding on the
23. trial of the suit

The plaintiff may seek interlocutory injunction under   Rules 1 and 2 of Order39 of the Civil Procedure Code (CPC) during the pendency of infringement suit. The plaintiff must make out a prima facie case and show that the balance of convenience   is   in   his   favour.   An   interlocutory injunction   will not normally be granted where damages will provide an adequate remedy, should the plaintiff’s claim succeed. The Delhi High Court in Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd., held that the court would not grant an interlocutory injunction unless satisfied that there is a real probability of the plaintiff succeeding on the trial of the suit

1. Suppression of material facts: No injunction 
2. Final injunction

If the plaintiff succeeds at the trial in establishing infringement of his registered design, he will normally be entitled to a permanent injunction to restrain future infringement   because there   is   always   a   possibility   of   the   recurrence   of   such infringement. The object of granting injunction is to prevent such recurrence and restore the status quo

Damages 

The plaintiff in an infringement suit is entitled to   recover damages where he establishes infringement.  The   measure of   damages   is the   loss   caused   to   the plaintiff by the defendant’s wrongful conduct. A practical method of assessing damages   is   to   assess   them   on   the   basis   of   a   reasonable   royalty   upon   all infringing articles made and sold by the defendant. Alternatively, damages maybe assessed to   compensate plaintiff for   the   loss of   sales   suffered   by   him on account of the sale of the infringing articles by the defendant, or other damage

caused to him thereby, e.g., reduction in price

account of the sale of the infringing articles by the defendant, or other damage

caused to him thereby, e.g., reduction in price

account of the sale of the infringing articles by the defendant, or other damage

caused to him thereby, e.g., reduction in price

account of the sale of the infringing articles by the defendant, or other damage

caused to him thereby, e.g., reduction in price

account of the sale of the infringing articles by the defendant, or other damage

caused to him thereby, e.g., reduction in price

The plaintiff in an infringement suit is entitled to   recover damages where he establishes infringement.  The measure of   damages   is the   loss   caused   to   the plaintiff by the defendant’s wrongful conduct. A practical method of assessing damages   is   to   assess   them   on   the   basis   of   a   reasonable   royalty   upon   all infringing articles made and sold by the defendant. Alternatively, damages maybe assessed to   compensate plaintiff for   the   loss of   sales   suffered   by   him on account of the sale of the infringing articles by the defendant, or other damage caused to him thereby, e.g., reduction in price

1. Account of profits 

The court can direct the defendants to maintain an account of profits during the pendency of the infringement suit.  In Three-N-Products Private Limited v. Manchanda   Enterprises   & Another, the   court directed   the respondent   to maintain the accounts in respect of its sale until the suit was decided.

1. Delivery up or destruction 

In   India, neither Designs   Act, 1911   nor Designs   Act, 2000, incorporated   any provision for delivery up or destruction of infringing articles. However Calico   Printers   Association   Ltd.   v.   Ahmed   Abdul   Karim   Brustad., it was held by the court that the order for delivery up could be made as inequitable relief. But this order for delivery up must be made in the spirit of the provisions of section 53. Such a relief can be granted only in respect of goods for the purpose of sale but not in respect of any other purpose.

CONCLUSION

The design of the proprietary should get registered under the design act,2000 to get the benefits and protection under the act. The act has made stringent rules to safeguard the rights of the proprietor. One can get the remedies as mentioned above in case of infringement or privacy of the design.

Reference 

Design Infringement in India – Complete Overview – Corpbiz

M/Whirlpool of India Ltd. v. M/Videocon Industries Ltd.2012(52) PTC 209 bom 

kestors ltd. V. kempat ltd., (1936) 53 RPC 139

castrol india ltd. V. tide water oil co. ltd1996(16)PTC202

The design act, 2000 

calico printers association ltd. V. gosho Kabushiki kaisha ltd., AIR 1936 Bom 408.