The role of Industrial design infringement as a factor in developing the global economy was ignored for a long time. Industrial Design means the designs of an article that can be industrially used or exploited. There are various treaties and conventions as well as legal protection mechanisms that ensure protection to the industrial designs. However, there is little doubt that it ensures protection helps in ensuring a handsome return on investment. It is believed that most of the rules and decisions regarding industrial designs have been adopted from the conceptual understanding developed by United States (US) judiciaries, EU, Australia and Japan. Some of these countries have developed a sui generis form of protection for the Industrial designs.

The design law in India has been through quite a few amendments. Its inception dates back to the Patent and Designs Act of 1872.[1]The subsequent Acts enacted to protect designs and inventions were a clear reflection of the Designs Act applicable in the United Kingdom (UK).

Eventually, the Designs Act, 2000, was enacted in India to make it compliant with the TRIPS Agreement. This Act contained piracy and infringement provisions, which shall be discussed further.

Design piracy or infringement are concepts that sound simple but have various complex implications to them. In comparison to other IPs, there are fewer design infringement cases or landmark decisions where the Design Law in India has been Judicially scrutinized in a fruitful manner.

The present article will be exploring the nitty-gritty of design infringement in India. It will further compare the Indian situation to the statutory position of designs in the UK and US.

The Indian Position

1. Standard of Design Protection in India

The definition of “design” must be in accordance with Section 2(d) of the Design Act, 2000. As per that provision, the design includes certain features which are dimensional in nature. They are as follows: Shape, configuration, patterns, ornament, composition of lines along with composition of colours. These features are applied to an article. They must be a result of an industrial process, whether manual, mechanical and chemical or separate or combined. It should be a finished article solely perceived by the naked eye. The non-functional aesthetic part is only registrable under this Act.

The following are certain essential points for consideration for Design registration in India. (Section 6 of the Designs Act, 2000)

Designs that are new or original;
Designs which have never been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use in any other way prior to the filing date or priority date of the application;
Is significantly distinguishable from known designs or combination of known designs;
Designs which doesn’t comprise of or contain scandalous or obscene matter.

In Bharat Glass Tube Ltd. vs. Gopal Gas Works Ltd., one party had registered their design for diamond-shaped glass sheets and obtained a certificate of registration. The appellants started to use the registered design for marketing purposes. The Designs were originally made in partnership with an established German company. The aggrieved party moved to the Court to prevent the Infringement.

While contending their application, the appellants stated that design cannot be classified as “New and Original” as it was already an existing design of the German company since 1992. To further support their point, they stated that the design is already on the register of the UK Patent Office; hence the design in question has lost its originality.[2]

After several row of appeals, the Supreme Court restored the design back to its rightful proprietors.

The Court reiterated the essential requirements of design and stated that the essentials of registration itself could furnish grounds for challenging or defending infringing acts.

The requirement of new or original in the famous case of Gammeter v. Controller of Patents, the Court took had liberally interpreted the scope of this phrase.[3] It stated that the “design need not necessarily be created newly, but can be utilized on an old Design in a unique way.” Further implying that so long the use of such design is new and original and the use when applied on an existing product is not in the public domain then it can be considered to be registrable.
Other requirements the Court reiterated the other requirements of registration such as the criteria of obscenity, restriction from public domain etc.

In Steel bird Hi-tech India Ltd v. SPS Gambhir, the Court demonstrated clearly that the design should be new or original as it is considered a product of the intellectual outcome of its creator. The Delhi HC further stated that the “design should never be in existence before such a person has expressed such design in a tangible or physical form”.[4]

2. Industrial Design Infringement and Piracy of Designs in India under Section 22

The foremost purpose of the Designs Act 2000 is to safeguard the intellect of the proprietor who creates the Design from Infringement. In India, when we refer to Piracy of Designs and design infringement are used interchangeably. Although, in general, “design piracy” as a concept is highly misunderstood is believed to be a misnomer. Oftentimes, designs under copyright protection and design under the ambit of Industrial design law are misunderstood and confused. However, it shall be clear that piracy of designs in India itself refers to design infringement.

The certificate of Registration of Design actually extends the exclusive right to use a design and protect it from piracy. Registration ensures that any and every person or even the Government cannot use the design without the consent of the creator. In the case of Infringement or piracy, the burden of proof rests upon the defendant.

Moreover, Section 22 of the Act stipulates that any fraudulent or obvious imitation of an Industrial Design that is registered without the consent of the proprietor is considered unlawful. Section 22(1) provides the grounds which can be counted as infringing acts. They are as follows:

The infringing acts committed during the existence of Copyright in the Design.
The design is an imitation and is applied without the prior consent of the owner.
This provision also prohibits the import of designs for the purpose of sale without the proprietor’s consent.
The article of design is a fraudulent or obvious imitation of an article registered in the same class as an already registered design.

The Indian Judiciary has always tried to take the perspective of an average consumer in order to determine if the infringing articles are causing any confusion to any ordinary reasonable man.

2.1 Lapsed Designs and Piracy

Section 14 of the Act stipulates that a proprietor will not possess any right to institute a suit or proceeding for piracy of design, which has been committed between the date on which the design had ceased to have an effect and the date of restoration of the design.[5]

3. Defenses and Remedies to Design Piracy in India

The defenses available with respect to Design Infringement is:

The alleged design is already registered design elsewhere and thus lacks novelty;
The functional part of the alleged design of the product is different from the design which is already registered;
All the grounds for cancellation of Registration of Design U/s 19 of the Act will serve as a defense.
Effective Limitation period- The contravention should start from the date on which the registration of the design ceased to have an effect and should continue till the date of restoration of such registered design.
The defense of a maintainable Jurisdiction- suit for Design piracy or recovery of damage, etc. cannot be filed in any court below the District court level.

3.1 Liability of the infringing party

Section 22(2) provides for the liabilities of the infringer of a Design. These sub-sections are also believed to be the statutory remedies available impliedly to proprietors facing piracy. A registered proprietor is supposed to make a choice between any one of the alternative remedies U/s 22.

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:

Section 22(2)(a) – the infringer shall be directed to pay a sum not exceeding INR 25,000 for every contravention or breach. This sum is part of the recoverable sum as a contract debt owed to the registered proprietor. Provided that the total sum of such amount shall not exceed INR 50,000 on one design.
Section 22(2)(b)- the registered owner has a choice to file a suit for recovery of the damages and subsequently plead for an injunction.

3.2 Injunction

The Plaintiff can ask for an Injunction. They are of two kinds temporary/interlocutory injunction under Order 39 of Civil Procedure Code, 1908 and permanent injunction.

Niki Tasha Pvt. Ltd., vs. Faridabad Gas Gadgets Pvt. Ltd. (Temporary Injunction Case)

The Plaintiff must show that the balance of convenience is in his favor while seeking the interlocutory injunction. The Court held that an interlocutory injunction cannot be granted unless the Court is satisfied that there lies a real likelihood of the Plaintiff succeeding in the matter.[6]

3.3 Account of profits

The Court has the option to direct the defendants to maintain a clear account of profits/loss during the pendency of infringement suit, and these accounts shall be utilized later on for assessing the damages.

3.4 Common law remedy of Passing-Off

The scope of passing off has been expanded to include design piracy cases as well. An action for passing off is opted when a party is misrepresenting by using the Plaintiff’s Design. Consequently, this involves damage to the reputation and goodwill of the product in question, and damages can be recovered for the same.

Landmark Cases- Tests for determining Piracy in Designs in India

1. The standard of “New and Original”: Crocs Inc. USA case

Crocs USA filed cases against shoe manufacturers alleging design infringement of their perforated and non-perforated shoes (Crocs). In an interesting turn of events, Crocs USA actually lost this case.[7]

The defendant contended that the registered design in question was subjected to cancellation as it doesn’t qualify for the criterion of ‘new’ or ‘novelty’ in the designs. The Delhi HC observed that the design of the footwear doesn’t have the necessary newness or originality and lacked innovativeness.[8]

The Court stated that on a bare perusal of Section 19(1)(d) of the Act r/w Section 4(a) of the Act, the design is entitled to cancellation. The defendants further claimed that the design was already in the public domain prior to its registration. This contention was also supported by the HC. The Delhi HC relied on its Pentel Kabushiki case to decide this case.[9]

An appeal was filed in the Supreme Court by the Plaintiff which was eventually dismissed in 2019.[10]

2. The Test of “Novelty and the average consumer.”

The Gammeter case is important to mention here as it is one of the earliest cases where it was directed by the Court as to how to compare claimant’s design with infringing designs.[11]. The Court stated that the designs should be compared side by side from the perspective of an average consumer in that field.

3. Test of Personal Use

In case a design is copied for personal use and doesn’t have any element of sale, then it won’t be constituted as Infringement.

4. Judicial Interpretation on Alternative Relief

In Calico Printers Association Ltd. v. Ahmed Abdul Karim, it was held that in design piracy cases, order for the delivering of the infringed articles could be made by the Court as an alternative remedy and was viewed as an equitable or reasonable relief to the proprietor of the registered design. This relief wasn’t explicitly provided in Act.[12]

5. The blurred lines between passing-off and design infringement. (the issue of composite suits)

The famous Micolube case is one of the old judgments related to the maintainability of both design infringement and passing off in the same suit. In this case, the design of mirror frames of rival companies was under legal scrutiny [13]. The Court was of the view that “since the cause of action for bringing the two suits is different, separate suits would have to be filed; though if filed at the same time or in close proximity they may be tried together as there may be some aspects which may be common”.

Later on, in Carlsberg Breweries v. Som Distilleries and Breweries Ltd, the Delhi HC observed and upheld the maintainability of a composite suit for passing off and design piracy. The interesting point to be derived from this judgment is that it was affirmed that a remedy for passing off can be directed if the said design. The Court took the liberty to state that when the prima facie case for design infringement is weak, the Court can take the aid passing-off action and direct its remedies to the Plaintiff. [14]

In this light, it can be said that the Court took a bird’ eye perspective to resolve this issue. The Court also brilliantly aligned the administrative issues that otherwise arise when a plaintiff had to approach two different courts.

EUIPO on Design Infringement

Before we get into the mechanism followed in EU for Designs, it shall be understood that the scope of this article is only limited to the standard of design infringement and doesn’t comment upon the statutory structure of the law established by the EU.

Design law in Europe consists of the following:

The EU design legislation provides a clear framework for both registered and unregistered Community designs. [governed by Council Regulation (EC) No. 6/2002 of on Community designs (Community Design regulation –CDR)]
The Community design provides an exclusive right to prevent any third party from using an infringing design anywhere within the EU.
National design laws are largely harmonized by Directive 98/71/EC of the European Parliament and the Council.
Registered Community designs are administered by the EU Intellectual Property Office (EUIPO), headquartered in Alicante, Spain.
Term of protection- A single application, when granted, is protected for five years, the same is renewed after every five years up to a maximum of 25 years. Unregistered Community designs, on the other hand, are protected for three years from the date of disclosure of the design to the public within the European Union.[15]

Key requirements for design protection in the EU.[16]

1. Novelty: The foremost criterion is “novelty” and “individual character” under Article 5 and Article 6 CDR, respectively. There are also parallel provisions deriving itself from the Designs directive.

It is a well-established principle that the criterion of novelty will only be fulfilled when the new design varies in more than just “immaterial details” from other existing designs.

2. Individual character: depends upon whether the design, when compared to earlier designs, creates overall the same impression on an “informed user”.

Infringing Acts under Art. 19– Making or manufacturing imitation of a product as a whole and not just mere parts, offering, putting the designs on the market or selling the same, importing, exporting, using and even stocking of designs without consent of the proprietor or license for the same constitute infringement.[17]

Final Critique and Conclusion: In a study, it was determined that 63.5% of designs registered under EU are infringed.[18] That is a high number as compared to India. India, no such data exists, but it is believed the design infringements are fewer in number. This makes way for the question as to why there lies such a stark contrast even though the standards of infringements and tests to determine the same are similar in both jurisdictions. The EU has layers of legislation, whereas India has only one main legislation that provides substantial law related to governing design piracy. The EU has a more systematic approach towards Infringement of designs, whereas, in India, it’s only through various judicial precedents that infringements are determined.

It is true that Section 22 gives clarity of infringing acts, but at the same time, its application has been debated, interpreted and pursued judicially. The Apex Court needs to step in before any of these interpretations are standardized. The Legislative intent with regard to piracy of designs is clear. Still, the executive tests are not standardized, thus, paving the way for a gorge between the legislative intent and its application.

In conclusion, it is abundantly clear that the standards of determining infringing acts are more or less the same in India as in the EU. However, the Indian Courts have a long way to go. The issue of composite suits was well handled by the Indian Judiciary. However, the interpretation of novelty and the average consumer perspective has been liberally viewed and need to be standardized. Surprisingly, the Design Manual of India doesn’t really dictate anything with regard to how designs shall be judged. It restricts itself to the statutory mandate only. This shows that the current plight of designs can only be resolved through legislative intervention.

References:

https://ipindia.gov.in/history-of-indian-patent-system.htm
Bharat Glass Tube Ltd. vs. Gopal Gas Works Ltd, 2008 (37) PTC 1 (SC)
Gammeter v. Controller of Patents and Designs, A.I.R.1919 Cal.887
(2014) 3 AIR Del R 692; 2014 SCC OnLine Del 821
https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_30_1_manual-designs-practice-and-procedure.pdf
AIR 1985 Del 136
https://www.managingip.com/article/b1kbppst7srcxx/india-crocs-loses-design-infringement-case
Yashwanth A.S, Industrial Design and IPR, 15 Supremo Amicus Journal
Pentel Kabushiki Kaisha v. Arora Stationers, (2019) 79 PTC 42
M/S Crocs Inc. USA v. Liberty Shoes Ltd. & Others, (2018) 73 PTC 425
Supra Note 3
AIR 1939 Bom 198
Micolube India Limited v. Rakesh Kumar Trading, 2012 SCC OnLine Del 1950
AIR 2019 Del 23
https://www.wipo.int/edocs/mdocs/hague/en/ompi_di_san_11/ompi_di_san_11_14.pdf
https://www.mondaq.com/germany/trademark/727850/design-protection-in europe#:~:text=The%20Community%20design%20gives%20the,a%20maximum%20of%2025%20years.
SKF v. Harbottle [1980] RPC 363; SABAF v. MFI and Meneghetti [2005] RPC 209 [10] HL; Tamglass v Luoyang [2006] EWHC 65 (Ch)
Church, O., Derclaye, E. & Stupfler, G. An Empirical Analysis of the Design Case Law of the EU Member States. IIC 50, 685–719 (2019).