With immense competition in the market based on the originality, novelty and distinctiveness of the products, there is always a demand for innovative design products. Thus, proprietors tend to register their designs as soon as possible. The fundamental goal of registered designs is to earn profits and seek legal protection for its creation. However, both the monetary gain and the protection are hampered when another party infringes on the design. To deal with the issue of infringement, Section 22 of the Design Act of 2000 combats registered design piracy in India. This states the following points to determine piracy of designs:

  1. That there is evident false imitation to gain monetary benefits;
  2. That such deception is done to bring for sale.
  3. That to publish it in the public domain with the fraudulent intention of imitating, in any article and in any class where the design has already been registered.

Proprietor’s Right Against Infringement

The owner of a design has an exclusive right to apply their design for registration to an article in a class in which the design is registered. If a person commits piracy of a registered design, as defined in Section 22, he is obliged to pay a fine of not more than 20,000 rupees, receivable as a contract debt. However, the total amount recovered for any one design shall not exceed fifty thousand rupees. No action for injunction or damages shall be brought in a court lower than the Court of District Judge.

Copyrights Protection for Designs

Besides the copyright provision in Designs Act 2000,[1] the Copyright Act of 1957 also provides legal protection to innovative designs. The following provisions of the Copyright Act of 1957 must be kept in mind by a designer:

  1. Under the Copyright Act, copyright does not exist in any design that is registered under the Designs Act.
  2. Copyright in any design capable of being registered but not yet registered expires once any article to which the design has been applied has been reproduced more than fifty times by an industrial process, by the owner of the copyright, or with his licence, by any other person.

A ‘design’ is defined as the “shape, configuration, pattern” of any product under the Designs Act.[2]

It can be difficult for a judge to discern where to draw the line between “permissible copying” and “design piracy“, especially in cases pertaining to fashion design infringement due to their shape or style.[3] Designer clothes are frequently improvised versions of established trends. As a result, another question that emerges is whether every design is sufficiently “original” to deserve protection. Thus, the following provisions of the Copyright Act of 1957 must be kept in mind by a designer:

  1. Under the Copyright Act, copyright does not exist in any design that is registered under the Designs Act.
  2. Copyright in any design capable of being registered but not yet registered expires once any article to which the design has been applied has been reproduced more than fifty times by an industrial process, by the owner of the copyright, or with his licence, by any other person.

 Cases related to Design Piracy

  1. In Veeplast Houseware Private Ltd vs M/S Bonjour International & Anr.,[4] the most generic way to detect infringement is to analyse the two products from the perspective of a client with average knowledge and imprecise recollection, rather than placing them side by side. The primary question is if the broad characteristics of shape, configuration, and pattern are similar.
  2. In Dabur India Ltd. v. Rajesh Kumar and Ors.,[5] they stated they were not mimicking Dabur’s bottles and claimed there was no Dabur’s trademark embossing on any part of the bottles confiscated by the Local Commissioner or being sold by them. They claimed they were not duplicating or infringing on Dabur’s designs. They said that the bottles were being sold for a variety of purposes by various people and that they were selling empty bottles with no markings or numbers on them. Their main business was selling bottles of various sizes and shapes, as well as caps.

The Court found that there was a strong prima facie case that Dabur’s trademark or design had been infringed. Rajesh Kumar’s bottles did not have the Dabur trademark on them. Rajesh Kumar’s empty bottle business could be utilised by anyone for filling any kind of liquid, and there is no reason to believe that these bottles can only be used to imitate and promote ‘Dabur Amla Hair Oil.’ Dabur’s petition went unanswered in this light, and his application was dismissed.

  1. In Troikaa Pharmaceuticals v. Pro Laboratories[6], the plaintiff was a manufacturer of ‘D’ shaped tablets who had registered the design. The defendant was eventually sued under the guise of unlicensed usage of a similar design. Because the Court was confident that granting the injunction would not cause great damage to the defendant, the Court granted an interlocutory injunction against the defendant.
  2. In Britannia Industries Ltd vs Sara Lee Bakery,[7] the two predominant tests were implemented by the judiciary, i.e., Test of Obvious Fraudulent Imitation and Test of Substantial Difference.
  3. Firstly, the Court, in The First Test of Obvious Fraudulent Imitation, observed that similarity in design in such cases should be judged with the eyes of the general public and the purchaser. Secondly, the Court will determine any “significant differences” between the design that is intended to be registered and the design that has already been registered.

Conclusion: Although there have been regulations and judgments that have addressed the loopholes and challenges that arose from time to time in India, still there is a need for more transparent and consistent laws against such infringement. The reason for this demand is because an increasing number of people are entering the field of business, and this has increased the demand for the importance of intellectual property rights, especially for designs.

References: 

[1] Section 2(c) in the Designs Act, 2000.

[2] Section 2(d) in the Designs Act, 2000.

[3]https://www.firstpost.com/india/india-lacks-landmark-judgments-on-design-piracy-only-identical-imitations-attract-copyright-infringement-3979727.html.

[4] CS(OS) No. 1181/2011.

[5] [2008 (37) PTC 227 (Del.)].

[6] (2008) 49 (3) GLR 2635

[7] AIR 2000 Mad 497.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

  • Title

    Shubhangi Gehlot is a 4th Year Law student from the Faculty of Law, Maharaja Sayajirao University of Baroda. She is ardent about legal research and writing. Intellectual Property Rights with an amalgamation of Media and Entertainment Law, Cyber and Technology Law and Human Rights are a few of her many key interest areas