Recently the High Court of Delhi at New Delhi, in the case filed by Plaintiff, passed an order regarding the infringement of Plaintiff’s designs. The issue raised under the case was related to the Novelty and Piracy of the designs. Plaintiff is a Limited Liability Partnership concern under the leadership of a well-known designer, Mr Sabyasachi Mukherjee, who claims to have a significant presence in the Indian fashion industry and enjoys a global reputation.

Plaintiff claims that the defendants are using a design similar to the registered designs of Plaintiff to constitute piracy within the meaning of Section 22 of the Designs Act, 2000. According to Section 22 (Piracy of Registered Design) of the Act, during the existence of copyright in any design, it shall not be lawful for any person-

(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything to enable the design to be so applied; or

(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and have applied to it the design or any fraudulent or obvious imitation thereof; or

(c) Knowing that the design or any fraudulent or obvious imitation thereof has been applied to 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.

(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 infringement, 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 subsection shall be instituted in any court below the Court of District Judge.

(3) In any suit or any other proceeding for relief under subsection (2), ever ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence.

(4) Notwithstanding anything contained in the second proviso to sub-Section (2), where any ground or which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceedings shall be transferred by the Court in which the suit or such other proceeding is pending, to the High Court for decision.

(5) When the Court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.

Therefore Plaintiff, in the application, prayed that:

An order for ad-interim temporary injunction restraining the Defendants, their principal officers, servants, agents, representatives, dealers and all others acting for and on their behalf from manufacturing, applying/causing to be applied, selling, offering for sale, importing, advertising/publishing, directly or indirectly dealing in the impugned infringing garments “Rusheeda Lehenga” and “New Botanical Lehenga / P.C. Lehenga” or any other garments or similar article which is identical and/or obvious/fraudulent imitation of the Plaintiff’s registered designs Nos. 85668 and 83943 or any different registered design or doing any other act which amounts to infringement of the Plaintiff’s registered design Nos. 85668 and 83943, including an order directing the Defendants to remove all the impugned infringing designs and garments from all online platforms, including but not limited to Facebook, Instagram and other third party websites.

Therefore after hearing the matter from the Court, it was observed that the designs of the defendants appear to be an obvious imitation of the Plaintiff’s design and an attempt to link the products of the defendants with those of Plaintiff. These designs are also being marketed on the social media websites of the defendants, and material in that regard has been placed on record.

Hence, the Court passed an order stating that, till the next date of hearing on 24th January 2022, there shall be a restraint against the defendants according to the application filed by Plaintiff.

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

Author

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    Abhishek is an intellectual property Attorney. He specializes in the registration and maintenance of patents, designs, trademarks, and copyrights. He regularly assists companies in relation to crucial technology issues. He also helps organizations or individuals to develop patent portfolio management strategies for exciting new inventions and processes. Abhishek has past work experience with reputed firms like SaiKrishna and Associates Advocates, L.S. Davar and Co., Masilamani Law Partners, and Ripple IP Services (NCR).