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Piracy of Registered Design and Remedies

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Manish Jindal

January 11, 2024

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Piracy of Registered Design and Remedies

The piracy of registered design has become a common practice in the global landscape, posing a crucial threat not only to the economic growth of industries but also to the very essence of industrial design protection.

Protecting unique design characteristics is pivotal, as these elements often define the visual attraction of products.

This article delves into the criteria of protection, examining the consequences in the event of design piracy, and explores the ongoing challenges faced by design proprietors striving to safeguard their creations from unauthorised use and design violations.

In a world where infringement of design is a persistent challenge, understanding the intricacies of this issue becomes imperative.

Industrial Design

The concept of industrial design refers to the creative and artistic aspect of a product, which is shaped by its physical features.

This includes elements like the shape, configuration, ornamentation, and patterns that contribute to the overall aesthetic of a product, crafted through various industrial methods.

Legally, an industrial design pertains to the visual attributes of an item. These attributes can be three-dimensional, such as the shape of an object, or two-dimensional, like patterns, lines, or colors.

Under Section 2(d) of the Designs Act, 2000, the term “design” means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether 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, but does not include any mode or principle or construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.

This application can be executed through any industrial process, including manual, mechanical, or chemical methods.

The key aspect of a design is that it should be visually appealing and judged solely on its appearance. However, this definition excludes any structural or mechanical concepts, trademarks, property marks, or artistic works as defined in other relevant laws.

Piracy of Registered Design: Legal Provision

Design piracy, as defined by law, occurs when there’s an infringement of copyright in a design.

This means if someone uses or duplicates a design without authorisation for commercial purposes while the design is still under copyright and without the consent or license from the owner of the design, it’s considered an illegal act.

The person responsible for such unauthorised use is also liable for any resulting damages.

According to Section 22 of the Designs Act, 2000, several scenarios are outlined as constituting design piracy:

  1. If a product with a registered design is sold, and this sale involves a fraudulent or obvious imitation of the design.
  2. If a product with a registered design is imported for sale without the permission of the owner of the registered design.
  3. If a product with a registered design, or a design that is a fraudulent or clear imitation, is published or offered for sale.

In essence, if any product or article, or a class of article, with a registered design is sold or imported for sale through obvious or fraudulent imitation, or if such a design is published or displayed for sale knowing it’s a clear or fraudulent imitation, it is considered as piracy or infringement of the registered design.

Remedies for Piracy of Design 

When it comes to addressing the issue of design piracy, inventors whose rights have been violated can seek legal remedies.

As per Section 22(2) of the Industrial Designs Act, 2000, there are two main forms of recourse available to the owner of a registered design in cases of piracy:

  1. Monetary Compensation: The infringer may be required to pay the registered owner of the design a sum not exceeding twenty-five thousand rupees, which is treated as a debt owed under a contract. However, it’s important to note that the total amount recoverable for any single design infringement is capped at fifty thousand rupees.
  2. Legal Action for Damages and Injunction: Under Section 22(2)(b), the registered proprietor has the authority to initiate legal action for the recovery of damages in cases of infringement. Additionally, they can pursue an interlocutory injunction under Rules 1 and 2 of Order 39 of the Civil Procedure Code (CPC) to compel the imitator to cease producing evident and deceitful imitations while the lawsuit is ongoing. If successful, the court has the discretion to grant an injunction, as well as award damages, conduct an account of profits, and order the defendant to surrender or destroy all infringing copies in their possession.

It’s also important to note that any legal action or proceeding for relief under this subsection must be initiated in a court that is at or above the level of a District Judge, as lower courts are not authorised to handle these matters.

This provision ensures that cases of design piracy are handled by courts with the appropriate jurisdiction and expertise.

Defensive Strategies in Design Piracy Cases Under the Designs Act, 2000

In the context of the Designs Act, 2000, specifically under sub-section (2) of Section 22, there are several grounds of defense that can be used when facing allegations of design piracy.

These defenses are particularly relevant if there’s a possibility of canceling the registration of a design under Section 19. The grounds for defense include:

Prior Registration in India: If it can be proven that the design was already registered in India before the current disputed registration, this can serve as a defense.

Prior Publication: If the design was already published in India or in another country before the date of registration, this fact can be used as a defense. This implies that the design was already in the public domain and therefore not original at the time of the disputed registration.

Lack of Originality: A strong defense is that the design in question is not original. If it can be demonstrated that the design does not constitute an original work, it undermines the validity of its registration.

Non-Registrability Under the Act: If the design falls into a category that cannot be registered under the Designs Act, this can be used as a defense. This might include designs that do not meet the criteria set out in the Act for what can be legally protected.

Non-Conformity with the Definition of a Design: According to Section 2(d) of the Act, if the design does not meet the legal definition of a ‘design’ as outlined in the Act, this can be a valid ground for defense.

This involves showing that the design does not align with the specific features (like features of shape, configuration, pattern, ornament, or composition of lines or colors) that qualify for protection under the Act.

These defenses are crucial for anyone accused of design piracy, as they provide legal avenues to contest such accusations effectively. They emphasise the importance of the originality, novelty, and legal conformity of a design for it to be protected under the Designs Act, 2000.

Global Safeguarding of Industrial Designs: TRIPS, Hague System, and Indian Laws

International protection of industrial designs is a crucial aspect of intellectual property rights, ensuring that designers and inventors have their creations safeguarded across borders.

This protection is governed by various international agreements and systems, including the TRIPS Agreement and the Hague system. Additionally, countries like India have their own legislation, such as the Indian Designs Act, 2000, to protect industrial designs.

TRIPS Agreement

The TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement

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mandates its member countries to provide independent protection for innovative or unique industrial designs.

Under this agreement, designs are considered new and unique if they significantly differ from known combinations of design features.

TRIPS stipulates that members must grant design owners the right to prevent third parties from making, selling, or importing articles bearing or incorporating a protected design, especially when these acts are for commercial purposes.

The minimum protection period under TRIPS for a design owner is set at 10 years.

Hague System

The Hague system offers a streamlined process for the international protection of industrial designs.

It allows design owners to protect their designs in multiple countries by filing a single application with the International Bureau of the World Intellectual Property Organization (WIPO).

Currently, 58 countries are part of the Hague system, with 41 adhering to the Geneva Act of 1999 for international industrial design registration.

This system simplifies the process of protecting a design internationally, as it requires only one application and does not necessitate a domestic patent agent in the jurisdictions of protection.

The Hague system is particularly beneficial as it accepts applications conforming to its practices, regardless of the individual practices of member countries.

Protection of Industrial Designs under the Indian Designs Act, 2000

In India, the protection of industrial designs is governed by the Indian Designs Act, 2000.

This Act, which came into effect on May 11, 2001, replaced the earlier legislation of 1911. It aims to provide better protection and promote design activity for registered designs in India.

Under this Act, a design is considered new if it has not been made available to the public before the filing date, or if it exhibits uniqueness on a global scale in the application for registration in India.

The Act adopts a ‘first to file, first to receive’ approach, emphasising the importance of timely registration by design creators.

The Designs Act, 2000, grants the registered design owner exclusive rights to use, sell, license, or assign the design in India.

It also differentiates between ‘design’ and ‘artistic works’ as defined in the Indian Copyright Act, 1957, thereby clarifying the scope of protection for industrial designs.

Case Laws

Disney Enterprises Inc. v. Prime Housewares Ltd. (2014)

In this case, a significant dispute arose concerning India and international registration of industrial designs. This legal battle unfolded in the High Court of Delhi.

The case centered around Prime Housewares Ltd., a company based in Mumbai, which was involved in the manufacturing of popular Disney characters, including Mickey Mouse, Minnie Mouse, and Donald Duck. Disney Enterprises Inc. brought a complaint against Prime Housewares Ltd., alleging trademark infringement.

Disney’s primary argument was that while its trademark was protected under Indian law, the designs of these characters were not.

Ultimately, the High Court ruled in favor of Disney regarding the trademark infringement claim. As a result, the court issued an order instructing the Indian company, Prime Housewares Ltd., to provide Disney with all materials that violated their trademark.

Dabur India Limited v. Rajesh Kumar & Others

In this case, Dabur India Ltd., the plaintiff, marketed ‘Dabur Amla Hair Oil’ in uniquely designed bottles. These bottles featured a distinct semicircular shoulder with a curved back and front panel, forming an exclusive configuration.

The plaintiff’s design was registered under the Designs Act, as was the green cap. The bottles also bore the ‘Dabur’ trademark.

The plaintiff alleged that the defendants produced imitation plastic bottles, complete with the ‘Dabur’ trademark on the bottom, and sold these to counterfeiters of ‘Dabur Amla Hair Oil,’ constituting trademark infringement.

However, upon examination, the court found discrepancies in the plaintiff’s claims. No defendant-seized bottle displayed the ‘Dabur’ trademark.

The court concluded that the plaintiff’s infringement claims lacked merit, as their bottle design lacked distinctiveness, and similar designs were used by other companies before the plaintiff’s registration.

Case of Marico v. Raj Oil (2008)

In this case, the court determined that caps fell under the category of “articles” as defined by the Designs Act and were considered “capable of being made and sold separately.”

However, despite this classification, an injunction was not granted in this particular case due to the dissimilarity between the competing caps.

Case of Troikaa v. Pro Labs (2008)

In this case, the defendant was prohibited from manufacturing, marketing, and utilising tablets that closely resembled the plaintiff’s tablets.

This decision was based on the fact that the plaintiff had registered the shape and configuration of their tablets under the Designs Act.

Conclusion

In conclusion, the protection of intellectual assets through the registration of design plays a pivotal role in safeguarding the unique and distinctive designs of various articles.

The principle of construction in cases of registered design infringement involves a careful examination of similarities, and the registered proprietor must establish a clear case of infringement.

While legal protection is granted to registered designs, it is essential for proprietors to periodically review and update their registrations to adapt to changes in their class of articles.

Maintaining the integrity of registered innovative design product not only preserves the rights of creators but also upholds the principles of fair competition and contract debt within the realm of intellectual property law.

FAQs

What is an obvious imitation?

An obvious imitation refers to the act of copying a registered design while making slight modifications to it. In other words, for an imitation to be considered piracy, it must closely replicate the registered design without significant alterations.

What is design piracy?

Design piracy refers to the unauthorised replication or imitation of a registered design without the permission of the design proprietor. It involves copying the distinctive characteristics or visual elements of a design, often for commercial gain, in violation of intellectual property rights.

What is an example of design piracy?

An example of design piracy is when a manufacturer copies the unique design features of a popular and patented consumer product, such as a smartphone or fashion accessory, without obtaining proper authorisation from the original design owner. This imitation is done to produce and market a similar-looking product, thereby infringing on the registered design rights of the original creator.

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