Just like other intellectual properties, Design is also subject to infringement. Design infringement is the illegal act in which using of the registered design, or fraudulent copying of the registered design, without permission or authorization from the owner of such a registered design. IN such a case an owner of a registered design can go ahead to file a suit for compensation for the unauthorized use of that registered Design.
What is Design?
In layman, sense Design is merely just an outlook of an object through the naked eye. But, the definition of design under the legal ambit changes itself into features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether in two dimensional or three dimensional or 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 of construction or anything which is in substance a mere mechanical device, and does not include any trademark or property mark or artistic work.
Exceptions to the registration of design are as follow: –
- Any mode of construction or trademark which are already had been defined in the Trade and merchandise marks Act, 1958 shall not include.
- Any property mark defined under Section 479 of Indian penal Code, 1860 shall also not include.
- No artistic work also be included which is defined under Copyright Act,1957.
What is Piracy?
The real meaning of piracy originated from pirates — thieves who hijack other boats, taking what they want. That will help you to recall that piracy means to steal someone else’s work, usually their words or ideas. For Example, if a writer who doesn’t cite their sources is committing piracy. Piracy is plagiarism, and it is legally and morally wrong.
Under the Designs Act, 2000, Section 22 deals with Piracy in registered designs. Section 22 Sub-section 1 prohibits a person other than the registered proprietor of the design from certain acts in respect of designs and if anyone commits such acts, he shall be liable for piracy of the design. Section 22 Sub-section 2 deals with remedies available with the registered proprietor in case of piracy of a design.
PIRACY OF DESIGN:
SECTION 22(1) Under the Design Act, 2000, states that 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 license or written consent of the registered proprietor, or to do anything with a view to enabling 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.
In order to constitute piracy, the above-mentioned acts must be perpetrated during the existence of copyright in the design. It is also pertinent to mention that if acts are done for personal use and not sale then they do not constitute piracy.
In the case of Marico Limited Company v. Raj Oil Mills Limited (AIR 2008 Bom 111) it was pronounced that both the caps do not have identical configuration and protrusions as claimed and therefore, there is no question of infringement of any registered design.
In the judgment of Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1931) XLVIII RPC 279 the court was held that fraudulent imitation is an imitation which is based upon, and purposely based upon, the registered design and is an imitation which may be less evident than obvious imitation, that is to say, one may have a more precise difference between the registered design and a fraudulent imitation and still the fraudulent imitation, while it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation evident when the two designs are closely scanned and accordingly amounts to infringement.
Again, In the case of The Wimco Limited vs Meena Match Industries (ILR 1984 Delhi 121), it was held that the fundamental principle behind the law of infringement of design is that, while the commercial compulsion requires that a specific design should be protected, the monopoly of trade-in respect of a common design previously published should not be encouraged.
REMEDIES AGAINST PIRACY:
Section 22(2) states that 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.
The plaintiff/ registered proprietor can only elect one remedy and cannot avail both the remedies simultaneously. The remedies available to the plaintiff are explained below:
- RECOVERY OF DAMAGES:
The plaintiff is authorized to claim damages if he has done any infringement/ piracy of the design. The parameter of damages depends upon the loss suffered by the plaintiff. According to the fact, the damages are assessed on the basis of reasonable royalty upon the infringing articles. The good part of adopting this remedy is that damages can also be received for unintentional infringement.
The plaintiff can retreat to the remedy of injunction. The injunction is of two kinds:
i. Temporary/interlocutory injunction under order 39 of C.P.C. and
ii. Permanent injunction
i. Temporary injunction:
In the case of M/S. Kemp & Company & Another vs M/S. Prima Plastics Ltd. (1999 (1) BomCR 239) it was held that If damages are the measure recoverable at common law would be an adequate remedy and the defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the plaintiffs claim appeared to be at that stage.
In the case of Indo Asahi Glass Co. Ltd. vs Jai Mala Roller Glass Ltd. 57 (1995) DLT 72 it was held that as long as both, the plaintiff’s design and the defendant’s design stand registered, the plaintiff cannot be granted relief of temporary injunction. In order to safeguard the rights of the plaintiff, if ultimately they are established in the suit, at the most the defendant can be required to maintain proper accounts of its sales of the goods under the disputed design till the disposal of the suit and file the copies of the statement of accounts in court quarterly till the disposal of the suit.
In the case of Niki Tasha India Pvt. Ltd. v. Faridabad Gas Gadgets Pvt. Ltd. (AIR 1985 Delhi 336), it was 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.
ii. Permanent Injunction:
If the plaintiff successfully proves and establishes in the trial infringement of his registered design, he will be entitled to a decree of permanent injunction which restores his status quo on the design. The aim of the granting injunction is to restraint infringement but if there is no probability of infringement in the future, the injunction can be denied by the court.
3. ACCOUNT OF PROFITS:
The court can direct the defendants to maintain accounts of profits during the period of the pendency of infringement and these accounts can be used for assessing the damages.
COMMON LAW REMEDY OF PASSING OFF:
The passing off is a common law remedy that was earlier only available in case of trademark infringement but with the development in the scope of passing off, this remedy is also available under the Designs Act, 2000.
An action for passing off is opted for when a party was misrepresenting by using the Plaintiff’s trademark, the consequences of which include damage to the reputation and goodwill of the Plaintiff and Plaintiff’s goods.
Design piracy is one of the ways to Infringe IPR. It is said to be an illegal act when any registered design is copied without the permission of the owner. The legal remedies for infringement of design are given in section 22 subsection 2 of the design act, 2000.
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