Blog Details

Like other Intellectual Properties, Design is also prone to Infringement. An Infringement of Design is an illegal act to use a registered design, or fraudulent imitation of a registered design, without the authorization from the owner of such registered design. The registered owner of the design in such case of Infringement of Design can file a suit to recover a nominal sum as damages from the infringer, and also ask the infringer to stop such Infringement.

{The Article elaborates - registered design infringement, design infringement cases, design infringement in india, remedies for infringement of design in india} 

What is design infringement?

The owner of a registered design right may exclusively work on the registered design or any design similar to it. If a third party manufactures or sells, etc., the registered design or any similar design for commercial purposes (meaning that private or domestic use is excluded) and if the third party is not licensed to do so by the owner of the registered design right, such activity constitutes a design right infringement.

{The Article elaborates - registered design infringement, design infringement cases, design infringement in india, remedies for infringement of design in india} 

Design Infringement 

The details of a registered design right are those specified in the request submitted in the application for design registration and the attached drawings. 

However, because the scope of a design right extends to not only the registered design but to any similar design, the similarity of the design (whether it is similar or not) is an issue for the determination of design infringement.

In making an actual judgement regarding similarity, it is common for two designs to be deemed similar after comparing the two designs and finding similar 

1. the overall dominant constitution and the specific constitution of both designs and 

2. the feature (characteristic creation, the outstanding part when the article is being used, etc.), of the designs, and

3.  a common dominant constitution in both designs or

4.  only a slightly different dominant constitution in both designs or the difference is not notable (i.e., the difference is a well-known constitution).

In the Design Act, 2000, the piracy of registered design is considered as an Infringement of Design in India. Section 22 of the Designs Act, 2000, provides the provisions related to the Piracy of registered Designs in India. As per Section 22 of the Design Act, 2000, any fraudulent or obvious imitation of a Design that is already registered without the consent of the owner or proprietor of the registered design is unlawful. The Section also prohibits the import of any kind of substance or material which is in close resemblance to such a registered design.

An Infringement of a registered Design means when any person, without the consent of the proprietor of the design, imports, applies or publishes the registered design or any obvious or fraudulent or imitation thereof.

In order to ascertain Design Infringement in India, the court or any adjudicatory body is not required to compare the two articles directly but should look at the articles from the point of view of an average consumer and should see if the two articles are causing any obvious confusion in the minds of the consumers.

{The Article elaborates - registered design infringement, design infringement cases, design infringement in india, remedies for infringement of design in india} 

Essential requirements for a Design for protection from Design Infringement in India

• Design should be original or  new 

• A design should not have been previously disclosed to the public 

• A design should be significantly distinguished from other known designs or combinations.
  
  {The Article elaborates - registered design infringement, design infringement cases, design infringement in india, remedies for infringement of design in india} 

Rights of owner 

The owner or proprietor on the registration of a Design under the Act acquires certain exclusive rights which are as follows:

• The exclusive right to apply the registered design to any articles in any of the classes in which the design is registered;

• The exclusive right to expose or publish, or cause to be exposed or published, any articles in any classes of goods in which the design is registered to which such a Design is applied; and

• The exclusive right to import for the purposes of sale of any articles belonging to the classes in which the design is registered and having applied to it that design.
  
  {The Article elaborates - registered design infringement, design infringement cases, design infringement in india, remedies for infringement of design in india} 

Remedies for design infringement 

The Design Act, 2000, under Section 22(2), provides for the liabilities of the infringer of a Design, which are the remedies available impliedly to the registered proprietor or owner of the design. 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:

• As per Section 22(2)(a) of the Design Act, 2000, the infringer is required to pay a sum not exceeding 25,000 Rupees for every contravention or breach recoverable as a contract debt to the registered owner or proprietor. The total sum of such amount, which is recoverable for one design, should not exceed 50,000 Rupees.

• As per Section 22(2)(b) of the Design Act, 2000, the registered owner or proprietor can choose to bring a suit for recovery of the damages, and can also plead for an injunction against repetition. In such a case, the infringing party is liable to pay such an amount as the court awards and is also restricted by an injunction, respectively.

The rationale behind such a liability for an infringing party is to make an infringing party liable for loss suffered by the registered owner or proprietor of the design and to confirm a fair return on the investment of the proprietor or owner.

Although to claim damages, the registered owner or proprietor is required to mark his/her articles in some manner, which will denote that a particular Design is registered and take all necessary steps needed to ensure the marking of the articles of the registered owner or proprietor.

Section 55 of the Copyright Act, 1957 provides for civil remedies that can be availed by the registered proprietor wherein, if any person who is intentionally infringing such work as covered in the Copyright Act, 1957 are entitled to seek remedy in the form of either claiming damages, accounts or by filing a suit for injunction against the person who has infringed the right of the registered proprietor.

The registered proprietor is also entitled to receive such profit which was gained by the wrongdoer during the time of using the infringed design of the registered proprietor. The registered proprietor may also seek an interlocutory injunction as under Order 39, Rules 1 and 2 of The Code of Civil Procedure, 1908 wherein, the registered proprietor has to establish a prima facie case showing “balance of convenience” in its favour. 

As under Administrative Remedies, the registered proprietor of the design can file an application under section 53 of the Copyright Act, 1957 before the Registrar of Copyright for stopping the import of products that are subjected to infringement of his/ her right under the Copyright Act, 1957 wherein, after necessary examination, may confiscate such products which are likely to infringe the rights of the registered proprietor.

Section 63 of the Copyright Act, 1957 provides for criminal remedies that can be availed by the registered proprietor wherein, if any person who is intentionally infringing or abets such infringement of such work as covered in the Copyright Act, 1957 or otherwise (meaning work connected to designs as under the Act), such person shall be punished by way of imprisonment for a minimum of 6 (six) months which may extend up to 3 (three) years along with fines amounting to a minimum of INR 50,000 which may extend to INR 2,00,000.

Section 63A of the Copyright Act, 1957 provides for punishment on second and subsequent crime wherein criminal remedies can be availed by the registered proprietor. Such punishment shall consist of imprisoning the wrongdoer for a minimum of 1 (one) year which may extend up to 3 (three) years along with fines amounting to a minimum of INR 1,00,000 which may extend to INR 2,00,000.

This article specifically deals with what constitutes an infringement of copyright in design while keeping in mind the provisions as laid down in the Designs Act, 2000. It provides the remedies available against the person who has infringed the right of the proprietor of the design.

{The Article elaborates - registered design infringement, design infringement cases, design infringement in india, remedies for infringement of design in india}