Piracy of registered Design
July 12, 2022
Biswajit Sarkar - IP Law Firm India
Post time: 2:01 pm
The term “piracy” can be defined as an unauthorised use of another’s work. This causes reputation and economic loss to the owner. In the context of Industrial designs, piracy occurs when someone other than the owner uses the registered design for his own gain. The same has been defined in Section 22(1) of the Designs Act, 2000 and states that the commission of any of the three acts by a person other than the registered proprietor of the design will lead to piracy of registered design. In this article, we shall explore the acts that amount to piracy of registered designs and remedies.
- Sale: If any obvious or fraudulent imitation of a registered design has been applied to any article or caused to be applied to any article without the license or written consent of the registered proprietor for the purpose of sale then that amounts to piracy of registered designs.
- Importing for sale: When an article over which the fraudulent or imitated design has been applied without the consent of the registered proprietor and such an article has been imported for the purposes of sale then such importation will amount to piracy of the registered design.
- Publication for sale: Where the imitator knowingly publishes, exposes or causes to publish or exposes for sale the article over which the fraudulent or imitated design has been applied, will amount to piracy of registered designs.
These acts will amount to piracy only when copyright exists in any design. For it to constitute piracy of registered design, it should have been done for the purpose of sale and not merely for private or personal use. Moreover, the forbidden acts should be done in relation to any article in any class of goods in which the design is registered. If it is not in relation to any class of goods then it will not amount to piracy.
The purpose of Section 22 of the Designs Act is to protect novelty and originality in the design, empower the proprietor having copyright in the registered design and restrain the infringer from committing acts of piracy.
- Simmons v. Mathison and Co. Ltd. (1911): The registration of the design must be taken in a narrow way. It simply means that there would no infringement unless the totality of the registered design has been infringed. Thus, it does not amount to infringement if a part of a registered design has been taken in addition to some new part to make a new design that is not identical to the registered design. To constitute infringement, the design must be a fraudulent or obvious imitation. The court in determining the “imitation” usually looks at the essential part of the registered design where the novelty resides.
- Whirlpool of India Ltd. v. Videocon Industries Ltd. (2012): The court stated that the defendant (Videocon Industries Ltd.) merely used a different colour scheme, putting some different lines and imitated the basic structure of the plaintiff’s design, i.e. rectangular shape on one side and semi-circular on the other with jettison panel for knobs for which the plaintiff had obtained the registration of the design. The defendant’s imitation of the plaintiff’s designs violated the rights of the plaintiff as the novel factors of the designs were imitated.
Remedies against the piracy of registered design
Under the Designs Act, 2000, the proprietor has two alternative remedies available against the piracy of registered designs and he can select only one of them. They are as follows:
- Section 22(2)(a) provides that if a person acts contrary to Section 22 of the Act, he shall be liable to pay the registered proprietor a sum not exceeding twenty-five thousand rupees for every violation recoverable as a contract debt. However, the total sum recoverable in respect of any one design will not exceed a sum of fifty thousand rupees.
- Section 22(2)(b) states that the registered proprietor may institute a suit for recovery of damages for any violation and may seek an interlocutory injunction under Rules 1 and 2 of Order 39 of the Civil Procedure Code (CPC) to compel the imitator to stop making obvious and fraudulent imitations while the suit is pending. If he succeeds, the court may award an injunction along with damages, accounts of profit and the delivery or destruction of all infringing copies in possession of the defendant.