Piracy Of Registered Designs In India
A “Design,” according to Section 2 (d) of the Act, is defined as features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article by any industrial process or means. The article can be a two-dimensional or three-dimensional article, and should be capable of being made and sold separately.
Protection and registration of designs under Designs Act, 2000 and Designs Rules, 2001 is provided only to those designs that are aesthetic in nature. It does not grant protection to any mode or principle of construction, trademark, artistic mark or property mark.
Design just like all other intellectual properties is susceptible to infringement. ‘Piracy of Design’ is the usage of the registered design, or fraudulent copying without the authorization from the proprietor. The owner of a design has an exclusive right to apply their design for registration to an article in a class in which the design is registered. Copyright in design subsists for 10 years from the date of registration and can be extended for a further period of 5 years.
Design Piracy
According to the S.22 of the Designs Act, 2000, which clearly lays downs the instances which would amount to piracy of design are as follows:
- If in any class of articles in which design is registered is used for sale involving fraudulent or obvious imitation of that design.
The word imitation does not mean duplication in the sense that the copy complained of need not be an exact replica. It is required to examine that whether the essential part or the basis of the Plaintiff’s claim for novelty forms part of the infringing copy. The rival designs are to be considered as a whole to see whether the impugned design is substantially different from the design sought to be enforced
- If any class of articles is imported for the purpose of sale without the consent of the registered proprietor of the registered design.
- If any class of articles with the knowledge of fraudulent or obvious imitation in it has been exposed or published for sale without the consent of the registered proprietor.
Case Laws
- In Troikaa Pharmaceuticals v. Pro Laboratories, (2008) 49 (3) GLR 2635, the plaintiff had registered design in the ‘D’ shaped tablets. The court granted interlocutory injunction against the defendant as he was manufacturing similar designs of tablets without authorization from the plaintiff.
- In Dabur India Limited v Rajesh Kumar & Others [2008 (37) PTC 227 (Del.), the plaintiff advertised Dabur Amla Hair Oil into bottles with distinctive design. The plaintiff alleged defendants imitate and produce plaintiff’s plastic bottles. However, the court held that plaintiff has no particular characteristic of the registered bottle as design. The plastic bottles are extremely common. The Court further found that the plaintiff did not mention any particular originality in the design of the bottle.
- Diageo Brands B.V. & Anr. v. Alcobrew Distilleries India Pvt., DHC (2022), was decided in favor of the defendant and it was held that their design did not infringe the bottle design of the plaintiff. Further, court observed that the issue of design piracy has to be investigated from the perspective of a knowledgeable observer who is able to comprehend the adequate details. The distinguishing factor of the suit design in comparison to previous art which plaintiff cites ad evidence for novelty were common and not unique in
Legal Remedies
The remedies for design piracy are enumerated in S.22 (2) of the Industrial Designs Act,2000, which states that there can be two alternate remedies provided to the registered proprietor in the case of design piracy which are:
- Registered proprietor of the registered design is entitled to maximum amount of twenty five thousand rupees as a contractual debt. However, the total sum recoverable for any one design cannot exceed fifty thousand rupees, or
- The registered proprietor can file a suit for temporary/permanent injunction as well as for recovery of damages. The damages so awarded and the injunction granted are to be executed against the infringer.
- Rendition of accounts is as well a remedy where in 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.
The suit for damages or injunction can be instituted in a court not below District Court.
Copyright Protection for Designs
The Copyright Act of 1957 also provides legal protection to innovative designs. It is important to note that according to S.15 (1) of the Act the registration of designs and copyrights are mutually exclusive. Further, S.15 (2) of the Act, states that if an article is registered under both the design as well as the copyright protection and is produced more than fifty times by an industrial process then the copyright protection to the same automatically ceases. In such a case, if the design is not registered in India, then it no longer has any protection against imitation by competitors.
International Protection of Industrial Designs
TRIPS Agreement requires its WTO members to protect the proprietor of the design to restrict third parties from consenting to production, sale, import etc. by adding or making changes in their legislative provisions related to the same. The Paris Industrial Property Protection Convention and Hague Convention are the significant international agreement agreed upon by the member states providing general criteria of protection for industrial designs. India is party to Paris Convention but not Hague System, however it follows Locarno agreement-based International Classification for Industrial Designs.
Conclusion
With the ever changing needs of the society it is important to bring something new to keep up with the competition. There is always demand for innovative design products in the market. Thus, the proprietors wants to register their designs before the idea is in public domain. It is important to protect the industrial design and the proprietor against the infringement. The Designs Act of 2000 for industrial designs gives protection to all contractual parties and offers great security to foreign traders in India.
Piracy Of Registered Designs In India.
Piracy Of Registered Designs In India
A “Design,” according to Section 2 (d) of the Act, is defined as features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article by any industrial process or means. The article can be a two-dimensional or three-dimensional article, and should be capable of being made and sold separately.
Protection and registration of designs under Designs Act, 2000 and Designs Rules, 2001 is provided only to those designs that are aesthetic in nature. It does not grant protection to any mode or principle of construction, trademark, artistic mark or property mark.
Design just like all other intellectual properties is susceptible to infringement. ‘Piracy of Design’ is the usage of the registered design, or fraudulent copying without the authorization from the proprietor. The owner of a design has an exclusive right to apply their design for registration to an article in a class in which the design is registered. Copyright in design subsists for 10 years from the date of registration and can be extended for a further period of 5 years.
Design Piracy
According to the S.22 of the Designs Act, 2000, which clearly lays downs the instances which would amount to piracy of design are as follows:
- If in any class of articles in which design is registered is used for sale involving fraudulent or obvious imitation of that design.
The word imitation does not mean duplication in the sense that the copy complained of need not be an exact replica. It is required to examine that whether the essential part or the basis of the Plaintiff’s claim for novelty forms part of the infringing copy. The rival designs are to be considered as a whole to see whether the impugned design is substantially different from the design sought to be enforced
- If any class of articles is imported for the purpose of sale without the consent of the registered proprietor of the registered design.
- If any class of articles with the knowledge of fraudulent or obvious imitation in it has been exposed or published for sale without the consent of the registered proprietor.
Case Laws
- In Troikaa Pharmaceuticals v. Pro Laboratories, (2008) 49 (3) GLR 2635, the plaintiff had registered design in the ‘D’ shaped tablets. The court granted interlocutory injunction against the defendant as he was manufacturing similar designs of tablets without authorization from the plaintiff.
- In Dabur India Limited v Rajesh Kumar & Others [2008 (37) PTC 227 (Del.), the plaintiff advertised Dabur Amla Hair Oil into bottles with distinctive design. The plaintiff alleged defendants imitate and produce plaintiff’s plastic bottles. However, the court held that plaintiff has no particular characteristic of the registered bottle as design. The plastic bottles are extremely common. The Court further found that the plaintiff did not mention any particular originality in the design of the bottle.
- Diageo Brands B.V. & Anr. v. Alcobrew Distilleries India Pvt., DHC (2022), was decided in favor of the defendant and it was held that their design did not infringe the bottle design of the plaintiff. Further, court observed that the issue of design piracy has to be investigated from the perspective of a knowledgeable observer who is able to comprehend the adequate details. The distinguishing factor of the suit design in comparison to previous art which plaintiff cites ad evidence for novelty were common and not unique in
Legal Remedies
The remedies for design piracy are enumerated in S.22 (2) of the Industrial Designs Act,2000, which states that there can be two alternate remedies provided to the registered proprietor in the case of design piracy which are:
- Registered proprietor of the registered design is entitled to maximum amount of twenty five thousand rupees as a contractual debt. However, the total sum recoverable for any one design cannot exceed fifty thousand rupees, or
- The registered proprietor can file a suit for temporary/permanent injunction as well as for recovery of damages. The damages so awarded and the injunction granted are to be executed against the infringer.
- Rendition of accounts is as well a remedy where in 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.
The suit for damages or injunction can be instituted in a court not below District Court.
Copyright Protection for Designs
The Copyright Act of 1957 also provides legal protection to innovative designs. It is important to note that according to S.15 (1) of the Act the registration of designs and copyrights are mutually exclusive. Further, S.15 (2) of the Act, states that if an article is registered under both the design as well as the copyright protection and is produced more than fifty times by an industrial process then the copyright protection to the same automatically ceases. In such a case, if the design is not registered in India, then it no longer has any protection against imitation by competitors.
International Protection of Industrial Designs
TRIPS Agreement requires its WTO members to protect the proprietor of the design to restrict third parties from consenting to production, sale, import etc. by adding or making changes in their legislative provisions related to the same. The Paris Industrial Property Protection Convention and Hague Convention are the significant international agreement agreed upon by the member states providing general criteria of protection for industrial designs. India is party to Paris Convention but not Hague System, however it follows Locarno agreement-based International Classification for Industrial Designs.
Conclusion
With the ever changing needs of the society it is important to bring something new to keep up with the competition. There is always demand for innovative design products in the market. Thus, the proprietors wants to register their designs before the idea is in public domain. It is important to protect the industrial design and the proprietor against the infringement. The Designs Act of 2000 for industrial designs gives protection to all contractual parties and offers great security to foreign traders in India.
Piracy Of Registered Designs In India.
Piracy Of Registered Designs In India
A “Design,” according to Section 2 (d) of the Act, is defined as features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article by any industrial process or means. The article can be a two-dimensional or three-dimensional article, and should be capable of being made and sold separately.
Protection and registration of designs under Designs Act, 2000 and Designs Rules, 2001 is provided only to those designs that are aesthetic in nature. It does not grant protection to any mode or principle of construction, trademark, artistic mark or property mark.
Design just like all other intellectual properties is susceptible to infringement. ‘Piracy of Design’ is the usage of the registered design, or fraudulent copying without the authorization from the proprietor. The owner of a design has an exclusive right to apply their design for registration to an article in a class in which the design is registered. Copyright in design subsists for 10 years from the date of registration and can be extended for a further period of 5 years.
Design Piracy
According to the S.22 of the Designs Act, 2000, which clearly lays downs the instances which would amount to piracy of design are as follows:
- If in any class of articles in which design is registered is used for sale involving fraudulent or obvious imitation of that design.
The word imitation does not mean duplication in the sense that the copy complained of need not be an exact replica. It is required to examine that whether the essential part or the basis of the Plaintiff’s claim for novelty forms part of the infringing copy. The rival designs are to be considered as a whole to see whether the impugned design is substantially different from the design sought to be enforced
- If any class of articles is imported for the purpose of sale without the consent of the registered proprietor of the registered design.
- If any class of articles with the knowledge of fraudulent or obvious imitation in it has been exposed or published for sale without the consent of the registered proprietor.
Case Laws
- In Troikaa Pharmaceuticals v. Pro Laboratories, (2008) 49 (3) GLR 2635, the plaintiff had registered design in the ‘D’ shaped tablets. The court granted interlocutory injunction against the defendant as he was manufacturing similar designs of tablets without authorization from the plaintiff.
- In Dabur India Limited v Rajesh Kumar & Others [2008 (37) PTC 227 (Del.), the plaintiff advertised Dabur Amla Hair Oil into bottles with distinctive design. The plaintiff alleged defendants imitate and produce plaintiff’s plastic bottles. However, the court held that plaintiff has no particular characteristic of the registered bottle as design. The plastic bottles are extremely common. The Court further found that the plaintiff did not mention any particular originality in the design of the bottle.
- Diageo Brands B.V. & Anr. v. Alcobrew Distilleries India Pvt., DHC (2022), was decided in favor of the defendant and it was held that their design did not infringe the bottle design of the plaintiff. Further, court observed that the issue of design piracy has to be investigated from the perspective of a knowledgeable observer who is able to comprehend the adequate details. The distinguishing factor of the suit design in comparison to previous art which plaintiff cites ad evidence for novelty were common and not unique in
Legal Remedies
The remedies for design piracy are enumerated in S.22 (2) of the Industrial Designs Act,2000, which states that there can be two alternate remedies provided to the registered proprietor in the case of design piracy which are:
- Registered proprietor of the registered design is entitled to maximum amount of twenty five thousand rupees as a contractual debt. However, the total sum recoverable for any one design cannot exceed fifty thousand rupees, or
- The registered proprietor can file a suit for temporary/permanent injunction as well as for recovery of damages. The damages so awarded and the injunction granted are to be executed against the infringer.
- Rendition of accounts is as well a remedy where in 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.
The suit for damages or injunction can be instituted in a court not below District Court.
Copyright Protection for Designs
The Copyright Act of 1957 also provides legal protection to innovative designs. It is important to note that according to S.15 (1) of the Act the registration of designs and copyrights are mutually exclusive. Further, S.15 (2) of the Act, states that if an article is registered under both the design as well as the copyright protection and is produced more than fifty times by an industrial process then the copyright protection to the same automatically ceases. In such a case, if the design is not registered in India, then it no longer has any protection against imitation by competitors.
International Protection of Industrial Designs
TRIPS Agreement requires its WTO members to protect the proprietor of the design to restrict third parties from consenting to production, sale, import etc. by adding or making changes in their legislative provisions related to the same. The Paris Industrial Property Protection Convention and Hague Convention are the significant international agreement agreed upon by the member states providing general criteria of protection for industrial designs. India is party to Paris Convention but not Hague System, however it follows Locarno agreement-based International Classification for Industrial Designs.
Conclusion
With the ever changing needs of the society it is important to bring something new to keep up with the competition. There is always demand for innovative design products in the market. Thus, the proprietors wants to register their designs before the idea is in public domain. It is important to protect the industrial design and the proprietor against the infringement. The Designs Act of 2000 for industrial designs gives protection to all contractual parties and offers great security to foreign traders in India.
Piracy Of Registered Designs In India.
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