INDUSTRIAL DESIGNS: Piracy of Registered Design

a. Definition: The Act defines "design" to mean only the features of shape, configuration,
pattern or ornament applied to any article 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. It is clear from the definition that design means the features
of shape, configuration, pattern or ornament applied to an article and not the article itself. The
design makes the article attractive for sale and is part and parcel of the article itself. The
design must be such that in the finished article the features of it "appeal to and are judged
solely by the eye". A good subject of design must be visually appealing, though it need not be
an artistic work or possess artistic merit.

The following items such as a mode of construction, mechanical device or property mark are
not covered by the definition of design in the Act

(i) A mode or principle of construction cannot be registered as a design. The reason for
excluding the mode or principle of construction from the scope of the definition of design is
that one cannot claim monopoly merely for a method or principle of construction by the
purported registration of a design;

(ii) a mechanical device or in other words a functional design is not capable of registration.6

(iii) any trade mark as defined in Section 2(1)(v) of the Trade and Merchandise Marks Act,
1958.

(iv) a property mark as defined in the Section 479 of the Indian Penal Code, 1860.

Obviously, these excluded items do not get the protection afforded by the Act.

Nature of Copyright protection in Designs

On the registration of a design under the Act the proprietor of the design acquires the
following rights:

(i) The exclusive right to apply the design to any article in any class in which the design is
registered;

(ii) the exclusive right to publish or expose, or cause to be published or exposed, any article
in any class of goods in which the design is registered to which such design is applied; and

(iii) the exclusive right to import for the purposes of sale any article belonging to the class in
which the design is registered and having applied to it that design.

When a design is registered, the registered proprietor of the design shall, subject to the
provisions of this Act, have copyright in the design for five years from the date of
registration. If an application is made to the controller and the prescribed fee is paid, the term
of protection may be extended for five years and further for five more years on the fulfilment
of same formalities. The protection of design cannot be obtained for more than fifteen years
by registration under the Act.8

b. Introduction: In order to catch the attention of buyers, an article must be visually

attractive. Visual attraction thus enhances its marketability. A bad appearance of an article
may have an adverse impact on its marketability. In ancient times also, the craftsmen and
artisans chose a shape or pattern to make the articles attractive to the eye of the buyers by
employing their personal skill.

After the industrial revolution, it became possible to give mass articles a unique shape by
industrial process. Today, manufacturers are paying adequate attention to the designs of the
articles they produce. For this purpose, they invest substantial capital and carry out research.
Legal protection becomes necessary for the creation of new designs and their application to
articles. The protection now afforded to designs in India by Design Protection Act, 1911 has
proved to be inadequate and obsolete.

The first designs legislation enacted in India was the Patterns and Designs Protection Act,
1872 which extended to the inventors of new patterns and designs in British India the
exclusive privilege of making, selling and using the invention in India or authorising others to
do so for a very much short duration of time. Later the Invention and Designs Act, 1888 was
enacted to consolidate and amend the law relating to the protection of inventions and
designs.1

In the United Kingdom the Patents and Designs Act was enacted in 1907. It became the basis
of the Indian Patents and Designs Act, 1911. Later in 1970 the Patents Act repealing
provisions relating to patents in the Indian Patents and Designs Act, 1911 was enacted by the
Parliament. The provisions relating to designs in the Indian Patents and Designs Act, 1911,
were allowed to continue under the new title Designs Act, 1911 with some consequential
amendments. There is no post-independence Designs Act to protect new designs.

Piracy of a design means the application of a design or its imitation to any article belonging
to the class of articles in which the design has been registered for the purpose of sale or
importation of such articles without the written consent of the registered proprietor.
Publishing such articles or exposing them for sale with knowledge of the unauthorized
application of the design to them also involves piracy of the Design. The proprietor of the
design gets exclusive right to apply the design to the article in a class in which the design is
registered. During the existence of copyright over any design, other persons are prohibited
from using the design except or with the permission of the proprietor, his licensee or
assignee. The following activities are considered to be infringement: (i) to apply for the
purpose of sale the design or any fraudulent imitation of it to any article in any class of
articles in which the design is registered; (ii) to import for sale any article to which the design
or fraudulent or obvious imitation of it, has been applied; (iii) to publish or to expose for sale
knowing that the design or any fraudulent or obvious imitation of it has been applied to it.
[Section 22]
c. Piracy of registered design or infringement of copyright in registered designs

Section 53(1) of the Designs Act lays down that the following three acts committed by a
person other than the registered proprietor of that design amounts to piracy. These are:

(i) for the purpose of sale to apply or cause to be applied to any article in any class of goods
in which the design is registered the design or any fraudulent or obvious imitation thereof,
except with the licence or written consent of the registered proprietor, or to do anything with
a view to enable the design to be so applied; or

(ii) 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 having applied to it
the design or any fraudulent or obvious imitation thereof; or

(iii) knowing that the design or any fraudulent or obvious imitation thereof has been applied
to any article in any class of goods 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.

The provisions of this section will only be applicable during the existence of copyright in
design. It is necessary that the acts constituting piracy have been done for the purpose of sale
and not merely for private or personal use. It is further required that the forbidden acts have
been done in relation to any article in any class of goods in which the design is registered and
not in relation to other class of goods.

d. Remedies against the piracy of registered design

Two alternative remedies are available against the piracy of registered design under Section
53(2)(a) and Section 53(2)(b). The proprietor has to elect one of these two remedies.

Section 53(2)(a) provides that if any person acts in contravention of Section 53, he shall be
liable to pay the registered proprietor of the design a sum not exceeding Rs 500 for every
contravention recoverable as a contract debt. But the total sum recoverable in respect of any
one design shall not exceed Rs 1000.

Section 53(2)(b) provides that the proprietor may bring a suit for the recovery of damages for
any such contravention, and for an injunction against the repetition thereof. In case he
succeeds, he will be entitled to recover such damages as may be awarded by the court and
restrain the defendant in terms of the injunction granted by the court.

As mentioned earlier, a plaintiff cannot avail both the remedies. He has to choose one. The
Bombay High Court in Calico Printers Association Ltd. v. Gosho Kabushiki Kaisha
Ltd.18ruled that the defendant has a right to ask the plaintiff to elect between the remedies
available to him under Sections 53(2)(a) and 53(2)(b) at an early stage of the trial.

A plaintiff cannot have an account of the profits made by the defendant in lieu of a claim for
the payment of Rs 1000 or for a claim of damages.
In a suit for infringement the defendant can take following defences : (a) he can deny that
there was any infringement as alleged, or (b) contend that the design applied by him was
materially different from the registered design, or (c) that he applied the design with the
consent of the registered proprietor of the design, or (d) that the plaintiff is not the proprietor
of the design, or (e) that the registration of the design is invalid as in fact there was no design
as claimed within the definition under Section 2(5), or (f) the design was not new or original
or had been previously registered or published in India.

In the case of Mohammed Abdul Kareem v. Mohammed Yasin19the Allahabad High Court

held that entry of a person's name in the register as the proprietor did not conclusively make
him the registered proprietor. This can be rebutted by adducing evidence to the contrary. This
principle was confirmed in Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd.20 In this case
the Delhi High Court rejected the argument of plaintiff that it was not open to the defendant
to attack the validity of the registration which could be done only in a separate action for
cancellation of the registration.

e. Interlocutory injunction under Civil Procedure Code

In addition to remedies provided in Sections 53(2)(a) and 53(2)(b), the plaintiff may seek
interlocutory injunction pendente liteunder CPC, Order 39 Rules 1 and 2. The principles
applicable to the grant of interlocutory injunction in the case of a design are the same as are
applicable in the case of a patent.

The plaintiff must make out a prima facie case and show that the balance of convenience is in
his favour. An interlocutory injunction will not normally be granted where damages will
provide an adequate remedy, should the plaintiff's claim succeed. The Delhi High Court
in Niki Tasha P. Ltd. v. Faridabad Gas Gadgets P. Ltd.20 held that the court will not grant an
interlocutory injunction unless satisfied that there is a real probability of the plaintiff
succeeding on conclusion of the trial of the suit. Interlocutory injunction will not be granted if
there are substantial grounds for attacking the validity of the registration.

Interlocutory injunction will also be denied if the defendant gives an undertaking to keep an
account if he is a person of substance and the undertaking will give the relief which the
plaintiff requires.

In Bansal Plastic Industries v. Neeraj Toys Industries the court stated that granting a

temporary injunction is in the discretion of the court which is to be exercised in accordance
with reason and sound principles.

f. Conclusions

Design protection law contained in the Designs Act, 1911 is in fact the leftover part of
Patents and Designs Act, 1911. The patent provisions which were repealed from the Patents
and Designs Act, 1911 were incorporated in the Patent Act, 1970 after a thorough revision on
the basis of expert committee report and legislative debates. But unfortunately, no such
exercise was undertaken in respect of design law.
The Designs Act, 1911 is outdated in many respects and inadequate to meet the growing
demands for design protection in India. The main deficiencies of the existing legislation
which require immediate attention are outlined below.

The definition of design under the Designs Act, 1911 is inadequate. Functional designs
should also be included in the definition to make it effective. One can claim better rights
under copyright law in functional or mechanical design but not under the Designs Act.

Registration of design is allowed to class to which goods belong and not to particular goods,
while in the United Kingdom, registrations are given in respect of particular goods. Remedies
under the Designs Act are neither adequate nor effective. Under Section 53(2)(a) of the Act,
the infringer is liable to pay the proprietor a sum, not exceeding Rs 1000 in the aggregate as a
contract debt which in fact is inadequate. It is felt that no sum need be fixed in the Act and
damages should be granted on the basis of the nature of infringement.

Unlike patent annual report, there is no provision for annual report on designs.

Finally, serious attention should be given to secure international protection for the proprietors
of Indian design. At present as we are not parties to the Paris Convention for the Protection of
Industrial Property, such international protection can only be secured by bilateral
arrangements such as we have with U.K. and others as commonwealth States. With the
globalisation of our economy and with increased international trade and investment, it will be
necessary to secure for our design’s protection in the industrialised nations, and designs are
very important aspect of competitiveness. 

g. References/Citations: