The proprietor of a registered design is bestowed with certain rights which are exclusive in

nature such as to sell, license and manufacture articles that make use of the design in
question. Section 22 of the Design Act, 2002 deals with safeguards and statutes regarding
piracy of a registered design in India. In accordance with the Act, Piracy with regard to
design is considered when any person:

 With intention to sell, license or market any design that is registered under the Design
Act, 2000 without the written consent or license of the registered proprietor.
 When any fraudulent or obvious imitation endeavours to sell or market any article in
any class of article where the aforementioned design has been registered without
acquiring prior consent from the registered proprietor
 Exposes or publishes an article in question knowing full well that the design or any
fraudulent or obvious imitation has been applied to an article in any class of article
where the design resides.

After perusal of the aforementioned laws, it is apparent that applying for a registered design
(or a fraudulent imitation of such as under the Act) with intent to publish, import or sell an
article where such design already exists in the same class where a new design is aiming to be
registered, without prior consent from the proprietor is illegal. The said section also contains
provisions where anyone who acts in contravention to these laws is to be subjected to filing
of a suit to recover a nominal sum of damages or contract debt. Injunction may also be filed
for misusing the design.

Notwithstanding the above provisions, not every resemblance or similarity is a case for
infringement or action in cases of Piracy of registered designs. For a design to be considered
an obvious imitation it must be similar to the degree where it is almost impossible to
differentiate from the original from a non-expert perspective. Veeplast v Bonjour, 2011
conveyed that the two designs need not be expertly examined side by side, but rather looked
at by a consumer of average discerning capability and less than perfect recollection.1 The
object of the exercise is to determine whether the shape, features and colours broadly
resemble one another to the point where they may be mistaken for the other by an average
customer.
1
753 Veeplast Houseware Private Ltd v. Bonjour International and Anr (2011) ILR 5 (DEL)
A further addition exists in Section 19 of the Design act, 2002 which contains provisions for
the cancellation of a registered design on proper grounds like novelty or originality. It is thus
contended that all grounds upon which cancellation of design may be sought are available as
a defence against infringement suits. The Delhi High Court in Steelbird v Gambhir (2014)
declared that since the design in question was neither original nor novel, it was not eligible to
be protected by design law, thereby upholding the defendants’ plea.2

Sudev Singh
Division B
B.A. LLB
17010125169

2
Steelbird Hi-Tech India Ltd. vs S.P.S. Gambhir & Ors. on 24 February, 2014