+91 96672 61200Remedies for design infringement
Introduction
Design is too susceptible to infringement, much like other intellectual property. A registered design may only be used legally if it has been granted permission by the registered design's owner. Fraudulent copies of registered designs are also unlawful. In such an instance of infringement, any owner whose product or design has already been registered may proceed to bring a lawsuit to hold the offender liable for damages and further demand that they refrain from further infringement.
What is design?
The aesthetics and objects of any design that does not strictly adhere to the notion of morality are protected by the intellectual property right (IPR) known as "design" and the right to preserve it. In general, the design is simply how an object appears to the naked eye. However, the legal definition of design shifts to include features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, whether in two-dimensional or three-dimensional form, or both, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, and which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trademark or property mark or artistic work.
All items/ articles can be registered as design except the items as follows:
- It shall not include any mode of construction or trademark that has already been defined in the Trade and Merchandise Marks Act, 1958.
- It shall also not include any “property mark” as defined under Section 479 of the Indian Penal Code, 1860.
- No artistic work is also included which is defined in clause (c) of Section 2 of the Copyright Act, 1957.
Process of design registration
• Design encompasses anything that has a form, pattern, structure, adornment, or is made up of lines.
• Such an article's composition should consist of two- or three-dimensional colored lines.
• The components of the characteristics should be either mixed or totally mechanical, manual, chemical, or combination.
• There is a branch of the design office in Kolkata and an online site for the registration procedure. Both offer a required procedure known as FORM 1, which must be completed and signed by the appropriate authorities and contains the following information: full name, address, nationality, name of the product, class number, and address for servicing in India.
• For natural individuals, the price is Rs. 1000; for small entities, Rs. 2000; and for other entities, Rs. 4000.
• Design in two copies with a statement of innovation and priority
Power of attorney in a case filed by any agent
As they create innovative and fresh designs every season, the fashion industry is supposed to invest a significant amount of money on registering their ideas. The key goal is to create the Design their brand's identity. The Coca-Cola contour bottle, Apple contours, and VW automobiles are some of the most well-known examples. As a result, all industrial sectors that are motivated to combine visual appeal with a creative element register their designs.
Rights of the design owner
It is possible to acquire the following exclusive rights:
• The exclusive right is applicable to any registered design for an article.
• The exclusive right granted to articles in which the design is already registered to expose or publish.
• The registered design must also have the only right to import for any selling purpose.
Essential Requirements for design protection from design infringement in India
• The design must be unique or novel;
• It must not have been previously made public; and
• It must be distinctly different from other well-known designs or combinations.
What is a design infringement?
The registered design or any comparable design may only be used by the owner of a registered design right. A design right infringement occurs when a third party produces, sells, etc., the registered design or any comparable design for profit (private or domestic use is exempt), and the owner of the registered design right has not granted the third party a permission to do so.
The request included in the application for design registration and the accompanying drawings provide information about a registered design right. The resemblance of the design—whether it is comparable or not—is a factor in determining whether a design is infringing since the scope of a design right includes both the registered design and any similar designs.
It is typical for two designs to be declared similar after being compared and finding similarities in an actual judgment regarding similarity:
- The general dominant constitution and the specific dominant constitution of both designs;
- The characteristic creation, the outstanding feature when the article is being used, etc.;
- A common dominant constitution in both designs;
- Only a slightly different dominant constitution in both designs or the difference is not noticeable; (i.e., the difference is a well-known constitution).
According to the Design Act of 2000, the infringement of a registered design is a form of design piracy. Any blatant or fraudulent duplication of a design that has previously been registered without the registered owner's or proprietor's permission is prohibited, according to Section 22 of the Designs Act, 2000. The specific rule also forbids the importation of any substance or material that closely resembles a design that has already been registered.
A person is deemed to be infringing if they attempt to import or even publish a registered design for any fraudulent or imitation purposes without first obtaining permission from the absolute owner of the design.
The way the court operates is that they don't review the documents; instead, they affirm the judgment from the viewpoint of the typical person. The court determines that there is a necessity for the item to be distinguishable without clearly confusing consumers.
Remedies for design infringement
As per the Design Act of 2000, the liabilities of the one who infringes the design is mentioned under Section 22(2) of the Act. It is the same section that provides the remedies to the registered owner of the Design. Therefore, the liability of the infringing party as per Section 22(2) of the aforesaid Act is as follows:
- Under Section 22(2) (a) of the Design Act, the one who infringes shall pay a sum (not exceeding) Rs. 25,000/ (Rupees Twenty-five thousand only) for every breach contravened. The total amount shall sum up to (not exceeding) Rs. 50,000 (Rupees Fifty thousand only). The above amount is for the recovery of the Infringement.
- Under Section 22(2) (b), it is mentioned that the owner of the registered Design is vested with certain rights wherein it can call for recovery of damages and make the infringing party liable.
- Section 55 of the Copyright Act of 1957 provides the scope of civil remedies available on the proprietor’s registered work. It helps to seek remedies, claim damages or file a suit for injunction against anyone who infringes the registered article under the Act.
- The claimant also enjoys the entitlement along with profits gained by the infringing party upon the infringed design.
If in any circumstance, the registered proprietor establishes a prima facie case under the head “Balance of Convenience” in its favor, then it can seek an interlocutory injunction under Order 39, Rules 1 and 2 of CPC.
- As per the remedies provided under Section 53 of the Copyright Act of 1957, the person in charge of the registered design can stop importing the products and confiscate any such product that holds the power to infringe the rights of the registered person.
- The criminal remedies are provided under Section 63 of the Copyright Act of 1957. It can be availed that the registered person’s work if infringed with due intention, then the seeker shall be punished with imprisonment for a minimum of six months extended up to three years. (along with fine ranging from 50,000 INR to 2,00,000 INR)
- Section 63A of the Copyright Act, 1957 lays out punishment on second and subsequent crime wherein the registered proprietor can avail criminal remedies. The punishment shall hold the wrongdoer guilty and liable for imprisonment for a minimum of one year which can be further extended to three years with a fine ranging from 1,00,000 INR to 2,00,000 INR.
Who can claim the remedy for design infringement?
The range of legal remedies applicable on the registered work of the proprietor is described in Section 55 of the Copyright Act of 1957. It is beneficial to bring a lawsuit for an injunction, seek remedies, and demand damages from anybody who violates the registered article under the Act. Together with the profits made by the party who violated the rights to the infringing design, the claimant also benefits from the entitlement. Anybody who owns a registered design, their legal heirs, or a joint owner may seek redress for design infringement.
In Carlsberg Breweries v. Som Distilleries and Breweries Ltd., the Delhi High Court confirmed the maintainability of a composite claim for design infringement and passing off in a decision dated December 14, 2018. A plaintiff may combine two claims: (1) the defendant's infringement of the plaintiff's design; and (2) the defendant's passing off of the more extensive trade dress of the plaintiff's products or articles.
The decision has confirmed that if the alleged design is not functioning as a trademark, a remedy for passing off may be directed. If the remedy for passing off is sought, the bigger trade dress infringement or any other comparable infringement may also be directed. The court further mentioned that when a design infringement allegation is made prima facie weak, the court can grant aid to the plaintiff in the manner of passing-off action.
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