Theft of legally protected designs and remedies

 

Introduction

Intellectual property is related to the inventiveness and originality of the human mind, which generates ground-breaking concepts in the realms of literary and creative works, designs, inventions, names, symbols, and other things employed in business. It may be divided into two categories:

1. Industrial Property – This refers to industrial designs, patents, trademarks, and geographical source indications.

2. Copyright – This includes artistic and literary works such as drawings, paintings, music and film works, novels, photographs, plays, sculptures, etc.

 

The legislation has established protection for all intellectual property rights, including copyright, patent, trademark, industrial designs, and geographical indications. The goal of safeguarding these intellectual assets is to give the innovator a safety net so he may get credit for his effort and profit financially. In other words, it may ensure the copying and appropriation of the inventor's work. Thus, intellectual property tries to create an atmosphere that fosters the expansion of creativity and innovation.

 

Meaning of industrial designs

An industrial design is a concept or notion that uses industrial processes to add aesthetic aspects to a final product in the form of configuration, decoration, shape, or pattern. This determines the physical look of the product.

According to legal definitions, an item's aesthetic aspect is its industrial design. Industrial designs may have two-dimensional aspects like patterns, lines, or colours, or three-dimensional properties like an object's shape.

The term "design" is defined as follows in Section 2(d) of the Designs Act of 2000: "design" means only the 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 in both forms, 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; 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 trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958.

Consequently, while examining the concept of design, the following qualities may be found in it:

1. It solely comprises of the product's physical attributes or design aspects;

2. Only configuration, decoration, form, or pattern shall be included in the features;

3. These traits may be added to an item via chemical, manual, or mechanical procedures; 4. The final item must have a visual representation and be able to be assessed simply by looking at it; and 5.

5. There is only a mechanical device and no mode for construction;

6. It does not contain any trademarks or service marks.

 

Piracy of designs

The legal term for infringement of "copyright in a design" is "piracy of design." In other words, it is illegal (design piracy) and the registered owner of the design is responsible for any damages if unauthorized use of designs or duplication of such designs, which are then used for commercial purposes, during the existence of such copyright, occurs without his consent or license.

In light of Section 22 of the Designs Act of 2000, it provides situations that justify design piracy.

1. When a product with a registered design is sold with a clear or deceptive counterfeit of the design.

2. When an item with a registered design is imported for sale without permission from the registered design's owner.

3. If an item with a registered design on it, or one that contains evident or fraudulent imitations in it, has been published or made available for purchase.

As a result, if any object or class of articles with a registered design are utilized for sale through evident or deceptive imitation or are imported for sale without the owner's agreement, or such registered design is been published or exposed for sale having prior knowledge that it has obvious or fraudulent imitation will be termed as piracy or infringement of the registered design.

Apparent imitation or fraud

As was previously said, deceptive or apparent replication of a registered design must be present in order to constitute pirate of the design.

 

A fraudulent imitation intentionally violates the person's rights by mimicking his registered design with the goal to mislead them. A clear imitation, on the other hand, refers to copying a copyrighted design while making minor changes to it. Therefore, this means that for such imitation to be considered piracy, it must be an exact duplicate of the registered design.

Remedies against piracy of designs

Legal remedies are available to the inventor whose rights have been violated as a result of registered design theft. In the event of design piracy, the registered proprietor may be offered one of two alternative remedies under Section 22(2) of the Industrial Designs Act, 2000:

if the registered owner of the design elects to bring a suit for the recovery of damages for any such contravention, and an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:

•   To pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt.

With the caveat that the total amount recoverable for any single design under subsection (a) shall not exceed fifty thousand rupees:

Provided further that no suit or any other proceeding for relief under this subsection shall be instituted in any court below the court of District Judge.

Grounds of defense

Every basis will serve as a defense when the registration of a design is subject to cancellation under Section 19 in order to obtain relief under sub-section (2) of Section 22 of the Designs Act, 2000. The defense reasons are as follows: -

1. The design was already registered in India;
2. Such design was published at the time of registration in India or another country;
3. Such design is not an original work;
4. Such design cannot be registered under the Act;
5. Such design cannot be construed as a design under Section 2; or
6. Such design is not a published design at the time of registration in India or another country.

International protection of industrial designs

TRIPS Agreement

The parties to the TRIPS Agreement are required to protect independently created industrial designs that are new or distinctive. According to the member, patterns are neither novel nor distinctive until they significantly diverge from existing combinations of well-known design elements, and this protection must not apply to designs that are functional or technically advanced. Members of TRIPS are also required to give the owner of a protected industrial design the ability to prevent third parties from approving the production, sale, or import of goods with that design on them, or ones that are essentially identical to it, if those actions are carried out for commercial gain. Under the TRIPS Agreement, the owner shall be given a minimum of ten years of protection.

Three other international treaties provide the contracting nations with more broad levels of protection, in addition to the TRIPS Agreement, which requires WTO members to adopt or revise their legislative requirements so that industrial designs are provided basic levels of protection. The Paris Industrial Property Protection Convention, which establishes general standards of protection for industrial designs, is the first substantial international agreement to be approved by the Member States.

The Hague Agreement on International Industrial Design Registration, which governs the global system of protection overseen by the WIPO for design registration, was the second significant international agreement. The international categorization of industrial design is set down in the Locarno Agreement from 1979. Even though India adheres to the Locarno agreement-based International Classification for Industrial Designs and is not a signatory to the Hague Convention, the Hague system of International Registration should be discussed to examine industrial design protection in light of international IPR administration.

Hague system

The Hague system enables owners of industrial designs to get protection for their work in a number of nations by submitting a single application to the WIPO International Bureau, which covers all parties to the WIPO design agreement. The Hague Convention now has 58 members, 41 of which are required to register foreign industrial designs under the Geneva Act of 1999. The Hague International Design Protection System was joined by the European Union in 2008, obliging all EU member states to store their designs there. Additionally, The African Intellectual Property Organization (O.P.A.I.) with sixteen nations is another Union of Countries that has joined the Hague system.

Since further modifications and renovations were made and completed by one procedural step by the International Bureau, it speeds the handling of an industrial design registration. The Hague system's goal is to give consumers in the member states easier and less expensive choices for design protection. The Hague Agreement also has the benefit of not requiring the use of a resident patent agent to get protection in this country. Furthermore, all nations must accept applications whose processes follow The Hague Accord Practices, even if those practices differ from local customs.

In accordance with the 1999 Geneva Act, the international design registration completely protects the applicant's interest and prevents him from submitting a separate national application. Earlier Hague acts, the London Act, 1934, and Hague Act, 1960, provided relief to the owners of designs only after some procedural matters had been resolved at the national level. By submitting a single worldwide application, it offers the chance for industrial design protection across a number of governments and intergovernmental bodies. Therefore, the Hague Agreement allows for the international application of industrial design protection; no national application or previous registration is necessary.

 

Apr 26, 2023