Piracy of a Registered Design

Meaning of Design:-

‘Design’ means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional 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 or construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.

Section 11 of Design Act provides that When a design is registered , the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration. If , before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years.

Section 12 of the Act provides that Where a design has ceased to have effect by reason of failure to pay the fee for the extension of copyright , the proprietor of such design or his legal representative and where the design was held by two or more person jointly , then , with the leave of the Controller one or more of them without joining the others, may, within one year from the date on which the design ceased to have effect, make an application for the restoration of the design in the prescribed manner on payment of such fee as may be prescribed.  An application under shall contain a statement , verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary.

Piracy of Registered Design:-

Chapter V of the Act relates to legal proceedings regarding infringement of right given under Design Act. According to Black’s Law Dictionary , “Infringement” means an act that interfers with one of the exclusive rights of a patent, copyright, trademark or design.

Piracy of registered design is the same as the infringement of copyright in a design. Section 22 (1) of the Designs Act, 2000 deals with the provisions of piracy of registered design. During the existence of copyright in any design it shall not be lawful for any person—

A.  for the purpose of sale to apply or cause to be applied to any article in any class of articles 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

B.  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

C.  knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles 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.

An infringement can be established by showing the following facts:-

  • Existence of copyright in design.
  • Fraudulent or oblivious imitation applied by somebody.
  • The fraudulent or obvious imitation applied without the licence or written consent of the registered proprietor.
  • The article comes within the scope of description of goods covered by registration.
  • Application of design has been made for the purpose of pecuniary benefit (i.e.) of the article.
  • Knowledge of piracy by the defendant.

The following persons could be infringers of a copyright in a design:

  • A person who applied the fraudulent or obvious imitation of design without consent or licence of the proprietor.
  • A person who has caused to be applied that imitation mentioned above.
  • A person who has done anything to enable the design to be applied.
  • Importer of the design.
  • Publisher of the design.

Defences in an Action  for Infringement

In an action for infringement of a registered design, the following defences are open  to the defendant:-

  • Invalidity of registration, and
  • Denial of infringement or intention to infringe.

The invalidity may be based on the grounds:

  • that the registered design does not satisfy the definition of design mentioned in the Act,
  • that it is neither new or original,
  • that plaintiff is not entitled to sue or he is not the registered proprietor, and
  • that the application has been filed after the limitation period (i.e. acquiescence and laches).

Penalties and Remedies:-

Section 22 (2) of the Designs Act, 2000 If any person acts in contravention of this section, he shall be liable for every contravention—

(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or

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

The total sum recoverable in respect of any one design shall not exceed fifty thousand rupees.

No suit or any other proceeding for relief shall be instituted in any Court below the Court of District Judge.

The remedies provided under the Act is of civil nature. The reliefs which may be to a registered proprietor of a design are-

  • Injunction
  • Damages
  • Injunction – Injunction may be temporary or permanent. The principles applicable to the grant of injunction in the case of an infringement of a patent apply in the case of piracy of registered design.
  • Damages- If the registered proprietor of design succeeds in an action for infringement of the registered, the defendant (the infringer) is liable to pay by way of compensation a sum not exceeding Rs. 25000/- recoverable as a contract debt subject to maximum of Rs. 50,000/-. The amount of damages may be assessed on the same basis as in the patent infringement cases.

Rights of Registered Proprietor:-

The exclusive rights conferred on a design is known as “copyright in design”. The effect of a registered design is to grant the registered proprietor for the duration of the registration, the right to exclude others from making, using, or disposing or importing of any article included in the class in which the design is registered. A registered proprietor of the design has the following rights:-

  • The right to exclusive use Registration of a design grants the registered proprietor the exclusive right in respect to the article to which the design was registered and similar design to make or import the products for sale or for use in a business. Where a third party exercises this right without the licence of the registered proprietor that third party infringes the rights of the registered proprietor.
  • The right to assign, etc The registered proprietor of the design has power to assign, grant licences as to, or otherwise deal with the design and to give effectual receipts for any consideration for any such assignment, licence or dealing. Any equities in respect of the design may be enforced in like manner as in respect of nay other movable property.
  • Right to protect the design from piracy– The registered proprietor of a design is granted the right to bring a suit for recovery of damages or for grant  of injunction against the repetition of such piracy.

In Schrender S.A. v. Twinkle Luminaries Pvt. Ltd. AIR 2008 Del 137 the plaintiff had filed suit for permanent injunction against the defendants restraining the defendants from manufacturing , selling etc. luminaries, lighting fixtures on the ground that the plaintiffs are the registered proprietors of several designs in India in respect of luminaires and other lighting fixtures and that the defendants had infringed the plaintiff’s design registration. The Court held that the defendant had not made any case for prior publication of the registered design. The court held, referring to section 53 (22 in the 2000 Act), that it is clear that for a plaintiff to succeed in a suit with regard to piracy of a registered design the plaintiff has to establish that the design used by the defendant is the very design which has been registered in the plaintiff’s favour or is fraudulent or obvious imitation thereof and that the plaintiff has not given any licence or written consent to the defendant to either apply such design to its products for to import products of a similar nature. The court compared the products of the plaintiffs and the defendants and came to the conclusion that the defendant’s product was an imitation of the plaintiff’s design. The Court therefore held that the plaintiffs are entitled to a decree of mandatory injunction in respect of their said registered designs as set out in the plaint.



Q.:- What amounts to piracy of a registered design? What are the rights of registered proprietor if such piracy takes place?

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