Law Relating To Piracy Of Designs In India

Piracy Of Designs In India | Overview

• Introduction – Law Relating To Piracy Of Designs In India
• What is Design?
• Registration of Designs
• Piracy of Designs
• Remedies against piracy of designs
• Conclusion

This article ‘Law Relating To Piracy Of Designs In India’ outlines the concept of design. It also deals with the Essentials of a design, Registration of Designs, Piracy of Designs, etc.

Developing and creating new designs require creative as well as a monetary investment. Therefore, the individuals expect to have exclusivity over the rights

Introduction – Law Relating To Piracy Of Designs In India

Intellectual Property refers to the works created by the human mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. These intellectual properties are protected in law by means of patent protection, copyright, trademarks etc. This protection helps the innovators to earn recognition for their work and also earn financial benefits. It also protects copying and infringement of the work. By creating a balance between ideas of the creators and wider public interest, Intellectual Property law aims to promote an environment conducive to the growth of creativity and innovation.

Intellectual Property can be customarily divided into: Copyright and rights related to copyright and Industrial Property. The works produced by literary and artistic authors such as paintings, music, computer programs and films are protected by intellectual property rights. “In a legal sense, an industrial design constitutes the ornamental or aesthetic aspect of an article. An industrial design may consist of three-dimensional features, such as the shape of an article, or two-dimensional features, such as patterns, lines or colour.”[1]

I. What is Design?

John Heskett, a design historian, has described design as “to produce a design to design a design.” “Evidently, answering the question “what is a design?” is harder than one might think. Initially, the design was considered to be the supplementary stylistic aspects of the appearance of a product, prevalent more in the fields of advertising and sales, as opposed to the actual development of the product itself and its features.”[2] Under the Designs Act, 2000, the design is defined under Section 2(d) of the Act defined as:

“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 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 trademark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).”

Essentials of a design

Section 4 of the Designs Act, 2000 lays down certain attributes which design should have to be registered as a design. The prescribed attributes are as follows:

1. A design should be applied to an article
2. A design should appeal to the eye
3. A design should be new or original: A design should be novel and unique in order to considered for registration. For a combination of previously registered designs to be qualified for registration, it should create new visuals. In the case of Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir[3], it was held that “In order to know its newness or originality it is necessary that a design identical with or even materially similar to the relevant design should not have been published or registered previously.”
4. A design should not have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration. In the case of Anuradha Doval v. The Controller of Patents[4], it was held that “if a document is to constitute prior publication, then a reader of it possessed ordinary knowledge of the subject must from his reading of the document be able, at least, to see the design in his mind’s eye and should not have to depend on his own originally to construct the design from the ideas which the document may put into his head.”
5. A design should be significantly distinguishable from known designs or a combination of known designs. In the case of Britannia Industries Ltd v. Sara Lee Bakery[5], the designs of both the parties were adjudged from the perspective of a child. It was observed by the Court that the Plaintiff has conspicuously displayed its trademark “Britannia’ on the wrapper of its biscuit, whereas the Defendant has displayed its trademark ‘Nutrine’ and ‘Milkwala’ on the wrappers of its biscuits. “The features contained in the design and wrappers in both the products are entirely different and the differences are easily perceivable even by young consumers.”[6]
6. A design should not comprise or contain scandalous or obscene matter.

II. Registration of Designs

Developing and creating new designs require creative as well as a monetary investment. Therefore, the individuals expect to have exclusivity over the rights, which is provided by the law. Registration of designs provide the exclusive rights over creation to the creator and exclude unauthorized used by the third parties. Registration of designs and the procedure to be followed for registration is laid down Chapter II of the Designs Act, 2000.

To get a design registered, an application is made to the Controller of Designs under Section 5.

The application should carry along four copies of representation of the designs, and such copies should be signed and dated by the applicant or his agent. The class under which the design is to be registered is also to be mentioned. For registration under a separate class, a separate application is to file containing a statement of novelty. For a design to be registered, all the essentials mentioned under Section 4 are to be complied with. Any person who is the proprietor can get the design registered. The term proprietor has been defined under Section 2(j). The section reads as follows: “proprietor of a new or original design,

1. where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed;
2. where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and
3. in any other case, means the author of the design; and where the property in or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.”

A design can be registered for 15 years in total. Initially, it can be registered for 10 years and can be extended for 5 years by paying Rs. 2000 to the Controller. This fee should be paid before the expiry of the ten-year period.

III. Piracy of Designs

The very name “design piracy” has been called a misnomer, clever labelling of certain lawful acts with the stigma of bloodshed and robbery on the high seas.[7] Piracy of design means the application of a design or its imitation to an article without the consent of its proprietor is piracy of that design. Section 22 of the Designs Act, 2000 deals with piracy. To understand piracy of design in a better way, a conjoint reading of Section 22 and Section 11 is required.

Section 11(2) reads as: “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.”

Under this section, piracy is defined as: “During the existence of copyright in any design it shall not be lawful for any person—

1. 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 license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
2. 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
3. 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.”

Section 11 gives the proprietor an exclusive right over his design and Section 22 provides safeguards against violation of that right by third parties.

Under Section 22, “fraudulent or obvious imitation” of a registered design amounts to piracy of design. It is different from “reproduction of work or substantial part thereof” test of copyright infringement. The test of “fraudulent and obvious imitation” declares that the similarity or difference between the two designs must be adjudged from the standpoint of a “customer with average knowledge and imperfect recollection”^[8]. In case of fraudulent imitation, the copying must be done with the intention of deceiving the other person and with the knowledge that the imitation would violate another person’s right.

IV. Remedies against piracy of designs

Cancellation of Design

Section 19 of the Designs Act, 2000 provides for cancellation of design anytime during the subsistence of the design registration, any person can seek cancellation of the same by filing a Petition before the Controller, on the following grounds for Cancellation of design registration:

1. that the design has been previously registered in India; or
2. that it has been published in India or in any other country prior to the date of registration; or
3. that the design is not a new or original design; or
4. that the design is not registrable under this Act; or
5. that it is not a design as defined under clause (d) of section 2[9]

Compensation

Section 22(2) provides that any fraudulent or obvious imitation of a registered design without the consent of the proprietor is unlawful and also prohibits the import of such material which closely resembles a registered design. The section provides that in a civil case compensation payable shall not exceed Rs. 50,000/- in respect of infringement of one registered design.

The compensation payable is statutorily limited; this becomes a good ground for seeking an interim injunction even before the commencement of trial.

V. Conclusion

It can be concluded that the Indian design system is well-established and structured. The introduction of legislation over the years has also achieved to clear the loopholes in the design law. But there is an urgent need to lay down more clear and stringent laws to protect the rights of the creator. The reason for the introduction of more lucid and stringent laws is, that the design industry keeps on changing and evolving rapidly. In addition to that, the protection period of 15 years is too short. Proprietors would rather resort to copyright/trademark laws to get their creation protected as they provide protection for a longer period.

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[1] Available at https://www.wipo.int/designs/en/, (last accessed 29 April 2020).

[2] Graeme B. Dinwoodie, Federalized Functionalism: The Future of Design Protection in the European Union, 24 AIPLA Q.J. 611, 626–27 (1996)

[3] 2014 (58) PTC 428 (Del)

[4] 2017(71) PTC 288 (Cal)

[5] AIR 2000 Mad 497

[6] Britannia Industries Ltd v. Sara Lee Bakery, AIR 2000 Mad 497

[7] Maurice A. Weikart, “Design Piracy”, Indiana Law Journal, Vol.19, 1994.

[8] Veerplast Houseware v. Bonjour International, CS (OS) No. 1181/2011.

[9] Section 19, Designs Act, 2000, No. 16, Acts of Parliament, 2005 (India).

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1. Difference between Trademark and Design Registration
2. Trade Secret: Meaning and Criteria for Protection