infringement
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This article is written by Rajshree Mukherjee, pursuing a Certificate Course in Media and Entertainment Law: Contracts, Licensing and Regulations from Lawsikho.com. Here she discusses “Infringement of Copyright in a Design”.

Introduction

This Assignment will specifically deal as to what constitutes infringement of copyright in design while keeping in mind the provisions as laid down in the Designs Act, 2000. Also, the remedies shall also be discussed in this assignment available as against the person who has infringed the right of the proprietor of the design along with citing different landmark case laws to support and analyze the purpose of this assignment.

Meaning of Infringement, Copyright and Design

In general terms, infringement with respect to intellectual property rights is the breach of any of the Intellectual Property Rights including trademark, patent, copyright, design etc wherein the work of the owner of such intellectual property rights. In other words, Intellectual Property Rights are infringed when a work protected by Intellectual Property laws is used, copied or otherwise exploited without having the proper permission from a person who owns those rights. 

Copyright is said to be infringed when works in form of literary, dramatic, musical or artistic which is original in nature are infringed without the permission of the owner of the work that has been registered under the Copyright Act, 1957.

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Design as per the Designs Act, 2000 has a very restrictive and limited definition which shall only include “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”.

Infringement of Copyright in a Design

In order to understand the infringement of copyright in a design, we need to know what constitutes a design to be qualified as statutorily registered design under the Designs Act, 2000 (hereinafter referred to as the “Act”). To that extent, section 4 of the Act lays down the following three criteria which are to be considered while a person or proprietor intends to get their work registered:

  1. It has to be new or original. For further clarification, the landmark case of Gammeter vs Controller of Patents explained that the design does not necessarily have to be created newly, but can also be used in a unique way on an old design as long as the usage of the new design on an existing product has not been already discovered earlier otherwise.

  2. It is not existing in the public domain or has been published in any tangible form within India or outside India as the case may be. This can be explained by citing the case of Steelbird Hi-tech India Ltd vs SPS Gambhir in which the Court clearly explained that the design needs to be new or original which is a product of the intellectual outcome of a person and has never been in existence before such person has expressed such design in a tangible form.

  3. It is significantly distinguishable from other designs or a combination of designs already existing in the public domain.
  4. Should not have any scandalous or obscene matter present in its content.

A design which is registered as per Chapter II of the Act, section 11 of the Act gives an advantage to the registered user to not only protect their work under the Act itself but also can acquire copyright protection for a period of ten years from the same day the work was registered under the Act. On the registration of a design under the Act the proprietor of the design acquires the following rights:

  1.  The exclusive right to apply the design to any article in any class in which the design is registered;

  2. the exclusive right to publish or expose, or cause to be published or exposed, any article in any class of goods in which the design is registered to which such design is applied; and

  3. the exclusive right to import for the purposes of sale any article belonging to the class in which the design is registered and having applied to it that design.

For explaining further as to what constitutes as an act of “Piracy of Design”, section 22 (1) of the Act lays down the following checks that will help determine whether the Design created or developed is pirated or not:

  1. The design which is proposed to be registered or used otherwise for the purpose of sale should not have “fraudulent or obvious limitation” as to that with a registered design, until and unless written permission has been acquired from the registered owner of the registered design. This was clarified in the case of Veerplast Houseware vs Bonjour International in which the Court considered this particular check to be confirmed from the point of view of the “customer with average knowledge and imperfect recollection”.

  2. “Substantial differences” should be there between the design which is proposed to be registered and the design which has been already registered. This was discussed in a landmark case of Britannia Industries Ltd vs Sara Lee Bakery wherein, the infringement of the design was judged by matching the old design with the newly registered design and in the instance of substantial similarities. It was an important case since the designs of both the parties were to be considered from the perspective of a child which was found out by the Court to having substantial differences as against the contentions which were made by the plaintiff.

Contravention of any of the following checks mentioned above shall be discussed in the next chapter of this article which provides remedy as against the wrongdoer or the person who has infringed upon the rights of the person who has already registered their design as under the Act.

Remedies against Infringement of Copyright in a Design

In pursuant to the previous chapter, we have established as to what constitutes an infringement of copyright in design and the different case laws which had further helped in developing the understanding of the concept. In this chapter, the different remedial mechanisms shall be explained below with reference to the relevant provisions:

  1. Section 22(2) of the Act- Subsection 2 of section 22 provides that if any person has been found in contravention of section 22(1) of the Act which has been discussed in the previous chapters, the person who has infringed the rights of the registered proprietor of the design shall be liable to pay not more than INR 25,000 which will be recoverable towards contract debt. The registered proprietor also has the right to file a suit for injunction, not lower than that of the Court of a District Judge, as against the person wherein, if injunction is passed against the person, he/ she shall be liable to pay such damages awarded by the Court other than stopping the wrongdoer to use the infringed design.

  2. Section 55 of the Copyright Act, 1957 provides for civil remedies that can be availed by the registered proprietor wherein, if any person who is intentionally infringing such work as covered in the Copyright Act, 1957 are entitled to seek remedy in the form of either claiming damages, accounts or by filing a suit for injunction against the person who has infringed the right of the registered proprietor.
  3. The registered proprietor is also entitled to receive such profit which was gained by the wrongdoer during the time of using the infringed design of the registered proprietor.
  4. The registered proprietor may also seek an interlocutory injunction as under Order 39, Rules 1 and 2 of The Code of Civil Procedure, 1908 wherein, the registered proprietor has to establish a prima facie case showing “balance of convenience” in its favour. This can be further explained by citing the case of Novartis AG vs Mehar Pharma9 wherein, the Court held that an “interlocutory injunction will not be granted where damages will provide an adequate remedy should the claim succeed”.

  5. As under Administrative Remedies, the registered proprietor of the design can file an application under section 53 of the Copyright Act, 1957 before the Registrar of Copyright for stopping the import of products which are subjected to infringement of his/ her right under the Copyright Act, 1957 wherein, after necessary examination, may confiscate such products which are likely to infringe the rights of the registered proprietor.

  6. Section 63 of the Copyright Act, 1957 provides for criminal remedies that can be availed by the registered proprietor wherein, if any person who is intentionally infringing or abets such infringement of such work as covered in the Copyright Act, 1957 or otherwise (meaning work connected to designs as under the Act), such person shall be punished by way of imprisonment for a minimum of 6 (six) months which may extend up to 3 (three) years along with fines amounting to a minimum of INR 50,000 which may extend to INR 2,00,000.
  7. Section 63A of the Copyright Act, 1957 provides for punishment on second and subsequent crime wherein criminal remedies can be availed by the registered proprietor. Such punishment shall consist of imprisoning the wrongdoer for a minimum 1 (one) year which may extend up to 3 (three) years along with fines amounting to a minimum of INR 1,00,000 which may extend to INR 2,00,000.

Conclusion

It can be safely concluded that though there has been effective provisions and precedents that have taken care of the loopholes and issues that have popped up from time to time in this subject- matter, India still needs to clearly lay down a more lucid, coherent and clear cut laws based on such type of infringement. The reason for such need is because more and more people are entering into the line of business wherein, the trend of startups have boosted the need and importance of intellectual property rights. Such requirement will automatically give rise to more complicated issues that may or may not be foreseen today but a well- structured and articulated law will make people realize as to what are the rights as well as the duties that come with acquiring such rights on a more coherent level.

Endnotes

  1. Section 2(d) of the Designs Act, 2000
  2. AIR 1919 Cal 887
  3. 2014 (58) PTC 428 (Del)
  4. Eastern Book Company, Design Protection in India: A Critique by Virendra Kumar Ahuja,
  5. 2011 (46) PTC 479
  6. AIR 2000 Mad 497
  7. Indranath Gupta reviewing the work of N.S. Gopalakrishnan and T.G. Agitha, Principles of Intellectual Property, Journal of the Indian Law Institute, Vol. 56, No. 2 (April-June 2014), pp. 268
  8. M/s. Micolube India Limited vs Rakesh Kumar , (2013) 55  PTC 61 (Del)
  9. (2005) 30 PTC 160 (Bom)

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