This article is written by Tanvi Trivedi pursuing a Diploma in Contract Drafting. This article has been edited by Ojuswi (Associate, Lawsikho). 

This article has been published by Sneha Mahawar.

Introduction

Intellectual Property pertains to the creativity and innovation of the human mind who by using their intellect originates groundbreaking ideas in the fields of artistic and literary works, designs, inventions, names, symbols, etc. used in the business. It has been categorized into two components:-

  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.

All the intellectual properties such as copyright, patent, trademark, industrial designs, and geographical indication have been given protection under the law. The purpose of protecting these intellectual properties provides a safeguard to the inventor to acquire acknowledgment for his work and procure monetary advantages. In other words, it is likely to secure replicating and encroachment of the inventor’s work. Thus, intellectual property aims at shaping the environment for the advancement and development of the growth of creativity and innovation.

Meaning of industrial designs

An industrial design is a conception or idea that defines the physical appearance of the product by adding stylistic features to it in the form of configuration, ornament, shape, or pattern to a finished article which is done through industrial processes.

The aesthetic feature of an article is an industrial design in a legal sense. The three-dimensional characteristics such as the form of an object, or two-dimensional features, such as designs, lines, or colour, maybe an industrial design.

According to Section 2(d) of the Designs Act, 2000, “Design” means:

“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 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 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

Thus, analyzing the definition of design, it consists of the following characteristics:-

  1. It consists only of the features of design or the physical appearance of the product;
  2. The features should include configuration, ornament, shape, or pattern only;
  3. These features applied to an article by industrial processes may include chemical, manual, or mechanical means;
  4. The finished article must have a visual representation and must be capable of being judged      by merely looking at it;
  5. There is no constructing mode or anything other than a mechanical appliance;
  6. No trademarks or property marks are included in it.
insolvency

Piracy of designs

Under the law, if the ‘copyright in a design’ has been infringed, it is known as “Piracy of Design”. In other words, if there is unauthorized use of designs or duplication of such designs, which is then, being used for commercial purpose, during the existence of such copyright, without having consent or license from the registered proprietor of the design, it shall be considered as an unlawful act (design piracy) also he is responsible for the damages.

Taking into consideration Section 22 of the Designs Act, 2000, it delivers instances which account for piracy of designs”-

  1. If an article whose design is registered is used for sale employing fraudulent or obvious imitation of that design.
  2. If an article whose design is registered is imported for sale without having the consent of the proprietor of the registered design.
  3. If an article whose design is registered or such design has fraudulent or obvious imitation in it, has been published or exposed for sale.

Therefore, if any article or class of articles whose design has already been registered is used for sale by obvious or fraudulent imitation or being imported for sale without the consent of the proprietor of the registered design 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.

Fraudulent or obvious imitation

As discussed above, to constitute piracy of registered design, deceitful or apparent imitation has to be present for infringement of copyright in the design.

In a fraudulent imitation, the intention is to deceive the person and violate his rights knowingly by imitating his registered design. On the other hand, an obvious imitation means imitating a registered design by slightly adding modifications to it. Thus, this is to say that such imitation must constitute the exact duplication of the registered design to constitute piracy.

Remedies against piracy of designs

The inventor whose rights have been infringed due to the piracy of registered design is entitled to judicial remedies. According to Section 22(2) of the Industrial Designs Act, 2000, there can be 2 alternate remedies provided to the registered proprietor in the case of design piracy:

  1. to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or
  2. if the proprietor 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:

Provided that the total sum recoverable in respect of any one design under clause (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.

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Grounds of defence

To get relief under sub-section (2) of Section 22 of Designs Act, 2000 every ground will act as a defence when registration of a design may be cancelled under Section 19. Following are the grounds of defence:-

  1. The design was registered before, in India; or
  2. Such design was published at the time of registration in India or another nation; or
  3. Such design is not a unique piece of work; or 
  4. Such design cannot be registered under the Act; or
  5. Such design cannot be constituted as a design under Section 2(d).

International protection of industrial designs

TRIPS Agreement

TRIPS Agreement compels its parties for safeguarding innovative or unique industrial designs independently produced. The member says that patterns are neither new nor unique unless they differ materially from existing combinations of known design characteristics and this protection must not extend to designs that are technical or practical. TRIPS further requires members to provide the proprietor of a protected industrial design the right to restrict third parties from consenting to production, sale, or import of products bearing a design or containing a copy of it, or a duplicate of the design protected essentially, for those acts being made for business purposes. The minimum protection period granted to the owner should be 10 years under the TRIPS Agreement.

Internationally, apart from the TRIPS Agreement that compels WTO members to implement or update their legislative provisions so that the industrial designs are given minimal levels of protection, there are three more international treaties that offer the contracting states-general levels of protection. The Paris Industrial Property Protection Convention is the first significant international agreement to be agreed upon by the Member States providing general criteria of protection for industrial designs. The second important international agreement was the Hague Agreement on International Industrial Design Registration, which controls the worldwide system of protection managed by the WIPO for design registration. The Locarno agreement of 1979 defines the worldwide industrial design classification. Even if India is not a signatory to Hague Convention, but follows Locarno agreement-based International Classification for Industrial Designs, the Hague system of International Registration should be discussed to analyze industrial design protection according to the International IPR administration.

Hague system

The Hague system enables industrial design owners to protect the design in several countries by simply applying an application to the International Bureau of WIPO, which protects all the members of the WIPO design agreement. Currently, 58 countries are signatories to the Hague Convention, of which 41 are subject to the Geneva Act of 1999 to register international industrial design. In 2008, the European Union joined the Hague International Design Protection System which obliged all EU member states to preserve the designs at Hague. Additionally, a further Union of Countries that have joined the Hague system is The African Intellectual Property Organization (O.P.A.I) with sixteen states. 

It streamlines the handling of an industrial design registration since later amendments were made and renovated by one procedure step by the International Bureau. The purpose of the Hague system is to provide users in the Member States with simpler and more economical design protection options. A further advantage of the Hague Agreement is that no domestic patent agent is necessary for getting protection in this jurisdiction. Moreover, all countries are obliged to accept applications whose procedures conform with The Hague Accord Practices but not necessarily with practice in their country.

Previous acts of Hague, the London Act, 1934, and Hague Act, 1960 gave relief to the design owners only after some procedural matters have been handled at the national level but in line with the 1999 Geneva Act, the international design registration protects entirely the applicant’s interest and suspends him from filing a separate national application. It provides the opportunity for industrial design protection in several states and inter-governmental organizations by filing a single international application. Therefore, the protection of an industrial design may be applied on an international level by way of the Hague Agreement, and no national application or prior registration is required.

Protection of industrial designs under the Indian Designs Act, 2000

In the British colonial period, the legislation of 1911 was revised many times, and after the Indian Independence Act was adopted in 2000, the law for the preservation of designs was consolidated, updated, and implemented; In India on 11 May 2001, it came into effect. Replacement of the previous 1911 legislation to give better protection and to promote design activity for the designs registered. The new Act of 2000 provides to the registered design owner an exclusive right to sell, license, assign and use a similar design in any products in India,  the industrial design can be registered if new or original, if the design is a functional feature of shape, configuration, pattern or composition of lines and colours, which are applied by an industrial process or means either guide, mechanical or chemical, separate or combined, in two or three dimensions to any article or in both forms. 

This Act requires India to implement a ‘first to file, first to receive’ approach which means, to avoid other individuals claiming rights on certain specific designs, that the design inventor or creator should submit the registration application as soon as feasible. A design is considered new if the same design is not publicly accessible to the public before the date of filing or if uniqueness is established globally in the application for registration in India.

The primary change brought about by the legislation was the removal of the concept of ‘design’ of artistic works, as defined in the Indian Copyright Act, 1957. The copyright law also excludes from the purview of the copyright law a new definition of ‘design which has significant differences in terms of the protection of works of art, any design recorded following the designs law.

The High Court of Delhi clarified this in Microfibers Inc. v. Girdhar Co. & Another, the works of art are excluded from the protection of designs as it is an artwork in itself in form of painting and also remarked that artistic work to make industrial use of the works is not omitted from section 2(d) of the Designs Act, 2000 and they needs to be registered to get protection. In this instance, the court indicated explicitly that exclusion of artistic work defined in Section 2(c) of the Copyright Act, 1957 from the definition of ‘design’ under Section 2(d) of the Designs Act, 2000 is made simply to exclude the essence of works of art like the painting of  M.F. Hussain. Thus, the paintings, artists, and artworks seek explicitly to be exempt from the new act.

The Supreme Court of India decided on the registration and protection of designs as another significant issue in Bharat Glass Tube Ltd v. Gopal Glass Works Ltd. Gopal Glass Works (the respondents) have registered their designs and had the same certificate, and these designs began to be used in cooperation with a German company when the plaintiff had knowledge that their design was used, they moved to the Court. The design was made to be used in collaboration with a German company. The appellants said that the designs by the defendants were not innovative since they had been used by the German business since 1992 and already published in the United Kingdom Patent Office, so it has lost originality. When the issue was sent to the High Court on appeal; it supported the decision of the Calcutta High Court.

The new law changed the present act further by expanding the initial period of coverage from 5 years to 10 years, however in the event of design piracy; the individual breaching the design copyright shall be responsible for not more than 50,000 rupees for a maximum length of protection of fifteen years [Section 11]. The owner may also file a claim for damages and violation. The case for violation of registered designs cannot be brought before any court less than the District judge [Section 22]. To preserve and encourage industrial design in India the new Act is superior and more effective.

new legal draft

Case laws

Dabur India Limited v Rajesh Kumar & Others [2008 (37) PTC 227 (Del.)]

Facts of the case

The plaintiff marketed ‘Dabur Amla Hair Oil’ into bottles with a distinctive design, with a semicircular shoulder with a curved back and front panel that converged the shape and configuration of the bottle of the plaintiff was unique, new, and original and was registered in design No-17324 under the Designs Act. The green cap was likewise distinctive and it was also registered following the Designs Act. It is also argued that the bottles are printed on the bottom of the plaintiff’s trademark ‘Dabur’. The plaintiff alleges that they produce plastic bottles, imitate the plaintiff’s bottles, and also imprint the ‘Dabur’ mark on the bottom, and these bottles are sold by the defendant to ‘Dabur Amla Hair Oil’ counterfeiters. Therefore, both the defendant’s designs and the bottle cap are infringing.”

The case was fully heard and bottles of the complainant along with the defendant were put before the court for comparing and following the long arguments of the opposing parties.

Judgment

After examining the bottles, the Court initially noted that in the complaint, the plaintiff had made inaccurate averments that the defendants sold the bottles with the plaintiff’s trademark. The court found no bottle seized by the defendant to carry the trademark ‘Dabur’ on the base or anywhere else and in its report the Local Commissioner has also stated that seized bottles have not been embossed ‘Dabur’ by the accused so it is clear that the plaintiff did this to establish an infringement of the trademark.

A quick check on the plaintiff’s bottles might indicate that the bottles used by the complainant are typical bottles utilized by numerous other firms for the further commercialization of their hair oil, fixers, and liquid product. Plaintiff seemed to have no particular characteristic of the registered bottle as the design of the plaintiff had the complete bottle as the design and the plastic bottles used by the claimant are extremely common and do not have a particularly eye-catching design or form.

The Court further found that the plaintiff did not mention any particular originality in the design of the bottle, nor did the plaintiff mention any originality in the registration certificate, because similar designs are used by several leading firms long before the plaintiff registers this design.

Disney Enterprises  Inc. v.  Prime  Housewares  Ltd. (2014)

In the case of Disney Enterprises Inc. v. Prime House Wares Ltd. India and international registration of industrial designs came into dispute for the time being in the High Court of Delhi. In this case, Mumbai-based Prime Housewares Ltd. was manufacturing the characters of Disney such as Mickey-Mouse, Minnie-mouse, and Donald-duck. Disney filed a complaint in the case of trademark infringement with the primary argument that the trademark of the applicant is protected under Indian law, but not the designs. The Court handed down the order in favour of Disney over the trademark infringement action. The court also instructed the Indian company to supply Disney with every violating material, so it can be destroyed.

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

Facts of the case

The plaintiff is a firm dedicated to manufacturing and commercialization of several foodstuffs, such as bread, biscuits, cupcakes, cakes, etc. and one of the Plaintiff’s goods is a biscuit called “Milk Bikis Milk Cream”. The biscuit of the plaintiff has a round shape on one side and a humorous face on the other. Between both cookies, there’s a cream filling, a round nose, and a smile with two teeth that are apparent and that both teeth are filled with cream. The uniqueness is the form and shape of the face of the cookie on the one hand and the flat cream on the other hand between the biscuits. The applicant is the registered owner and also possesses the ‘Britannia Milk Bikis Milk Cream’ copyright. The complainant filed the case to note that the defendant had launched the offending product as ‘Milk Wala’ which in all respects is comparable to the complainant’s product. Thus, the defendant’s action is a pirate against the design of the registered design, a breach of copyright, and transmission as of the plaintiff, as it is identical in its design.

Judgment

When considering the designs in the consumer’s eye and children, the Court found that it was evident that the primary characteristics of the two cookies were not very same, and there was thus no violation. The Court evaluated likewise the wrappings of competitor items and ruled that considerable differences exist and that no violation of copyright was found. In respect of passing-off, the Court held that the plaintiff had ‘Britannia’ on the biscuit wrapper, whereas the trademark by the defendant was ‘Nutrine’ and ‘Milkwala’ on the wrappers of its biscuits. The design and packaging characteristics of both the items are very different, and young customers can immediately see the differences.

M/s Videocon Industries Ltd v M/s Whirlpool of India Ltd. [MH/0639/2014]

Facts of the case

The complainant registered the design for its washing machines form and arrangement. Plaintiff’s designs are square on one side and rounded on the other, with a particular visual attraction. The plaintiff has shown their design to be so successful that they have achieved significant sales of the washing machine with the impugned design within a brief time. Later, the plaintiff saw that the defendant had begun to produce and commercialize washing machines of the same design, form, and configuration as the plaintiff. The washing equipment of the defendant had similarities to the design of the plaintiff. It was clear that the defendant had violated the design registered and did intentionally show the popularity of the distinguished design of the washing machine of the plaintiff. Within these circumstances, the plaintiff brought an action for a design violation and dismissal.

Judgment

It was decided by the court that the washing machine offered by the defendant, too, is recorded by the plaintiff with a characteristic boat design. The uniqueness of the design is the shape that appeals visually and has generated value in items that are not related to enhanced features but desired. The defendant has made no difference to his goods simply by putting some features, altering the location of the knobs, or adding colour. The testing of an eye-only judgment shows clearly that both machines are comparable and a case of violation is established. 

To sustain the proceedings for dismissal, the Court also found that the person need not be actively involved and, since the opposing machines are comparable, the case of dismissal is resolved.

Conclusion

The registration of the Industrial Design shall protect the decorative or aesthetic aspects of the product, and shall provide the holder or owner of the registered design with exclusive rights against illegal use like the replication or copying without the consent of such person. The preservation of industrial designs contributes to economic growth which encourages industrial inventiveness. With the preceding explanation, it is evident that The Hague design registration system offers international vendors maximal benefits to gain registration and be protected by a single application within the Contracting States. It facilitates the registration and protection of designs made by an individual internationally straightforward and efficient. Although India isn’t a part of the Hague International Design Registration System, it provides more protection under the Designs Act of 2000 for industrial designs however, it gives protection to all contractual parties in the Hague system and offers great security to foreign traders in India and preferring International protection will be better within India.

References


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