Design Litigation in India has been one of the prominent parts of IP Litigation. The Design Act, 2000 provides rights and remedies to the registered proprietor of the design. To be specific, Chapter V of the Act deals with Legal Proceedings. In short, design litigation covers the most common issue faced by design proprietors- design piracy.
Design piracy is imitation or copying of the design without the authorized permission of the original creator of the design. Design piracy has been a growing concern, and endless cases have been witnessed in the last few years of such piracy.
Section 22 of the Design Act, 2000 gives a clear outline about piracy of designs. This section begins with a negative connotation, restricting any person who is not a “lawful proprietor” of the design to use the design for any purpose without the permission of the owner of the design. The section is divided into three sub-clauses stating the constituents of piracy.
Indian judiciary has given two tests to determine the constitution of piracy under the Act. These tests were reiterated in the case of Britannia Industries vs. Sara Lee Bakery (famously known as the Smiley face biscuit case)
The Registered proprietor of the design has the exclusive right to protect its design from any fraudulent imitation or piracy of design.
The registered proprietor can file a suit for injunction or any other legal remedy before the district court having competent jurisdiction.
Note: Limitation to institute a suit for design infringement is valid till the registered owner of the design enjoys copyright upon the design
In, Carlsberg Breweries v Som Distilleries and Breweries Limited, the court opined that the registered proprietor can institute passing off and infringement as a composite suit under the Design Act, 2000.
The defendant has the right to claim defenses when any infringement of design is filed by stating the grounds for cancellation of design as laid down in Section 19 of the Design Act, 2000. They are:
In such cases, if defenses are claimed, then the competent court to try the matter will be the High Court. (Tirupati Sprinklers v. Flexituff International Limited). The term High Court (as mentioned in Section 24) means and includes all the High Court that does not have Ordinary Original Civil Jurisdiction. (S.D. Containers v. M/s Mold Tek Packaging limited)
Note: The limit to claim INR 50,000 for design infringement confines only where relief is claimed under Section 22(2)(a). There is no bar to claim pecuniary damages in case a suit is filed under Section 22(2)(b). in such cases, the power to award damages and compensations lies with the Court of competent jurisdiction and is solely based on evidence filed with the court. (In Steel bird Hi-tech India v. Asia Fibre Glass Products, the court granted damages up to Rs.96 lakhs to the plaintiff)