design litigation

Overview:

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.

Piracy of Design- In nutshell

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.

1. If any person uses the registered design for sale of the product to which the design is applied or just the design without being applied to any product, without a license or expressed consent of the proprietor;
2. If any person uses the registered design for import sale by fraudulent means or obvious imitations without the consent of the proprietor;
3. If any person uses, publishes, exposes, or causes to be published or exposed to any registered design without prior consent, whatsoever, will or shall cause piracy of the design.

Test relating to 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 test lay down to determine the piracy issue are:

1. Test of obvious fraudulent imitation: In the first test of obvious fraudulent imitation, the court has to check for the similarity or differences through eyes alone, and if the design is applied to the product, then the court has to compare the products through the eyes of the purchaser.
2. Test of substantial difference: While checking for the similarity or differences, the Court shall check whether the designs contested are fraudulent or obvious imitations.

Who can file the case?

The Registered proprietor of the design has the exclusive right to protect its design from any fraudulent imitation or piracy of design.

Where to file the case?

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.

Defenses against Infringement:

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:

1. The said design or similar design is already registered in India
2. There is a lack of originality or novelty
3. The design has already been published in India or any other country before the dating of registration
4. It does not qualify for registration as per the Act.
5. It does not fall under the definition of design as per section 2(d).

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)

Liability: Section 22(2) 

• In case of piracy of designs, the infringing party will have to bear the liability of compensating the original registered proprietor of the design to a sum of not exceeding more than Rs. 25,000/-.  In case of a suit to be filed, the recoverable amount shall not exceed more than Rs. 50,000/-.
• The registered proprietor is also entitled to initiate a suit to recover damages and obtain an injunction against such repetition. However, these remedies are not exhaustive in nature, and courts have the discretion to broaden the remedies available under the Act. (Astral Polytechnik limited vs. Ashirvad Pipes Private Limited)
• Apart from the remedies mentioned above, the plaintiff will also be entitled to claim rendition of accounts or profit and delivery of infringing or pirated materials and destruction of materials. (Tobu Enterprises Private Limited vs. Joginder Metalworks)

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)