DESIGN MISUSE AND INFRINGEMENT
From a legal perspective, an industrial design refers to the ornamental or aesthetic aspects of a product. The Designs Act, 2000 was introduced with the objective of protecting new or original designs that are created to be used in articles that are manufactured by industrial processes or means. The design may be considered important not only because of practical efficiency but because of its aesthetic appeal. Some products gain popularity due to their peculiar shape or design, hence it is imperative to protect the rights of the creator of such design.
The term ‘Design’ under Design Act, 2000, is defined as the features of shape, any pattern, configuration, ornament, or composition of colors or lines which is applied to any article whether in 2 dimensional or 3 dimensional or in both the forms using any procedure or process including manual, mechanical, or chemical, combined or separate which in the finished or final article appeals to or is judged solely by the eyes.
- Scope of protection under Design Act, 2000
When a design is registered under the Act, the registered proprietor would have copyright in the design for ten years. The rights of the proprietor are similar to that of the owner of copyright which includes the exclusive right to apply the registered design on the article belonging to the particular class. The Act also allows the registered proprietor to license the design for a fee.
The statute allows the creator to register a design that is capable of being applied to an article. It is not necessary that the product must first be produced with design. However, it is pertinent that the design is new or original and that there is novelty either in the application or the shape itself.
Design misuse and infringement
A registered industrial design provides the proprietor an exclusive right to stop fraudulent copying or imitation by others, which allows the owner to strengthen his competitive position and helps him to enjoy an appropriate return on investment for the creation and marketing of the article.
An Infringement of a registered Design includes when a person, without the consent of the proprietor of the design, imports, applies or publishes the registered design or any obvious/fraudulent imitation thereof. There are various instances of design piracy. Piracy of a design means the usage or application of the registered design to any article without the consent of the copyright holder.
Scope of Section 22 of Design Act
As per Section 22 of the Design Act, 2000, during the existence of copyright in any design no person shall, without the consent of the registered proprietor :
- For the purpose of sale, apply the design or any fraudulent or obvious imitation to an article that falls within in any class of articles in which the design is registered
- Import for the purpose of sale, 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
- Publish or expose or cause to be published or exposed any article knowing that the design or any fraudulent or obvious imitation has been applied to any article
Case Laws on Design Misuse and Infringement
There are various case laws on infringements of designs registered under the Act. In Cello Household Products v Modware India[1], a case was filed by Cello against Modware India stating that the bottle manufactured by the defendant under the name’ KUDOZ’ was deceptively similar to the plaintiff’s bottles that were being manufactured under the name ‘Puro’. Bottles under the PURO series were produced with distinctive and unique features, it had an oval shaped curve with a flip cap that was divided into two parts. These bottles were tinted with the combination of two colours. It was observed that the defendants were using a similar get up and color combination. The Court held that “The products and designs must be seen as a whole, from the perspective of the common consumer. The test is of visual appeal, and the task is to see if the essentials of that which makes it visually appealing have been substantially, but not necessarily exactly, copied.” Hence, considering the facts, the Bombay HC granted an injunction and damages infavour of the plaintiff.
In Castrol India ltd v Tide Water Oil[2], the petitioner filed a suit alleging that the respondent had been selling automotive lubricants in containers that were deceptively similar to the specially designed container created by the plaintiffs. While deciding the case, the Court laid down various tests to decide whether there is obvious imitation and/or piracy of a registered design. The Court held that “(i) The word ‘imitation’ does not mean ‘duplication’ in the sense that the copy complained of need not be an exact replica; (ii) The Court is required to see in particular as to whether the essential part or the basis of the Plaintiff’s claim for novelty forms part of the infringing copy.; (iii) The similarity or difference is to be judged through the eye alone and where the article in respect of which the design is applied is itself the object of purchase, through the eye of the purchaser.; (iv) The Court must address its mind as to whether the design adopted by Defendant was substantially different from the design which was registered. The Court ought to consider the rival designs as a whole to see whether the impugned design is substantially different from the design sought to be enforced.”
Similarly in Kemp & Co. vs. Prima Plastics Limited,[3] the court laid down that “If the visual features of shape, configuration pattern designs are similar or strikingly similar to the eye, it is not necessary that the two designs must be exactly identical and same. The matter must be looked at as one of substance and essential features of the designs ought to be considered.”
Furthermore, in Troikaa Pharmaceuticals v. Pro Laboratories[4], the Gujarat High Court held in favour of the plaintiffs wherein they were the registered proprietors to the design that was being used to manufacture a ‘D’ shaped tablets. The defendants started manufacturing similar tablets under the defense that it was a common design and did not deserve any protection. The Court ruled that even if the ‘D’ shaped design was not novel, the usage of the same in tablets was new and original and hence was entitled to protection under the Designs Act.
The court has also granted relief outside the scope of the Designs Act, in Micolube India Ltd. v. Rakesh Kumar trading as Saurabh Industries & Ors.[5], the Hon’ble Delhi High Court held inter alia that the Plaintiff has the right to institute an action for passing off incase of a design that is being used as a trademark provided that the suit satisfies the requirements for passing off proceedings. In the immediate case, the plaintiffs had filed a suit for a permanent injunction against the defendants for selling goods in containers that were deceptively similar to the boxes used by the plaintiffs.
Considering the Micolube decision, the Delhi HC in Carlsberg Breweries A/S v. Som Distilleries And Breweries Ltd.[6] held that parties can club design infringement and passing off together and file a composite suit provided that the cause of action arises from the same set of activities and that the Court has the required jurisdiction with regard to both cases independently.
Defense:
As per Sec 19 of the Act, any interested person is allowed to present a petition for the cancellation of the registration of a design on the grounds :
(a)that the design has also been registered in India
(b) that the design had already been published in india or any other country prior to registration
(c)that the design is not new or original
(d) that the design is not registrable under the Act
(e) that the design does not fall under the scope of sec 2(d).
These grounds can be used as valid as defense during a suit for infringing the rights of the registered proprietor.
Remedies
As per Section 22 of the Act, the registered proprietor of design can avail below remedies against design misuse and infringement:
- Damages – The Court may order the defendant to compensate the plaintiffs for the losses suffered due to the fraudulent acts of the defendant.
- Injunctions – The Court may order a permanent injunction against the defendants from continuing any act that may infringe the copyright of the design
Conclusion
An attractive and appealing industrial design has the capability of increasing the market value of a product. The unique design would help the customers differentiate and allow the product to gain popularity. A registered design must considered as business asset that can increase the commercial value of the company. Although no law can be introduced to prevent competition, the Designs Act prevents competitors from making products that are deceptively to similar another design and taking advantage of another persons’ creativity.
Sources :
1. Looking good : An Introduction to Industrial Designs, World Intellectual Property Organisation, WIPO Publication No. 498.1E, ISBN 978-92-805-2983-8 { https://www.wipo.int/edocs/pubdocs/en/wipo_pub_498_1.pdf }
2. FAQs, Department for Promotion of Industry and Internal Trade { https://ipindia.gov.in/faq-designs.htm }
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Design Law and Filing in India
[1] AIR 2017 Bom 162
[2] (1996) 16 PTC 202
[3] MANU/MH/0027/1999
[4] (2008) 49 (3) GLR 2635
[5] (2013) 198 DLT 120
[6] AIR 2019 Del 23