Designs Litigation in India
Design Infringement Litigation in India
The Design Act, 2000 provides rights and remedies to the Registered Proprietor of a Design. Chapter V of the Design Act, 2000 pertains to “Legal Proceedings”, Section 22 of the Act in particular provides for remedies in case of ‘Piracy of a Registered Design’.
Piracy of a Registered Design, in simple terms, means an identical or near identical imitation of a design which is registered as per the provisions of the Act and its Registered Proprietor enjoys exclusive right to apply that registered design to a particular article in a class in which the design in registered. In case, a Registered Proprietor is of the view, that there is a piracy of its registered design, the Registered Proprietor can file a Suit for Injunction and/or Damages before a District Court having competent jurisdiction. It is pertinent to note that limitation to institute a Suit is till the time the Registered Proprietor of a design enjoys the copyright upon the design.
In, Carlsberg Breweries v Som Distilleries And Breweries Ltd [MANU/DE/ 4610/2018], five judge bench of Delhi High Court overruled Mohan Lal v. Sona Paint, MANU/DE/1254/2013 and held that two causes of action that of passing off and design infringement under the Designs Act, 2000 can be joined and tried in a composite suit.
Section 22(2) of the Act, enumerates that if any person acts in contravention to Section 22, he shall be liable for every contravention-
- to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or
- if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repletion 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 on design under clause (a) shall not exceed fifty thousand rupees.
It is important to clarify that a party cannot claim more than Rs. 50,000/- as damages in a Design Infringement Suit. However, the cap of Rs. 50,000/- is only applicable when the relief is claimed under Section 22(2) (a). No pecuniary limit exists on damages a Registered Proprietor of a design wants to seek in case of suit for injunction and damages under Section 22 (2) (b), the discretion of awarding the damages in a Suit for injunction and damages lies with the Court where the suit is instituted & upon evidences of losses filed in Court.
The Delhi High Court in Steelbird Hi-Tech India v. Asia Fibre Glass Products, MANU/DE/0524/2020, granted over Rs 96 lakh in damages to helmet manufacturer Steelbird Hi-Tech India, in a design infringement suit against Asia Fibre Glass Products.
In case, a Suit has been instituted by a Registered Proprietor for any relief under Section 22(2), the Defendant will be at the liberty to take all the grounds available under Section 19 of the Act for “Cancellation of Registration of Design” as grounds of defence. Section 22 (4), provides that where grounds as available under Section 19 have been taken as ground of defence, then in such case, suit or other proceedings shall be transferred by the Court in which the Suit or other proceedings are pending to the High Court for decision.
The Hon’ble Supreme Court in, S.D. Containers, Indore v M/s Mold Tek Packaging Ltd., 2020 SCC OnLine 979, interpreted what “High Court” under Section 24 (4) means. It was held ‘High Court’ under Section 22(4) includes a High Court that does not have ordinary original civil jurisdiction.
In, Tirupati Sprinklers v. Flexituff International Ltd., 2016 SCC OnLine Raj 3604 question as to whether the court should first record its prima facie satisfaction to the defence taken in reference to section 19 of the Act before transfer of the case to the High Court or by implication of section 22(4) of the Act of 2000, petition has to be transferred to the High Court. The Hon’ble Rajasthan Court held that, the plain reading of section 22(4) of the Act shows that as and when defence under section 19 is availed then the case need to be transferred to the High Court.
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A registered proprietor can institute a suit in a Court not below the District Court, for injunction and/or recovery of damages against any person engaged in the piracy of the registered design.
No suit or proceeding can be instituted in respect of piracy of the design wherein such piracy has been committed between the date on which the design ceased to have effect and the date of restoration of the design.
During the existence of copyright in the design, without license or written consent of the registered proprietor, following acts would be considered piracy of registered design under Section 22 of Indian Design Act.
During the existence of copyright in any design it shall not be lawful for any person, without the consent of the registered proprietor;
- for the purpose of sale to apply or cause to be applied, to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, or to do anything with a view to enable the design to be so applied;
- to import such article for the purposes of sale.
- to publish or expose or cause to be published or exposed for sale, the said article.