Piracy of registered designsAuthor: Kshitij Parashar
Designs have always played a major role in the global dynamic market. The essential purpose of design law is to promote and protect the design element of industrial production. A design is, in layman’s language, the plan or scheme for the appearance of an article (or a part of an article). It primarily concerns with what an article looks like or is intended to look like. Section 2 (d) of the Designs Act 2000 defines ‘design’ to mean only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial processes or means, which in the finished article appeal to, and are judged solely by the eye. The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration.
Eligibility Criteria for the Design Registration
A design qualifies for protection only if-
(i) it is new or original;
(ii) it has not been previously registered in India; and
(iii) it has not been previously published in India.
The rationale behind the protection of design is the role played by it in promoting and maintaining a competitive market economy. The notion of protection of design is the result because of its adaptation in the minds of the users and the socio-economic framework, which sustains it. The manifestation of design in various product markets poses a problem for the registration of a design in intellectual property. In this article, an attempt is made to describe briefly about a major threat faced in the field of intellectual property i.e. “Piracy of the Registered Design” so that those reading it will get an insight of the importance of designs in this modern consumerist market.
Piracy being a violation of copyright law; it involves the unauthorized acquisition, reproduction, distribution, or performance of a creative work. To constitute infringement of a registered design, it is therefore, necessary that the copy must be fraudulent or obvious imitation. The word “imitation” does not mean exact replica. The court is to see in particular as to whether the essential part of the base of the applicant’s claim for novelty in the design form part of the infringing design.
Section 22 of the Designs Act, 2000, lays down that the following acts amount to piracy: -
- To publish or to have it published or expose for sale any article of the class in question on which either the design or any fraudulent or obvious imitation has been applied.
- To either apply or cause to apply the design that is registered to any class of goods covered by the registration, the design or any imitation of it.
- To import for the purpose of sale any article belonging to the class in which the design has been registered and to which the design or a fraudulent or obvious imitation thereof has been applied.
According to Section 22(2) (b) of the Designs Act, 2000 the proprietor of a design has the right to bring a suit for recovery of damages. A practical method of assessing damages is to assess them on the basis of a reasonable royalty upon all infringing articles made and sold by the defendant. Alternatively damages may be assessed to compensate plaintiff for the loss of sales suffered by him on account of the sale of the infringing articles by the defendant, or other damage caused to him thereby, e.g. reduction in price. However, the plaintiff cannot recover damages or penalty for infringement if he has failed to mark his articles in the prescribed manner denoting that the design was registered, unless he shows that he took all steps to ensure the marking of the article.
In a world where simultaneous copying rages and piracy has become a business model, legislation addressing innovators' rights is a necessary addition to intellectual property law and a fair complement to anti-counterfeiting measures.
Design denotes those which are protected by the design system of our country, i.e., Designs Act, 2000. But it should also be remembered that design act prohibits registration of those which lack novelty or originality and also those designs which have been disclosed to the public domain in a tangible form or in any other way prior to the filing date or, which is not significantly distinguishable from non designs or combination of non-designs or comprises or contains scandalous or obscene matter. This act has been enacted, taking into consideration the international standard that has been kept for design protection. It also states that the design must have an eye appeal, which means that it should attract people towards the article. It should also be noted that the design must possess some features beyond those necessary to enable the article to fulfill its particular purpose.
A rationale basis for the protection of designs is to reward the designer’s creativity and to provide incentives for future contributions, however a balance must be maintained between such reward and the long term goal of promoting competition within a market based economy. The owner of the registered design right will be in a position to oppose infringement in relation to goods in respect of which the design has been registered. Designs which appeal to the eye can be of a tremendous commercial value. So there is a real need to register the design as a registered design. It is the only way to prevent piracy of designs and to encourage the origin of new and original ones. The Designs Act 2000 to a great extent serves as an umbrella protection for Industrial Designs.