Industrial design is a very prominent intellectual property in today's booming corporate world, protection of industrial design is important as it encourages creativity in the industrial and manufacturing sectors and helps in the economic development of the nation. After the designs are registered the registered proprietor receives exclusive rights on the design and its application to any article in any class in which the design is registered if any unauthorized person sells or uses the design to acquire commercial gain it constitutes infringement.

Under section 22, the Infringement of registered designs is called piracy of designs. If an article of a registered design is used for the purpose of sale or for import for sale or an article of a registered design has fraudulent or obvious imitation, has been published or exposed without consent from the registered proprietor all these acts constitute piracy. The Designs Act,2000 also provides for remedies for piracy under section 22(2).

The plaintiff has to select among the remedies provided under sections 22(2)(a) and 22(2)(b) and cannot avail of both remedies. Though the remedies under the Designs Act and Trademarks Act overlap but they are inconsistent with each other thus, a right holder under the trademarks act cannot avail of remedies under the designs act.

In today's competitive corporate world businesses are trying every tactic to grab the attention of the buyer. The first thing that is noticed in any product is the design and eye appeal element of it. visual attraction plays a vital role in enhancing the marketability of the articles. Under the Designs Act,2000 one can seek protection for the aesthetic nature of the article. Unlike the Patent act, the designs act does not lay any emphasis on the functional or technical aspects of the article. When there is protection for international designs it encourages creativity and innovation and contributes to the development of the nation.

Section 2(d) defines "design" means only the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article whether in two-dimensional or three-dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.

As a general rule, the design consists of:

• Three-dimensional features, such as the shape of the product;
• Two-dimensional features, such as ornamentation, patterns, lines, or colour of the product;
• A combination of one or more such features.

Things excluded from the definition of design:

1. Any mode or principle of construction
2. Anything which in substance is merely a mechanical device
3. Any trademark
4. Any property mark as defined in section 429 of IPC,1870
5. Any artistic work as defined in section 2 (c) of the Copyright Act,1957

Piracy of designs

The owner of a registered design has the exclusive rights to work and use the design. If any unauthorized person sells or manufactures the registered design for commercial purposes without having any right to do so constitutes an infringement of design rights. Under the law, if the 'copyright' of the design has been infringed it is called "Piracy of Design".

Section 22 of the Designs Act,2000 deals with Piracy in registered designs. Section 22(1) forbids a person other than the registered proprietor of the design from performing certain acts in respect of designs and if anyone commits such acts, he will be liable for piracy of the design. Section 22(2) deals with remedies available with the registered proprietor in case of piracy of a design.

Section 22(1) states that:

1. If an article of a registered design is used for purpose of sale to apply or cause to be applied to any article in any class of article the design is registered
2. If an article whose design is registered is imported for sale without having the consent and authority of the proprietor of the registered design.
3. If an article whose design is registered or such design has fraudulent or obvious imitation in it, has been published or exposed for sale without the consent of the registered proprietor.

Section 22(1) provides that if any article or class of articles of a registered design is used for purpose of sale or for import of purpose of sale without the consent of the proprietor of the registered design or if such design is published or exposed for sale or there is any fraudulent or obvious imitation thereof article is been termed to have pirated the registered design.

Essentials to constitute the act of piracy:

1. The act should be committed during the existence of the copyright in any design
2. The act should be done for the purpose of sale and not merely for private use.
3. The act should be done in relation to any article in a class of goods in which the design is registered.

Section 22 hereby gives power to the registered proprietor from restraining the commission of piracy. The main objective is to protect novelty or originality in the design to be applied to a particular article that is commercially marketed.

To constitute piracy of designs the copy must be a fraudulent and obvious imitation. 'Imitation' does not mean exact replica, the court checks whether the essential part of the base of the applicant's claim for the novelty of design forms part of the infringing design.

In Dunlop Rubber Co. v. Golf Ball Development[1], Farwell J. observed: If a design has in it a striking feature which captures and holds the eye, and which is one thing that strikes the eye when one looks at the design, a design which otherwise may be like a registered design but which eliminates the striking feature or alters it so that it is not recognizable, such a case it seems to me it is impossible to say that one is an imitation of other.

Remedies against the piracy of registered design:
Section 22(2) states that if any person acts in contravention of this section, he shall be liable for every contravention:

1. To pay the registered proprietor a sum not exceeding Rs 25,000/- as a contract debt. But the total sum recoverable in respect of any one design shall not exceed Rs 50,000/-
2. Proprietor may bring a suit for recovery of damages for any such contravention and for an injunction against the repetition thereof, to pay damages, and to be restrained by injunction as per the discretion of the court.

The Bombay High Court in Calico Printers Association Ltd vs Gosho Kabushiki Kaisha Ltd[2] ruled that the defendant has the right to ask the plaintiff to elect between the remedies available to him under sections 22(2)(a) and 22(2)(b) at an early stage of the trial. The remedies provided above are alternatives.

Comparison between the remedies under the Designs Act and Trademarks Act

There is a certain level of overlap between the remedies provided in the Trademarks Act and the Designs act. However, there are certain differences between the remedies provided under both acts.

Design Act is purely statutory in nature whereas the protection under the trademarks act is available to the registration of that shape under the Trademarks Act. Additionally, with the statutory remedy, the Trademarks Act also saves the common law remedy of passing off under section 27(2).

Rights can be claimed by the proprietor of an unregistered trademark on the basis of identity built up and prior use, whereas in design prior use of design before the actual date of application leads to pre-publication of design and thus the owner cannot seek rights for the same.

Protection available under the Designs Act is up to 15 years however, the protection available under the Trademarks Act is for 10 years but can be renewed for an unlimited period.

A right holder under trademarks cannot avail of the protection of design under the Trademarks Act and Designs Act both. As the remedies under both the laws are inconsistent and has to elect between the two.

Defenses in infringement suit:

1. Materially different design
2. Design applied with the consent of the proprietor
3. Plaintiff is not the true proprietor
4. Design applied does not comply with the definition of design as per section 2(d).
5. Design lacks originality and novelty

End-Notes:

1. Dunlop Rubber Co. v. Golf Ball Development,(1931) 48 RPC 268
2. Calico Printers Association Ltd vs Gosho Kabushiki Kaisha Ltd.,AIR 1936 Bom 408