India – Liability of Industrial Design Infringement

For every business or brand owner at present, the design of a product has become a crucial concern, and why won’t it be, after all, “A thing of beauty is a joy forever.” The unique design of a product, such as that of Mini Cooper and Coca-Cola, forms brand identity.  The Designs Act of 2000 (referred to as ‘Act’ further in this article) governs and deals with the mechanism of registration, protection, and enforcement of industrial designs in India. The ultimate purpose of the Act is to safeguard the intellect of the proprietor of the design in question. The Act protects the designs that are original/new, not previously disclosed to the public, and can be distinguished significantly from other known designs or combinations of known designs.

Infringement of Industrial Designs 

To understand infringement of industrial designs, one needs to go through Section 11 and Section 22 of the Act. Section 11 of the Act enables and authorizes a registered proprietor to have Copyright Protection in the industrial design, and Section 22 of the Act protects such exclusive right.

A registered industrial design is said to be infringed by a person who applies, imports, or publishes it or any other obvious or fraudulent imitation thereof without the consent of the proprietor. Infringement of industrial designs takes place only in the following scenarios:

• The infringement is committed during the existence of copyright in the industrial design;
• The industrial design is applied or imitated without the permission of the registered proprietor;
• The industrial design is for the purpose of sale and not for personal or private use; and
• The articles must belong to the same class in which the industrial design is registered.

Liability of Industrial Design Infringement

The liabilities of the infringer of an industrial design are listed in Section 22(2) of the Act, also suggesting or indicating the remedies available to the registered industrial design proprietor. The registered proprietor of the industrial design has to select one of the alternative remedies available in this Section.

• Section 22(a) of the Act enforces the infringer of the industrial design to pay an amount not exceeding Rs 25,000 for every contravention recoverable as a contract debt to its registered proprietor. The total amount recoverable for one industrial design should not be more than Rs 50,000.
• The proprietor of the design, under Section 22(2)(b), can also choose to bring a lawsuit for the recovery of damages and an injunction against reputation damage. The infringer of the industrial design is then liable to pay the amount as awarded by the court and is restricted by injunction, respectively.

The objective behind these is to make the infringer of the industrial design liable for the loss suffered by the registered proprietor and secure a fair return on the proprietor’s investment. However, it is essential to note in this aspect that for claiming the damages, the registered proprietor of the design is required to mark his articles in some way, denoting that the industrial design is registered, and take all the steps to ensure the marking of the said articles.

Defenses Available to the Infringing Party

• There is a lack of novelty in the already existing registered industrial design;
• The functional aspect of the product is different from that of the already registered industrial design;
• Any grounds available for the cancellation of the registered industrial design under Section 19 of the Act;
• A contract concerning the registered design at the time of contravention of Section 22 of the Act, along with a condition declared unlawful under Section 42 of the Act;
• The contravention concerning the registered design should begin from the date on which the registration of the design ceased to have an effect and should last till the date of restoration of such registered design;
• The lawsuit for industrial design infringement, recovery of damages, etc., should not be filed in any court below the District Judge Court.

Case Laws Related to Industrial Design Infringement in India

• Niki Tasha Pvt. Ltd. v. Faridabad Gas Gadgets Pvt. Ltd.

Pleading for the grant of an interlocutory injunction requires the plaintiff to prove or show that the balance of convenience lies in his favor. In this case, the court held that there would be no grant of an interlocutory injunction unless the court is completely satisfied that there is a real possibility of the plaintiff succeeding in the lawsuit.

• Calico Printers Association Ltd. v. Ahmed Abdul Karim

In this case, the court held that in the instance of industrial design infringement, the order for delivery up of the infringed articles could be made by the court as a reasonable or equitable relief to the registered design’s proprietor, even though the same was not expressly provided in the Act.

• Micolube India Ltd. v. Rakesh Kumar

The Delhi High Court’s larger bench upheld the availability of the passing off remedy concerning industrial design infringement in the nation. 👉 ✅  For view-source: https://www.kashishipr.com/