TRADE MARKS AND DESIGN ACT

SL.NO. PARTICULARS PAGE NO.

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 BIBILIOGRAPHY

• http://www.google.co.in/#hl=en&source=hp&q=trademarks+act&aq=1&a
qi=g10&aql=&oq=trademarks&gs_rfai=&fp=c6278971f5114502

• http://www.trademarksmanagement.com/trademarks/changes-in-
trademarks-act/

• http://www.tmpsearchers.com/trademark_cases/

• http://www.articlefield.com/40259/ten-cases-of-trademark-infringement-
xiamen-09-brand-mats-infringement/

• Business and corporate law- CL business

 TRADE MARK ACT

INTRODUCTION

The trademark act 1999 has been enacted to provide for registration of trademark for
goods and services including prohibition to the registration of imitation of well-known
trademarks. A person’s right to trade mark is based on prior use or priority of claim.

IMPORTANT TERMS USED IN THE ACT

MARK: sec 2 (1): a mark has been defined to include a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colour or any combination thereof.

TRADE MARK: sec 2(1)(Zb): It means a mark capable of being represented

graphically and the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colors; and

(i) A registered trade mark or a mark used in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade between
the goods or services, as the case may be, and some person having the right as
proprietor to use the mark; and

(ii) In relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so to indicate a
connection in the course of trade between the goods or services, as the case may be,
and some person having the right, either as proprietor or by way of permitted user, to
use the mark whether with or without any indication of the identity of that person, and
includes a certification trade mark or collective mark;

WELL – KNOWN TRADE MARK: sec 2(1)(Zg) : in relation to any goods or

services, means a mark which has become so to the substantial segment of the public
which uses such goods or receives such services that the use of such mark in relation
to other goods or services would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those goods or services and a person
using the mark in relation to the first-mentioned goods or services.

COLLECTIVE MARK: means a trade mark distinguishing the goods or services of

members of an association of persons which is the proprietor of the mark from those
of others.
CERTIFICATION TRADE MARK: sec 2 (1) (e) : It means a mark capable of
distinguishing the goods or services in connection with which it is used in the course
of trade which are certified by the proprietor of the mark in respect of origin, material,
mode of manufacture of goods or performance of services, quality, accuracy or other
characteristics
PERMITTED USE: sec 2(1)(r): in relation to a registered trade mark, means the use
of trade mark –

(i) By a registered user of the trade mark in relation to goods or services-

(a) With which he is connected in the course of trade; and
(b) In respect of which the trade mark remains registered for the time being;
And
(c) For which he is registered as registered user; and
(d) Which complies with any conditions or limitations to which the
registration of registered user is subject; or

(ii) By a person other than the registered proprietor and registered user in relation to
goods or services -
(a) With which he is connected in the course of trade; and
(b) In respect of which the trade mark remains registered for the time being;
And
(c) By consent of such registered proprietor in a written agreement; and
(d) Which complies with any conditions or limitations to which such user is
Subject and to which the registration of the trade mark is subject;

PROCEDURE OF REGISTRATION OF TRADE MARK

Section 18 deals with the procedure of making an application for registration. Several
classes of goods or services can be registered by means of a single application. But the
fee payable shall be calculated on the basis of number of classes in which registration
is sought. The application for registration shall be made in triplicate

Following are the different forms which shall be used for registration of different
types of goods/services as follows:

• Form TM –1 for goods or services included in one class

• Form TM-2 for goods or services included in one class from a convention
country
• Form TM –22 for registration of textile trade mark
• Form TM – 3 for registering a collective trade mark for goods or services in
one class
• Form TM- 51 for single application in respect of different classes of goods and
services
• Form TM – 8 for registering a series of trade mark for specification of goods
and services in a class or for different class
• Form TM – 37 for registering a series of trade mark from a convention country

The following shall be attached with the application

 • Proof of application made in a convention country (rule 26) : where a right to
priority is claimed by a reason of an application having been filed in a
convention country, a certificate from the registrar’s office of that country
shall be filed either with the application or within 2 months thereof.
• Proof of user: it requires the submission of an affidavit testifying the period
and person by whom the trade mark has been used.
• Representation of mark : copies of application shall be accompanied by 5
additional representation of the mark which shall correspond to one another
• Reproduction of mark : if application states that trade mark is 3 dimensional,
the reproduction of mark should consist of 2 dimensional graphic or
photographic reproduction as follows –
 3 different views of the trade mark
 In case the different views and / or description of mark still do
not show the 3 dimensional mark, the applicant my be required
to furnish a specimen of the trade mark.

Transliteration and translation of trade mark if it contains words other than

Hindi or English

CRITERIA FOR TRADE MARK

 Different from others

 Easy to speak, remember and spell
 Simple in design
 Registrable and protectable
 Attractive in appearance
 Capable of affixation on goods on which it is used

OTHER REQUIREMENTS

 A clear description of trade mark in words

 A graphical representation of trade mark
 Proof off application made in convention country
 Proof of user
 Representation of mark
 Reproduction of mark
 Transliteration and translation of trade mark if it contains words other than
Hindi or English
 Acknowledgement of application and search for identical or deceptively
similar trade mark (yahoo inc v akash arora 1999)
 Examination report may be issued within 3 months of requisition
 Correction and amendment of application
 Withdrawal of acceptance by the registrar after hearing the application
 Expedited examination on applicant’s request after the receipt of official
number of the application and payment of 5 times the application fee

GROUNDS FOR REFUSAL OF TRADE MARK

Absolute grounds for refusal of registration (sec 9 (11))

(1) The trade marks -

(a) Which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or
the time of production of the goods or rendering of the service or other characteristics
of the goods or service;
(c) which consist exclusively of marks or indications which have become customary
in the current language or in the bona fide and established practices of the trade, shall
not be registered:
PROVIDED that a trade mark shall not be refused registration if before the date of
application for registration it has acquired a distinctive character as a result of the use
made of it or is a well-known trade mark.

(2) A mark shall not be registered as a trade mark if -

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities
of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use)
Act, 1950.

(3) A mark shall not be registered as a trade mark if it consists exclusively of -

(a) The shape of goods which results from the nature of the goods themselves; or
(b) The shape of goods which is necessary to obtain a technical result; or
(c) The shape which gives substantial value to the goods.

Relative grounds for refusal of registration ( sec 11 )

 Existence of likelihood of confusion on the part of the public due to its identity
with earlier trade mark
 Mark being a reproduction or limitation of a well known trade mark
 If the use of mark will be prevented by the law of passing off, or the copyright
law
 If it will be detrimental to distinctive character of the earlier well known trade
mark

ADVERTISEMENT OF APPLICATION

 Manner of advertisement – the application shall be advertised in the journal

within 6 months of its acceptance or after expiry of the period mentioned in
sec 154 (2), whichever is later. If the trade mark is other than a word, the
registrar may require the applicant to furnish a camera copy thereof which
shall be put on the internet website
  In case an advertisement of a series of trade mark differing from one another
in respect of particulars prescribed, the registrar may insert with the
advertisement of application, a statement of the manner in which several trade
marks differ from one another.
 Notification of correction or amendment made in the application.

OPPOSITION TO REGISTRATION (RULES 47 – 57)

(1) Any person may, within three months from the date of the advertisement or
readvertisement of an application for registration or within such further period, not
exceeding one month in the aggregate, as the Registrar, on application made to him in
the prescribed manner and on payment of the prescribed fee, allows, give notice in
writing in the prescribed manner to the Registrar, of opposition to the registration.

(2) The Registrar shall serve a copy of the notice on the applicant for registration and,
within two months from the receipt by the applicant of such copy of the notice of
opposition, the applicant shall send to the Registrar in the prescribed manner a
counterstatement of the grounds on which he relies for his application, and if he does
not do so he shall be deemed to have abandoned his application.

(3) If the applicant sends such counter-statement, the Registrar shall serve a copy
thereof on the person giving notice of opposition.

(4) Any evidence upon which the opponent and the applicant may rely shall be
submitted in the prescribed manner and within the prescribed time to the Registrar,
and the Registrar shall give an opportunity to them to be heard, if they so desire.

(5) The Registrar shall, after hearing the parties, if so required, and considering the
evidence, decide whether and subject to what conditions or limitations, if any, the
registration is to be permitted, and may take into account a ground of objection
whether relied upon by the opponent or not.

(6) Where a person giving notice of opposition or an applicant sending a

counterstatement after receipt of a copy of such notice neither resides nor carries. on
business in India, the Registrar may require him to give security for the costs of
proceedings before him, and in default of such security being duly given, may treat
the opposition or application, as the case may be, as abandoned.

(7) The Registrar may, on request, permit correction of any error in, or any
amendment of, a notice of opposition or a counter-statement on such terms as he
thinks just.
Some more cases
Xiamen Ten 09 cases of trademark infringement: Brand Mats infringement

4 26 was the 10th "World Intellectual Property Day", Industrial and Commercial Bureau
yesterday officially launched in 2009, Xiamen City, ten typical cases of trademark
infringement, trademark development to the public and the protection of our city.
According to reports, in 2009, the city industrial and commercial systems for all kinds of
trademark violation cases were 118, worth 2,903,600 yuan, a fine total 1.5327 million yuan.

Case 1 Basketball trademark infringement case

Without their consent OEM Sports Goods Co., Ltd. Xiamen Wick

parties in June 2009 onwards, without obtaining the "SPALDING" trademark license holders
authorized to use the relevant circumstances, production of fake Spalding Basketball,
Spalding Basketball appearance produced imprinting "SPALDING", and bar code and other
content. In violation of relevant provisions of its trademark constitutes trademark
infringement produce the exclusive right to the behavior of basketball products. Industry
and commerce administrative department may order the parties to correct violations, and
confiscated 266 boxes infringing basketball products, a fine of 150,000 yuan.

Case 2 Counterfeit wines trademark case

Homes in 18 kinds of false hidden wine brands

2009 4 15, Xiang'an District Trade and Industry Bureau law enforcement officers in the joint
police department street Dadeng TIEN found in 186 homes, "Kinmen sorghum", "Wuliangye",
"Jiannanchun", "Remy Martin "" Blue Ribbon "," Royal Salute "," 88 Hang sorghum "," shell
sorghum "and other brands of liquor and wine packaging. Zhang identified the owner sold
liquor were found to be counterfeit brand products have constituted an infringement of
registered trademark; and party fake "Shuijingfang", "Jiannanchun", "Wuliangye" and other
well-known marks, the circumstances are serious. The court ultimately the business sector
to confiscate and destroy infringing Zhang, 18 Chinese and foreign brand wines and liquor
bottle caps and packaging, and impose a penalty fine of 80 thousand yuan.

Case 3 Ventilation equipment counterfeit case

Not authorized to manufacture, sell fined 60 000 45 000

Lan Hao Industry & Trade Co., Ltd. Xiamen parties without the "fear of the wind,"
trademark holders authorized to use the case, without authorization in April 2008 and
November production and sale of two batches of "fear of the wind" brand ventilation
equipment a total of 15 units, totaling 45,000 yuan illegally.
Tongan Commerce and Industry Bureau in the investigation, the production of the infringing
party acts of ventilation equipment, according to the relevant provisions of the Trademark
Law, decided to order the parties to correct violations and make the punishment a fine of
60,000 yuan.
Case 4 Car Foot and templates infringement

Casual brand car mat products, fined 50,000 yuan

2009 2 26, industry and commerce according to law enforcement officers Torch Garden
Xiang'an Cheung Yue Road, Building 61, second floor in the factory for inspection, Chen
found that the parties well in the company winning the extraordinary plastic products
factory finished product warehouse storing printed TOYOTA (Toyota), HONDA (Honda),
HYUNDAI (modern), VOLKSWAGEN (public), AUDI (Audi), MAZDA (Mazda), BUICK (Buick),
FORD (Ford), NISSAN (Nissan ), M
IT
SUBISHI (Mitsubishi) and MICNELIM (Michelin) and other trademarks of the English name and
logo of the plastic car mats and templates, the parties can not provide legal authority to
use that trademark and other materials, both by the Department of the unauthorized
inspection of its registered trademark counterfeiting products. Industrial and commercial
departments shall confiscate and destroy the infringing party to make plastic car mats 805
sets of templates 45, non-slip pad template 27 and a fine of 50,000 yuan penalty.
I am China Products writer, reports some information about fishing sinker mold , fishing
sinker molds.

BUSINESS LAW REPORT

ON
DESIGN ACT
INTRODUCTION

Liberalization has brought with it unlimited options for the Indian consumer who now
has numerous alternatives for any single product. This change has revolutionized the
Indian consumers outlook as also the sellers approach. No longer do the sellers have
to establish only their reliability and integrity in the market, but they have to also
appease the aesthetic senses of the consumer. More than ever before, sellers are
required to package and market their products in a manner which appeases the
consumer and which a consumer could recognize and relate to. Considering the huge
amount of capital and effort expended by manufacturers and marketers in establishing
the recognition of consumers through the presentation and appearance of their
products, it is essential that the law protect the designs that emanate from these efforts
of the manufacturers of goods.

Like other intellectual property rights, the right in a design is also an intellectual
property right. The object of the Designs Act is to protect the aesthetic appearance of
an article if it is original or novel. The law presumes that an aesthetic appearance is
the result of intellectual efforts. The protection given by the law relating to designs to
those who produce new and original designs is primarily to advance industries and
keep them at a high level of competitive progress. There has been a considerable
increase in the registration of designs. To provide more effective protection to
registered designs and to promote designs activity, in order to promote design element
in an article of production, it has become necessary to make the legal system of
providing protection to industrial designs more efficient. It is also intended to ensure
that the law does not unnecessarily extend protection beyond what is necessary, to
create the required incentive for design activity, while removing impediments to the
free use of available designs.

The Designs Act, 2000 is a consolidating and amending Act relating to the protection
of design. From the statements of the objects and reasons of the new Act, it appears
that the framers of the law became aware of the considerable progress in the field of
Science and technology, the changing scenario in the international trade and
globalization of Indian economy, which had taken place since the enactment of the old
Act in 1911, also made it essential for this law to be at par with the international
trends in design administration. As such, one of the objects of the new Act was to
ensure effective protection to registered designs. One of the objects was also to ensure
that law does not unnecessarily extend protection beyond what is necessary to create
the required incentive for design activity and one of the main objects was to remove
impediment to the free use of available design.

SALIENT NEW FEATURES OF THE DESIGNS ACT, 2000.

1. International classification based upon Locarno classification1 has been adopted

wherein the classification is based on articles, the subject matter of design. Under the
previous law a Design was classified on the basis of the material of which the article
was made.

2. A provision claiming priority from a Design application filed in any Convention

country has been introduced. India is a member of WTO, Paris convention and has
also signed Patent Co-operation Treaty. As a result members to these conventions can
claim priority rights.

3. The definition of Design under the new Act has been widened. Under the previous
law, the Design registration was granted only for the visual appearance of an article
which included shape, configuration pattern, and ornamentation whether in 2 or 3
dimensions. Under new law, a Design registration can now be obtained for new or
original features of shape, configuration pattern, ornamentation or composition of
lines or colours as applied to an article, whether in 2 or 3 dimensions or both.

4. A concept of absolute novelty has been introduced whereby a novelty would now
be judged based on prior publication of an article not only in India but also in other
countries. Under the previous law, the position was ambiguous.

1
5. A Design registration has been brought within the domain of the public records
right from the date it is physically placed on the Register. Any member of public can
take inspection of the records and obtain a certified copy of the entry. In the previous
Act, there was a 2-year confidential period post registration, which prohibited taking
inspection/certified copy of any entry in the records.

6. A Design registration would be valid for 10 years (from the date of registration
which is also the date of application) renewable for a further period of 5 years. Under
the previous law the validation period was 5 years which was extendable for 2 terms
of 5 years each.

7. A Design registration can be restored within a year from its last date of expiry.
Under the previous law, no provision relating to restoration upon expiration of the
Design registration was provided.

ESSENTIAL CHARACTERISTICS OF A DESIGN.

Those who wish to purchase an article for use are often influenced in their choice not
only by its practical efficiency but also by its appearance. 2 The physical appearance of
goods really means design. The appearance of an article is dictated by the design it
wears. The primary purpose of a design is to interest the aesthetic and visual senses of
a consumer with intent to induce him into purchasing the article, without the necessity
of having to reveal the identity of the manufacturer or the producer. Design must
necessarily mean something which determines the appearance of an article, or some
part of an article. Designs are applied to an article with the objective of ornamenting
the article. If a particular feature is so embossed on an article that it does not appeal to
the eye at all and is not capable of attracting a purchaser in any manner for the
purchase thereof, then such feature will not fall within the scope of a design.3

Design, is defined in Section 2 (d) of the Designs Act 2000 as follows:

S. 2(d) – 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; but does not include any trade mark as
defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise
Marks Act, 1958 or the property mark as defined in section 479 of the Indian Penal
Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act,
1957.

2
Samsonite Corporation v. Vijay Sales 1998 (18) PTC 372 [Del].

3
Corning, Incorporated, U.S.A v. Raj Kumar Garg, 2004 54 SCL 378.
Design primarily represents features of shapes, configuration, pattern, ornament or
composition of lines. Design does not imply the article but the features which are a
conception, suggestion or an idea of a shape.4 Such features should be applied to an
article, which in the finished article appeals to and are judged solely by the consumers
eye.

4
Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors 2002 (24) PTC
449 [Del]

If a design is not visible to the eye then it will not qualify for registration under the
Designs Act for the very reason that it would fail to influence consumers into
purchasing the article on which it is embossed. The eye should be the eye of an
average consumer and not that of an expert or an experienced / seasoned dealer.

For the purposes of registration under the Designs Act it is not of significance whether
the design has any utility and/or usefulness. Thus an important aspect of a design is
that it should have the ability of being the deciding factor for purchase of an article by
a consumer. If a consumer develops a positive perception of an article purely on the
basis of its outwardly features, irrespective of its utility, then such features would
definitely qualify for registration under the Designs Act. Similarly, a visual
characterization of an article which influences a person to purchase an article in
preference to other articles which are identical in function but differ in appearance,
such characterization would also meet the criteria of a design. If the features of a
design are dictated, caused or prompted solely by or attributable only to the function
which the article is required to perform, then such features cannot be registered as a
design, even though such features may also appeal to the eye. A design will not
protect any technical features of an article.

For a design to qualify for registration under the Designs Act it is important that the
design should also he new and original. The test for novelty and originality is
dependent on determining the type of mental activity involved in conceiving the
design in question. If the design is a mere trade variation of a previous design then the
designer could be said to have kept an existing design in view and made some
changes. There should be some original mental application involved when conceiving
a new design.

The introduction of ordinary trade variants into an old design will not make the new
design novel or original. Mere workshop improvements will not qualify for
registration under the Designs Act. The word original implies that the person had
originated something; that by the exercise of intellectual activity he had started an idea
which had not occurred to anyone before. Original would mean something that no
person had created earlier for any purpose whatsoever. New would imply something
which is not necessarily original but which has been applied to an article for the first
time. What is novel need not also be new. There may be a new arrangement of
features that may appeal to the eye.

SUBJECT-MATTER OF DESIGNS.

An article is distinguished not only by its utility but also by its visual appeal which too
usually play an important role in shaping the buyers preference for the article.
Therefore, the design of an article and even design of its packaging is important from
the commercial viewpoint.

Designs which are not new or original or have been disclosed to the public anywhere
in India or in any other country by publication or not significantly distinguishable
from known designs or combinations of known designs or comprise or contain
scandalous or obscene matter are not registerable under the Designs Act. A design can
be registerable only when it is new or original and not previously published in India.
Though the word publication has not been defined by the Designs Act, 2000, to
constitute publication, a design must be available to the public or it has been shown or
disclosed to some person who is not bound to keep it secret.

Publication can occur in two types

(i) Publication in prior document.

(ii) Publication by prior user.

Publication in prior document would result when the design has already been
published in a document which is easily available. The private or the secret use or an
experimental use of a design will not constitute publication by prior use. The
exhibition of a design or an article to which the design has been applied in an
industrial or other exhibition notified by the Central Government would not constitute
infringement of the design if prior notice of such exhibition is given to the Controller
of Patents and Designs and an application for registration is made within six months
of the date of first exhibiting or publication of the design.
The Delhi High Court has held that Publication means the opposite of being kept
secret. It is considered published if a design is no longer a secret. There is publication
if the design has been disclosed to the public or the public is put in possession of the
design. The disclosure even to one person is sufficient to constitute publication.

A design would be registerable if the pattern though already known is applied to a

new article. What is essential is that the design must be new with respect to the class
of article to which it has been applied. The novelty or originality is to be judged on the
evidence of experts in the trade. An expert who is aware of what is common trade
knowledge and usage in the class of goods to which the design is applied would be the
one entitled to pass the verdict on the novelty and originality. Colour may form a part
of design but the colour by itself cannot constitute a subject-matter of design.

PROCEDURE OF REGISTRATION OF A DESIGN.

The procedure for registration of a design is comparatively simple when compared to

procedure for registration of a patent or a trademark.

Briefly, the procedure consists of the following steps:

(1) Submission of application

(2) Acceptance / objections / refusal

(3) Removal of objections/appeal to Central Government

(4) Decision of Central Government

(5) Registration of the design.

Submission of application

The proprietor of the design has to file application for registration of the design.
According to section 5(1), the controller may on application made by any person
claiming to be the proprietor of any new or original design not previously published in
any country and which is not contrary to public order and morality, register the design
under the Act. The application is to be accompanied by the prescribed fee and in
prescribed Form and in prescribed manner.

The application under section 5 shall be accompanied by four copies of the

representation of the design and the applicant shall state the class in which the design
is to be registered. The applicant is also to file a brief statement of novelty with the:
application.

The Designs Act, 2000, which he claims for his design lays down 31 classes plus
miscellaneous class 99 of goods to which ornamental designs, etc., and which are
capable of being registered under this Act generally apply.

Acceptance/Objection

On consideration of the application if the Controller finds that the applicant fulfils all
the prescribed requirements, he shall register the designs. If on consideration of the
application any objections appear to the Controller, a statement of these objections
shall be sent to the applicant or his agent.

Removal of Objection/Appeal to the Central Government

The applicant has to remove the objection within one month of communication of the
objections to him failing which the application shall be deemed to have been
withdrawn. He may also apply to the Controller for being heard on the matter. When
the Controller refuses the application after the submission, he may directly appeal to
the Central Government whose decision is final.
Decision of the Central Government

The decision of the Central Government on the registrability of the design is final.

Registration of the Design

On acceptance of design filed in respect of an application, the Controller shall direct

the registration and publication of the particulars of the application and the
representation of the article to which the design has been applied, in the Official
Gazette. When published in the Gazette, the controller may select one or more views
of the representation of the design, which in his opinion would depict the design best.

(1) When the design is accepted, there shall be entered in the Register of Design, in
addition to the particulars required by the Act, the number of the design, the class in
which it is registered, the date of filing the application for registration in this country,
the reciprocity date, if any, claim for the registration, and such other matters as would
effect the validity or proprietorship of design.

(2) When such Register of Design is maintained wholly or partly on computer under
floppies or diskettes, such computer floppies or diskettes shall be maintained under
superintendence and control of Controller and in case of any dispute or doubt with
regard to information of designs, the information as contained in the back-up file or
master file shall be final.

(3) Where the accepted design is one in respect of which a reciprocity date has been
allowed, registration, the extension or the expiration of the copyright in the said
design shall be reckoned from such reciprocity date.

On the completion of the above procedure, the Controller shall grant a certificate of
registration to the proprietor of the design.

INFRINGEMENT OF A REGISTERED DESIGN AND REMEDIES UNDER

THE ACT.

Infringement of a copyright in design is termed as "Piracy of a registered Design". It

is not lawful for any person during the existence of copyright to do the following acts
without the consent or licence of the registered proprietor of the design. Section 22 of
the Designs Act, 2000, lays down that the following acts amount to piracy:
(1) 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.

(2) 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.

(3) 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.

In fact any unauthorized application of the registered design or a fraudulent or obvious

imitation thereof to any article covered by the registration for trade purpose or the
import of such articles for sale is a piracy or infringement of the copyright in the
design.

Fraudulent/Obvious Imitation:

A distinction is made between fraudulent and obvious imitation. The only common
factor between the two is that both should be imitations. Thus even in the case of
fraudulent imitation the design applied must be an imitation of the registered design.
In a fraud the imitation has been made with the intention to deceive another person
with the knowledge that what is being done is a violation of the other persons right.
Where, therefore, fraudulent imitation is established even if the imitation is rather
clumsy and not obvious, the Court will declare it as an infringement of copyright in
the design. There must be exact duplication, an imitation of the registered design.
Nothing less than imitation is sufficient to establish piracy.

Fraudulent imitation must mean If a man knowing that the pattern is a registered
design, goes and imitates it, and does that without sufficient invention on his own part,
that would be fraudulent imitation, if in fact it is an imitation (an exact copy of the
registered design).

Judicial Remedy

The judicial remedy for infringement of a registered design recommended in the Act
is damages alongwith an injunction. Section 22(2) stipulates remedy in the form of
payment of a certain sum of money by the person who pirates a registered design. A
suit in the appropriate manner for seeking the relief in the form of an injunction is also
recommended.

Jurisdiction of the Court

A suit under section 22 is to be instituted in a District Court or a High Court

depending upon the quantum of damages claimed. The provisions of this section do
not exclude action for passing off and for rendition of accounts. A person complaining
infringement of his design can certainly ask for accounts from the defendant to show
the profits earned by the defendant which would be the loss sustained by him which
he could claim as damages. A suit for injunction restraining infringement of registered
design and for rendition of accounts is, therefore, maintainable only when filed in the
appropriate court.

OVERLAPPING LEGISLATIONS: COPYRIGHT UNDER THE DESIGNS

ACT & COPYRIGHT ACT

The exclusive right conferred on a design is termed as copyright in design. This

should not be confused with exclusive right granted for literary and artistic work also
termed a copyright in the literary and artistic work. There may be certain designs
which can qualify for registration under both the Designs Act and the Copyright Act.
Copyright in an industrial design is governed by the Indian Designs Act 2000.

If a design is registered under the Designs Act, it is not eligible for protection under
the Copyright Act. In the case of a design which is capable of being registered under
the Designs Act, but not so registered, copyright will subsist under the Copyright Act,
but it will cease to exists as soon as any article to which the design has been applied
has been reproduced more than 50 times by an industrial process by the owner of the
Copyright or with his license by any other person. It would, therefore, follow that
those industrial designs which are not registerable under the Designs Act get
protection under the Copyright Act provided it comes within the scope of section 13
of the Act as original Artistic works.

A design capable of being registered means a design possessing when they were made
those essential characteristics which qualify them as designs. If such designs are, at
that time, used or intended to be used for the purposes of industrial reproduction, they
are not to qualify for Copyright under the Copyright Act. There is an overlapping area
of the applicability of the Designs Act and the Copyright Act but they cannot be
applied at the same time for protection of the same subject-matter.