Infringement / Piracy of

copyright in Designs
 OBJECTIVES SOUGHT TO BE ACHIEVED
• Meaning of infringement and what constitutes
infringement/piracy of registered design
• To understand What kind of resemblance is actionable
as infringement
• To understand the meaning of fraudulent and obvious
imitation
• To know what are the remedies available for
infringement
• To know what are the defences available to the
defendant for infringement of registered design
 Infringement and remedies
What amounts to infringement of a design is- sale of a registered design for the purpose of
applying or cause to be applied, to import the registered design for the purpose of sale
knowing that the registered design or its imitation is not with the written consent of the
registered proprietor. Such unauthorised act is also termed as ‘piracy’ of a registered 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. Any unauthorised 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 in the design.
 Copyright Piracy in Designs
• Essentials
- During existence of copyright in design
- For commercial purpose as opposed to private and personal use.
Castrol India Limied Vs Tide Water Oil Co. Limited
Question of similarity between two products determination
Not necessary to break down product in to integers. Totality of
article should be considered . Totality observed from
representation of design as registered.
Test is not whether similarity in the product is causing confusion in
the minds of consumer but whether such similarity is sufficient to
destroy exclusive right of the user.
 Not every resemblance is actionable

• Dunlop Rubber Co. Vs Golf Ball Development.

If a design has in it a striking feature which
captures and holds the eye , which is the one
thing that strikes the eye when one looks at the
design, a design which otherwise may be like a
registered design but eliminates the striking
feature or alters it so that it is not recognisable,
in such case it seems to me it is impossible to say
that one is imitation of another.
• There must be obvious and fraudulent imitation
• The word imitation does not mean exact replica. Whether the
essential part of the base of the applicants claim for novelty in the
design form part of infringing design (Kemp Company Vs. Prima
Plastics)

• Whirlpool India Ltd V. Vediocon Industries Ltd.

Defendant by merely using some different colour scheme and putting
some different lines or having some different ornamentation but
imitating basic shape and configuration of plaintiff design i.e.
rectangular shape on one side and semi circular shape on the other side
with jettison panel for knobs for which plaintiff had registered designs .
Held :Defendant had imitated the Design
Obvious Imitation and Fraudulent Imitation

*Obvious – something that strikes at once as

being so like the original Design, The registered
design as to be almost unmistakable .
-resemblance to the original design apparent to
the eye looking in to the two.
*Fraudulent - Imitation which may be les
apparent than obvious imitation . Imitation
perceptible when 2 designs are closely scanned
 Rose Vs Pickavant and Co.
• Obvious imitation includes copying
consciously and Subconsciously. It happens
when it is apparent to the eye
• includes instances of fraudulent copying
• Why fraudulent imitation has been included
by legislature? To include imitation without
being obvious
 Cotton L.J. IN Graffon vs Watson
• If a man knowing the pattern is registered
design goes and imitates it and without
sufficient invention on his part that would be
fraudulent imitation.
 Remedies against Infringement/Piracy of
copyrighted design
• 2 alternate remedies provided under Section 22(2) of Designs Act.
The proprietor has to elect one
1. Section 22 (2)(a) provides that if any person acts in contravention
of section 22 , he shall be liable to pay the registered proprietor of
the design a sum not exceeding Rs. 25000 for every contravention
recoverable as a contract debt. But total sum recoverable in respect
of any one design shall not exceed Rs. 50000
2. Section 22(2)(b) provides that the proprietor may bring a suit for
recovery of damages for any such contravention , and for an
injunction against the repetition thereof.. If he succeeds , he will be
entitled to recover such damages as may be awarded by court and
restrain the defendant in terms of injunction grated by the court.
 Calico Printers Association Ltd Vs. Gosho
Kabushiki Kaisha Limited
Defendant has a right to ask the plaintiff to elect
between the remedies available to him under
section 22 (2) (a) and 22 (2) (b)
 Remedies Available
1. Interlocutory Injunction
2. Final Injunction
3. Damages
4. Account of profits
5. Delivery up or destruction
 1.Interlocutory Injunction
• Application filed under Rule 1 and 2 of order 39
C.P.C. During the pendency of infringement suit
Essentials for Interlocutory Injunction
A. Plaintiff make out a prima facie case
B. Show that balance of convenience lies in his
favour
C. Irreparable loss or injury if the remedy is not
granted.
 A.Prima Facie Case
• Whether there is bona fide contention between
the parties or a serious question is to be tried.
Escorts Construction Equipment Ltd. Vs.
Action construction Equipment Pvt Ltd
To establish a prima facie case , the party seeking
ad interim injunction should show that there is
credible dispute with respect to right of title which
it seeks to protect and it has real prospect of
succeeding in its claim at the trial .
 B.Balance of convenience
• Whether it would cause greater inconvenience
to the plaintiff if the interim injunction is not
granted than the inconvenience to which
defendant will be subjected if it is granted
plaintiff inconvenience is greater if refused
relief in comparison with inconvenience of
defendant when it is granted . Then balance of
convenience lies with the plaintiff
 C. Irreparable Loss or injury
• Whether the plaintiff would suffer irreparable loss and injury
if the prayer for grant of temporary injunction were refused.
• The 3 considerations must be conjointly satisfied
Rautela Auto Components (P )Ltd Vs. Jaspal Singh
Recent registration – whether injunction to be granted when
there is serious question about prior publication of the design.
Held : when there is serious disputed question on various
questions such as prior publication, lack of originality, trade
variation is used in a particular case , injunction will not follow
as a matter of routine.
Rotomac Pens Ltd. Vs Milap Chand Co.
Court held that damages were not adequate
remedy and to direct the respondent only to
furnish accounts to the appellant of its sale in the
circumstances was no protection against
infringement of copyright in the design at all
Metro Plastic Industries Vs. M/s Galaxy Footware
The court stated that all factors including the
ground of cancellation must be taken in to
consideration and decision must be made jusicially.
 2.Damages
• Damages = loss caused to the plaintiff by defendants wrongful conduct
-Practical method to assess it = basis of a reasonable royalty upon all
infringing article made and sold by the defendant.
-Alternatively- compensate the plaintiff for the loss suffered by him on
account of sale of infringing article.
-When plaintiff can not recover the damages = he has failed to mark the
articles in the prescribed manner denoting that the design was
registered.
Provided if plaintiff shows that he took all necessary steps to ensure
marking of article or that the defendant knew or had received notice of
existence of copyright he shall be entitled for damages
- Damage in case of innocent infringement - the designs Act does not
distinguish between innocent infringement and deliberate infringement
hence in case of innocent infringement also damages are recoverable
 3. Accounts of Profit
• The court can direct the defendants to
maintain an account of profits during the
pendency of the infringement suit
 4.Delivery Up/ Destruction
• Delivery up = ordering the defendant to deliver the
infringing goods to plaintiff.
• In India neither the designs Act 1911 nor Designs Act 2000
incorporated any provision for delivery up or destruction
However in
Calico Printers Association Ltd Vs. Savani &Co
It was held that section 53 (2)(a)and (b) of Designs Act 1911
did not specifically provide for delivery up and destruction .
But it did not have the effect of excluding equitable remedies
in respect of an infringement in copyright design. Hence
Court made order for delivery up
 Defences in Infringement Suit
• Section 22(3)of Design Act say that
“In any suit or any other proceeding for relief
under Sub Section 2 every ground on which the
registration of design may be cancelled under
Section 19 shall be available as a ground of
defence”
- Which means in a suit for infringement every
ground available for cancellation of design can be
used as defence for infringement
The Grounds mentioned under Section 19 for cancellation
of design are as follows.

i. that the design has been previously registered in India;

ii. that it has been published in India or in any other
country prior to the date of registration;
iii. that the design is not a new or original;
iv. that the design is not registrable under this Designs Act;
v. that it is not a design as defined under Section 2(d).
The above grounds can also be used as defence for
infringement/ Piracy of design
 Case Laws
Rotela Auto Components (P) Ltd vs. Jaspal Singh
Delhi High Court had observed that the
legislature in its wisdom by incorporating sub
section (3) of Section 22 of the Act has made
every ground , on which registration of design
may be cancelled is available as ground for
defence
 PREVIOUS YEAR QUESTIONS FROM THIS
TOPIC
1.What do you mean by piracy in copyright design ? What
remedies are available against the piracy of copyright
design? June 2017 and June 2015
Write meaning of design and meaning of piracy as per
section 22 + write remedies+ defences – as mentioned in
this slides )
2. ‘A ‘ and B manufactured biscuits A’s design was registered
B used an identical design embossed on the biscuits with
letter AB instead of letter AP which were embossed on A’s
Biscuits . Can A file suit for injunction ? Decide – June 2017