• Oishika Banerji

Design holder and the associated rights: an insight


After obtaining registration under Section 5 of the Designs Act, 2000, the proprietor of designs is conferred with 'copyright in design' for a period of 10 years. According to Section 2(i) of the aforementioned statute, 'copyright in design' signifies an exclusive right to apply a design to an article in any class with which the design has been registered. The Delhi High Court while dealing with the case of Polymer Papers Ltd. v. Gurmit Singh (2002), interpreted Section 11 of the Designs Act, 2000 stating that the provision makes it clear that the 'copyright in design' could only be claimed on registered designs. After a design has been registered, the two rights that are made entitled to the registered proprietor are:

  1. Right to exclusive use of the registered design;

  2. Right to protect the design from infringement (which in the language of Design Act, 2000 means piracy of designs).

Grounds for piracy of design and the possible remedies available

Section 22 of the Designs Act, 2000 talks about piracy of registered design thereby laying down three acts which shall not be lawful to be carried out by any individual during the existence of copyright in design, they are:

  1. Design cannot be sold, or applied, or caused to be applied to any article without the license or written consent of the registered proprietor.

  2. Design cannot be imported for the purpose of sale without the consent of the registered proprietor.

  3. Fraudulent or obvious imitation, which is a resemblance of the registered design cannot be carried out without the consent of the registered proprietor.

The aforementioned provision also provides two legal remedies to the plaintiff or the registered proprietor which are provided hereunder:

  1. Damages: For each violation, a person found guilty of design piracy may be rendered responsible to pay an amount of rupees twenty-five thousand payable as a contract debt. However, as stipulated in Section 22(2), the total amount recoverable in respect of any one design shall not exceed rupees fifty thousand.

  2. Injunction: Section 22 (2)(b) allows the plaintiff to initiate a lawsuit for damages and an injunction. However, the plaintiff cannot seek both contract debt collection as well as injunction and damages under Section 22(2)(a).

Rights available to the defendant in case of piracy of design

The defences that the defendant can raise in an infringement suit are provided hereunder:

  1. The defendant can claim that the design of the plaintiff has not been registered.

  2. The defendant may set up defences to show that the plaintiff's design registration has to be cancelled as the same is not original by nature.

  3. The defendant may claim that the plaintiff approached the court without a bona fide intention.

  4. The defendant may claim that the plaintiff's design's registration period had expired.

  5. The defendant can show to the court of law that his or her design is also registered.




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