The Issue of Piracy Of Registered Designs
When talking of or denoting the significance of intellectual property rights as a whole, the aspect of unique identification plays quite a fundamental part within its ambit. Layout, pattern, appearance, or embellishment is crucial when signifying designs since it renders a product its distinct appearance which furthers opens up the avenue of registering it as well. Thereafter, further, 'design' has been defined by Section 2(d) in the Designs Act, 2000. The definition also specifies that design 'does not include any mode or principle of construction or anything which is in substance a mere mechanical device and does not include any trade mark' as defined under Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958 or how property mark has been defined in Section 479 of the Indian Penal Code or any artistic work as defined in Section 2(c) of the Copyright Act, 1957.
The Designs Act, 2000 and corresponding Designs Rules, 2001 which came into force in place of the earlier Act of 1911, administers the process of registration and protection of industrial designs in India. The Design Rules, 2001 was further amended by Designs (Amendment) Rules 2008 and Designs (Amendment) Rules 2014. The 2014 amendment introduces a new category of applicants as small entities in addition to that of natural persons, other than a small entity. The office of the CGPDTM has acquired the ISO 9001:2008 certification for the design application registration process.
Design, an essential intellectual asset, always stands prey to the possibilities of infringement. The sustaining legal provisions furnishing a protective enclosure in this scenario does fall short of remedies that can be put to work for stoping piracy and infringement consequentially. At this juncture, if we look at the role of registration of designs, it stands for confirming monetary returns and protection from piracy. Section 22 of the Designs Act, 2000 talks of piracy of the registered design in India. Three acts committed by someone other than a registered proprietor, that would amount to piracy of registered designs are: for a person for the reason of sale to apply or cause to be applied to any article in association to which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything that would sanction the design to be so applied; or import with the determination of selling, that too in the absence of the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and have applied to it, the design or any fraudulent or obvious imitation thereof; or knowing that the design or any fraudulent or identical imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article. But then if we again look at certain scenarios and case laws for instance the case of Kestors Ltd. v. Kempat Ltd., it was held that where a particular design has been registered even after lacking innovation and novelty because of its mode of construction or the application of some mechanical process, its copyright cannot be protected.
Section 22(2)(a) of the Designs Act furthers that if any person acts in violation of Section 22 of the said Act, he shall be liable to pay the registered proprietor of the design a fine not exceeding Rs. 25,000 for every such contravention that can be retrieved as a contract debt. Total sum recoverable for any one design shall not exceed Rs. 50,000. Then, as Section 22(2) (b) puts forth that the proprietor may bring a suit for the recovery of damages for such instances of the breach, and for an injunction against the repetition thereof. The plaintiff may seek an interlocutory injunction under Rules 1 and 2 of Order 39 of the Civil Procedure Code during the pendency of an infringement suit. The plaintiff, in association with an infringement suit, is allowed to recover damages on the grounds that he can establish the case of infringement. The damages are measured on the basis of loss suffered by the plaintiff for the defendant's wrongful conduct.