HOW YOU CAN PROTECT YOUR DESIGN BEING EXPLOITED?

The Designs Act of 2000 and the Design Rules, 2001 regulate the registration and protection of Indian designs. The purpose of the Designs Act, 2000 is to protect the appearance of original and new designs applicable to a particular article or product produced by an industrial process.

The ‘first to file’ system allows an innovator or owner of a design to apply for design registration as soon as the design is ready. This prevents the design from being pirated and guarantees the owner or inventor certain rights over that particular design.

We know that a design constitutes the ornamental and aesthetic aspect of an article, and it consists of 3-D or 2-D features such as the shape, patterns, lines or colours of the product. However, a design can also be explained as a drawing of a novel pattern, model, shape or configuration that is decorative and ornamental. It is common knowledge that a particular product's design influences the consumer to purchase it, while a less attractive product might go unnoticed.

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Thus, companies and inventors ensure that their article stands out in the category of similar products. In a market where copying or imitating almost every attractive design is on the rise, inventors or owners of the design must register their design and protect it from piracy and the aggressive competition prevalent in the market. If a design is registered, the artisan, creator or originator of an appealing design is not deprived of his true reward as others cannot apply the same design to their goods.

Upon registration, the registered design's proprietor has the exclusive rights to manufacture, sell, license or use articles embodying such design. However, this right can be infringed, and this infringement of copyright in design is termed as ‘piracy of a registered design’. It can be further explained as the application or imitation of a design to any article belonging to the same class of articles.

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The design has been registered for sale or importing such articles without the registered proprietor's written consent. To best understand the subject of design piracy, it is better to read Section 22 of the Designs Act, 2000. This provision safeguards the proprietor’s right to have a copyright in the design and labels certain acts done without the registered proprietor's consent as ‘piracy of registered design’.

According to Section 22 of the Designs Act, 2001, if copyright in any design is already registered, it will be unlawful for any person-

1. To apply or cause to be applied, to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof,
2. To import such articles for sale without the consent of the registered proprietor.
3. To publish or expose for sale that article.

The crux of the matter is that while determining the act of infringement, the features of the shape, the configuration, the pattern, etc., of the two designs must be considered because piracy of design can occur only when both the designs are similar to one another.

As mentioned before, design registration gives the proprietor of the registered design the exclusive rights to manufacture, sell, license, or use articles embodying such design. This further allows the design owner to file an infringement suit and protect such exclusive rights against third parties. It must be noted that if any person violates the copyright in a design, he or she is liable to pay the penalty not exceeding INR 25,000/- to the registered proprietor.  A civil action enforcing a registered design is filed before the District Court where –

i., the defendant resides, or

ii. the defendant conducts business, or

iii. the infringement has taken place.

Here, it is pertinent to note that civil remedies, including interim and permanent injunctions and damages, are provided by the design laws in India in cases of infringement. Further, the Act also directs the registered proprietor to mark the article with the word 'Regd.' or 'Registered' and the registration number because the design owner cannot claim damages if such a mark is absent from the article.

However, textile designs and articles made of charcoal dust are an exception to this rule. Furthermore, if an unregistered design has become distinctive due to long and continuous use, it may be protected under the common law tort of ‘passing off. But, to claim such a remedy, the design owner must establish that the design had become distinctive due to long and continuous use.

Additionally, it must be noted that a composite suit for two distinct causes of action – one for infringement of a registered design and the other for passing off – is maintainable because if the claim for design infringement is weak, the court can provide relief to the plaintiff in the form of passing-off action. It is important to note that a design is not registered under the Designs Act of 2000; such a design may be protected under the Copyright Act, 1957.

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However, protection under the Copyright Act of 1957 is limited as it expires once the design has been applied to more than 50 articles. This makes registration of the design under the Designs Act, 2000 more significant. There will be no legal right to take any action against the infringer under the provisions of the Act of 2000 if the design is not registered.

Lastly, it is worth knowing that the Patent Office does not get involved in any issue relating to the enforcement of rights procured by registration or exploitation and commercialization of a registered design.

Conclusively, the protection of design is significant for both small-sized enterprises and larger companies. Acquiring registration for the design is necessary because the exploitation of a registered design in an unauthorized manner can be prevented by filing a civil suit in a court of law.

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Author: Jinal Vyas