Developing and creating new designs require creativity as well as a monetary investment. Therefore, the individuals expect to have exclusivity over the rights, which are provided by the law. Registration of designs provides exclusive rights over creation to the creator and excludes unauthorized use by third parties. Registration of designs and the procedure to be followed for registration is laid down in Chapter II of the Designs Act, 2000.
To get a design registered, an application is made to the Controller of Designs under Section 5.
The application should carry along four copies of representation of the designs, and such copies should be signed and dated by the applicant or his agent. The class under which the design is to be registered is also to be mentioned. For registration under a separate class, a separate application is to file containing a statement of novelty. For a design to be registered, all the essentials mentioned under Section 4 are to be complied with. Any person who is the proprietor can get the design registered. The term proprietor has been defined under Section 2(j). The section reads as follows: “proprietor of a new or original design,
- where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed;
- where any person acquires the design or the right to apply the design to any
article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and
- in any other case, means the author of the design; and where the property in or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.”
A design can be registered for 15 years in total. Initially, it can be registered for 10 years and can be extended for 5 years by paying Rs. 2000 to the Controller. This fee should be paid before the expiry of the ten-year period.
PIRACY OF DESIGNS
The very name “design piracy” has been called a misnomer, clever labeling of certain lawful acts with the stigma of bloodshed and robbery on the high seas. Piracy of a design means the application of a design or its imitation to an article without the consent of its proprietor is piracy of that design. Section 22 of the Designs Act, 2000 deals with piracy. To understand piracy of design in a better way, a conjoint reading of Section 22 and Section 11 is required.
Section 11(2) reads as: “When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright/ best copyright lawyers in delhi in the design during ten years from the date of registration.”
Under this section, piracy is defined as: “During the existence of copyright in any design it shall not be lawful for any person—
- for the purpose of sale 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, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
- to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof;
- knowing that the design or any fraudulent or obvious 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.”
Section 11 gives the proprietor an exclusive right over his design and Section 22 provides safeguards against violation of that right by third parties.
Under Section 22, “fraudulent or obvious imitation” of a registered design/Design registration lawyers in India amounts to piracy of the design. It is different from the “reproduction of work or a substantial part there of” test of copyright infringement. The test of “fraudulent and obvious imitation” declares that the similarity or difference between the two designs must be adjudged from the standpoint of a “customer with average knowledge and imperfect recollection”. In case of fraudulent imitation, the copying must be done with the intention of deceiving the other person and with the knowledge that the imitation would violate another person’s right.
REMEDIES AGAINST PIRACY OF DESIGNS
Cancellation of Design
Section 19 of the Designs Act, 2000 provides for cancellation of design anytime during the subsistence of the design registration, any person can seek cancellation of the same by filing a Petition before the Controller, on the following grounds for Cancellation of design registration:
- that the design has been previously registered in India; or
- that it has been published in India or in any other country prior to the date of registration; or
- that the design is not a new or original design; or
- that the design is not registrable under this Act; or
- that it is not a design as defined under clause (d) of section 2
Section 22(2) provides that any fraudulent or obvious imitation of a registered design without the consent of the proprietor is unlawful and also prohibits the import of such material which closely resembles a registered design. The section provides that in a civil case compensation payable shall not exceed Rs. 50,000/- in respect of infringement of one registered design.
The compensation payable is statutorily limited; this becomes a good ground for seeking an interim injunction even before the commencement of trial.