175B083 Mahesh P S 28 January 2021
The intellectual assets developed by these enterprises are vulnerable and stand prey to infringement. Though there are many strict provisions in IP laws dealing with infringement issues but they are not capable enough for protecting the intellectual assets. Industrial Design, has been serving as a secondary source for protection of products made by an enterprise on the basics of their appealing nature and novelty. These are granted for a period of 10 years from the date of filing and are further renewed for a period of five years accordingly. The main intension behind the registration of the design is to gain monetary value and protection. The monetary gain and protection are both hampered once the design is infringed by another party. To keep a check, the Indian government recently announced its National IPR policy, which compliant with the World Trade Organisation's agreement on Trade Related aspects of IPRs (TRIPS) and moreover the policy also has been keen upon increasing awareness for generation and effective enforcement of IPR, besides encouragement of IP commercialisation through various incentives. The IPR policy mainly highlights the issue of infringement in Patents, design and Trademark and the steps being taken by the authority to stop the practise of infringement or piracy in Indian jurisdiction respectively1.
Design is defined as "drawing or the deception of an original plan for a novel pattern, model, shape, configuration, that is chiefly decorative or ornamental."
The proprietor of the registered design has the exclusive rights to sell, make, license or to use articles embodying such design. In Design Act, 2000, Section 22 actively deals with the piracy of the registered design in India. According to the law, the Piracy of design is considered for any person:
Taking into consideration the above stated section it would not be lawful to apply for a registered design, or a fraudulent or obvious imitation of such, to an article or to import, publish or expose an article to which such a design has been applied in the same class of articles in which the design is registered, without the consent from the registered owner. In response to this the said section also highlights provisions for one who acts in contraventions of this section which includes filing suit to recover a nominal sum from the infringer as a contract debt or seeking damages and an injunction against misuse of the design.
In the Piracy of registered design, every resemblance doesn't seem to be the action of infringement or imitation. An obvious imitation is, one where immediately strikes another design as being so similar to the original registered design, to be almost impossible to differentiate. The most common method to identify infringement as stated in (Veeplast v Bonjour, 2011): the two products need not be placed side by side, but rather examined from the point of view of a customer with average knowledge and imperfect recollection. The main consideration is whether the broad features of shape, configuration and pattern are similar to one another2.
Further as per s. 19 of the Design Act, 2000 which provides a provision to a registered proprietor for cancellation of registration of design on the various grounds such as novelty etc. All grounds available to a person seeking cancellation may be adopted as a defence in infringement proceedings. In Steelbird v Gambhir (2014)3 the Delhi High Court upheld the defendants' plea that the design was neither novel nor original and thus it is not eligible for protection under the design law. The court vacated the injunction.
In the case of Dabur India Ltd. v. Rajesh Kumar and Ors  4 the Delhi high court has raised the questions against the frivolous Design litigation. The Court in the case seems to have given due regards to all the aspects appended to the use of the bottle's design in question and going beyond the tenets of design law, the Court has taken into consideration practicalities mainly.
In Marico v Raj Oil (2008) 5 the court held that caps were articles as defined under the Designs Act and were "capable of being made and sold separately". However, an injunction in this instance was refused, since the rival caps were dissimilar.
In Troikaa v Pro Labs6 (2008) the defendant was restrained from manufacturing, marketing and using tablets that were similar in shape and colour to the plaintiff's tablet, as it had registered the shape and configuration under the Designs Act.