June 23 2008
Piracy of a registered design entails the existence of copyright in that same design. However, while the piracy of a registered design implies the infringement of copyright, the understanding of copyright under Indian design law is different from the right provided under copyright law.
Section 2(c) of the Designs Act defines ‘copyright’ as the exclusive right to apply a design to any article in any class in which the design is registered. This is in contrast to the meaning of ‘copyright’ under the Copyright Act 1957, which is an exclusive right, subject to the provisions of the act, to do or authorize the acts of reproduction, issuing copies, communication to the public, adaptation or translation in respect of a work or any substantial part thereof. According to Section 13 of the Copyright Act, works in which copyright subsists include original literary, dramatic, musical and artistic works. Copyright also subsists in cinematographic films and sound recordings.
Thus, ‘copyright’ under the Designs Act pertains to the vested exclusive right in relation to the application of any registered design of whichever class to any article which is different from, for example, the copyright in an artistic work. This is the exclusive right to reproduce the work, communicate the work to the public, issue copies of the work, make adaptations of the work or include the artistic work in any cinematographic film.
Legislation governing design piracy deems unlawful, for the purpose of sale, the application or any cause resulting in the application of a design or any fraudulent or obvious imitation thereof to any article in any class of article in which the design is registered. In Schreder SA v Twinkle Luminaries Pvt Ltd (CS(OS) 114/2006, High Court of Delhi) the plaintiff brought a suit for permanent injunction alleging piracy of its registered design. The designs were registered under the Designs Act 1911.(1)
The court concluded that the defendant was unable to establish its major contention that the designs in question were being utilized in India and abroad by various third parties. It also failed to produce any evidence to prove that it had been marketing the alleged infringing products with the same design prior to the plaintiff’s design registration.
The court opined that in a design piracy suit the onus is on the plaintiff to establish that the design used by the defendant is the same design registered by the plaintiff or a fraudulent imitation thereof. Emphasizing the definition of ‘design’ and the need to judge products solely by eye, the court conducted a visual comparison of the plaintiff’s design with the defendant’s design and concluded that the defendant’s product was an obvious imitation of the plaintiff’s product.
According to the court:
“The registered design numbers 182340 and 182343 relate to the plaintiff’s product, which is sold under the name Gema and has been set out at page 67 of the plaintiff’s documents. This forms part of the plaintiff’s catalogue, which has been denied by the defendant but the same has been proved by the affidavits by way of evidence. The said design when compared to the alleged infringing product of the defendant, which is a photograph of the defendant’s product, makes it clear that the defendant’s product is an imitation of the plaintiff’s design.”
Thus the production of cogent evidence by the plaintiff in support of the registration of its design as well as its piracy by the defendant led the court to issue a mandatory injunction in favour of the plaintiff.
In a typical suit of design piracy all grounds upon which the registration of a design may be cancelled are available as grounds of defence.
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