Injustice anywhere is a threat to justice everywhere. We are caught in an
inescapable network of mutuality, tied in a single garment of destiny. Whatever
affects one directly, affects all indirectly.
-Dr. Martin Luther King Jr. Letter from Birmingham Jail, April 16, 1963
Intellectual Property Rights have made an astonishing progress in both the
municipal law as well as the international laws. It has been noted that in the
world of IPR the true sense of litigation has been eventually progressed to its
levels. As denoting the history, past had made a line for litigation for
protection of IP rights, but eventually commencing of various evolutions lead to
the development in the litigation field of Trademarks and has successfully
expanded its boundaries to very extent of criminal and contractual obligations
too. Hence, the complexity and significance provided to further development for
litigation in Trademarks.
Intellectual Property covers within its ambit a wide array of laws relating to
Trade Marks, Copyright, Patents, Designs, Geographical Indications, Plant
Varieties and Semiconductor Integrated Circuits Layout-Design. There is wide
spread perception that protection of one's Intellectual Property is not as much
important as that of tangible property. Such assumption, however, does not hold
good in today's fast pace globalizing world.
To sum up the definition of
Intellectual Property as a mere creation of one's intellect would be doing
injustice to the numerous other entitlements which it brings with itself like
the goodwill, reputation and the identity which is attached to an Intellectual
Property like trademarks, copyrights etc. Losing one's intellectual property
owing to lack of initiation of appropriate civil and/or criminal action is a
heavy price to pay.
Litigation in Intellectual Property Rights (IPR) is India is quite diverse
because there are multiple Courts and different Courts have different practices.
Such varied practices require formulation of different strategies.
Here intellectual property infringement could be trademark infringement,
copyright infringement, patent infringement etc.
A trademark shall protect a sign which may be represented graphically and which
is capable of distinguishing the goods or services of one undertaking from those
of other undertakings. Trademarks may protect signs, in particular: words,
letters, numerals, abbreviations, graphical representations, combinations of
colours and the tints thereof, three-dimensional forms, shapes of the goods or
the packaging thereof, provided that they are distinctive, as well as the
combinations of all the above indicated signs. Also, A sign shall be capable
of distinguishing if it gives to certain goods or services, comparing them with
the identical or similar ones, a special, distinctive character.
Possession/Accession of Trademark Rights:In India, the rights for a Trademark is obtained by particularly three
- First Adoption and Long, Continuous, honest, bonafide, uninterrupted use
- Assignment of a registered or unregistered trade mark.
Investing your time and money to build a particular brand and seeing the same
brand name being used by another, robbing you of your hard-earned brand
reputation is not an agreeable state of affairs. Many a time, trademark (TM)
owners end up in protracted litigation because when the time was right, they did
not do trademark registration in India of their brand name. Trademark
registration process of the brand name is not a difficult task. A few simple
steps, as explained below and you would have the much-needed legal protection of
your brand name registration in India.
- Filing Trademark Application
After you are sure that your chosen brand name or logo is not listed in the
Trademark Registry India, you can opt for registering the same. The first step
is to file a trademark application at the Trademark Registry India. Nowadays,
filing is mostly done online. Once the application is filed, an official receipt
is immediately issued for future reference.
After a trademark application is filed, it is examined by the examiner for any
discrepancies. The examination might take around 12-18 months. The examiner
might accept the trademark absolutely, conditionally or object. If accepted
unconditionally, the trademark gets published in the Trademark Journal. If not
accepted unconditionally, the conditions to be fulfilled or the objections would
be mentioned in the examination report and a month's time would be given to
fulfill the conditions or response to the objections.
The step of publication is incorporated in the trademark registration process so
that anyone who objects to the registering of the trademark has the opportunity
to oppose the same. If, after 3-4 months from publication there is no
opposition, the trademark proceeds for registration. In case there is
opposition; there is a fair hearing and decision are given by the Registrar.
- Registration Certificate
Once the application proceeds for trademark registration, following publication
in Trademark Journal, a registration certificate under the seal of the Trademark
Office is issued.
(2) First Adoption and Long, Continuous, honest, bonafide, uninterrupted use:
What happens if you apply for a trademark application and get the trademark
registration, but later find that someone else has been using that same
trademark since before you had filed? Well, the principle of Priority in
adoption and use prevails over priority in registration holds good in this
context. It is a well accepted judicial principle that the rights of a prior
user of the mark are kept on a higher pedestal than even that of the proprietor
of a registered trademark. Prior user's rights will override those of a
subsequent user even though the subsequent user had been accorded registration
of its trademark.
Acknowledgement of Prior Use constitutes the following:
- the use of a mark identical or nearly resembling the registered
mark, by a third person, must be in relation to the goods and
services for which the first-mentioned mark is registered;
- the use must be a continuous use of the trademark in India;
- the trademark must be used by the proprietor in order to avail
- the mark must have been used from a date prior to the use of the
registered trademark or the date of registration whichever is
According to Section 34 of the Trademarks Act, 1999 the proprietor of
registered trademark or a registered user cannot interfere with the use of any
identical or similar mark if the person has been using the mark from an earlier
The section provides for protecting the vested rights preventing a proprietor or
registered user of a trademark from interfering with the honest use of an
identical trademark or a mark nearly resembling with the registered mark.
(3) Assignment of a registered or unregistered trade mark:
In the case of physical property such as land, every owner of a Brand or
Trademark has the right to sell, license, transfer, etc. its respective brand or
trademark in accordance with legal procedures. A brand or Trademark owner can
transfer his rights with respect to his trademark either by way of assignment or
In India, The Trade Marks Act, 1999 deals with assignment as well
licensing of trademarks. To put it summarily, in case of an assignment of a
trademark, there is a change in the ownership of the registered brand and in
case of licensing, the right in the trade mark continues to vest with the
original owner but only few restricted rights to use the brand/mark are given to
the third party.
According to Section 39 of Trademarks Act 1999, assignment of a trademark occurs
when the ownership of such mark as such, is transferred from one party to
another whether along with or without the goodwill of the business. In case of a
registered Trademark, such assignment is required to be recorded in the Register
of trade marks.
For unregistered Trademarks, the profoundness is mentioned under common law,
title to a trademark could be transferred only along with the goodwill of the
business in the goods
in respect of which the mark was used. This was based on the principle that a
trade mark is an indication of origin, and if you transfer the indication of
origin without transferring the origin itself, you are transferring a right, if
any right at all, to commit a fraud upon the public, and such right is not
If we see in the field of trademark remedies against Trademark breach is of
mainly two nature: (a) Civil & (2) Criminal. And a user who’s Trademark right
shas been infringed has statutory rights and sometimes also common law rights
which are not codified and accepted under common law remedy as it breaches
general essence of society, which resembles right and wrong morally and
Hence, describing the nature of Trademark litigation, lets focus on both the
In the part of Trademark, whether the mark is registered or not civil remedies
are provided, if the statutory and common law presence is breached, the civil
remedy is provided.
If we segregate it and talk based on validity of trademarks then, civil remedies
are taken into consideration into two parts:
(a) For Registered Trademark;
Section 29 of the Trade Marks Act prescribes the infringement of a trademark. In
simple words, when the exclusive rights of the owner of the registered Trademark
are violated, it is said to be an infringement of Trademark. The trademark
registration provides the exclusive rights to the brand name to the proprietor
i.e. the applicant. The certificate of trademark registration provides exclusive
rights to the proprietor to use the brand name for their business activity
falling under the class in which it is registered. In case, a third party uses
the brand name in course of trade without permission of the owner, it is the
violation of owner’s right and is called as the infringement of Trademark.
Civil Remedies for Trademark Infringement are available in following heads:
- In form of Injunction:
The action of an injunction is referred as stopping one person from doing
particular activity or task through the judicial process. With respect to
trademark infringement, it is restraining a person from unauthorised use of
the trademark. Through a temporary or permanent stay, the Court grants
protection to the trademark owner.
- In form of Damages:
Damages refer to the recovery of loss faced by the trademark owner through the
trademark infringement. The monetary value of financial loss or brand impairment
is recovered under this head. The amount of damages will be granted by the court
after considering the actual and anticipated loss of owner due to infringement.
The damages in Trademark law as a relief has increasingly assumed importance and
the main aim of the damages is to monetarily compensate.
- Custody of infringing materials:
This remedy suggests that the Court may ask the infringer to deliver all the
goods or products that are labelled with the brand name. Here, the Court may
direct the authorities to withhold the related materials accounts and destruct
all such goods. Where the trademark relates to services, i.e. a Service Mark is
infringed; the order may be passed to stop the provision of the services
immediately by the infringer.
The jurisdiction of to commence the proceedings against the infringer is also
decided in line with the provisions prescribed. Section 134 of the Trade Marks
Act, provides the jurisdiction of filing suit for infringement. The trademark
owner may have instituted infringement suit before District Court. The
appropriate District Court is the one falling within the local limits under
whose jurisdiction, the person instituting the suit, i.e. the owner of trademark
resides or carry on the business activities.
(b) For Unregistered Trademarks;
The Trademarks Act, 1999 (herinafter referred to as 'the Act) gives rights and
protection in the form of remedies to not only registered but also unregistered
trademarks. Even though a registered trademark is given a statutory remedy under
section 28 of the Act, but 27(2) of the Act also provides for remedy for an
unauthorized use of an unregistered trademark. Passing off is common law tort
which is most commonly used to protect goodwill that is attached to the
Passing off is basically when one person is passing off
his goods or services as that of another person. An action of passing off is
available to both registered and unregistered trademarks, but a suit for
infringement is available for only registered trademarks. While the objective
that is aimed to be achieved remains the same in both suits, still they are a
very different concept. Kinds of relief available in both the suits are
permanent injunction, interim injunction, damages or account of profits,
delivery of the infringing goods for destruction and cost of the legal
The burden of proof under a suit of infringement is not as high as it is under a
passing off action. While in an infringement suit, proving deceptive similarity
would be enough to establish that the infringer is liable, under an action of
passing off, the plaintiff will not only have to prove deceptive similarity but
also prove how the defendant's mark is likely to cause confusion among the
public and also has a likelihood of causing injury to plaintiff's goodwill.
is important for the plaintiff to prove how his mark has become distinctive to
his goods and people associate the mark to his own goods. The first step to
proving passing off is for the plaintiff to establish that the plaintiff was a
prior user of the mark.
As stated in Consolidated Foods Corporation v. Brandon &
Co. pvt Ltd
.,Priority in adoption and use of a trade mark is superior to
priority in registration. Supreme Court has also laid emphasis on prior use in
the case of Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd,
(2004) 6 SCC
The action is normally available to the owner of a distinctive trademark and
the person who, if the word or name is an invented one, invents and uses it.
If two trade rivals claim to have individually invented the same mark, then
the trader who is able to establish prior user will succeed. The question
is, as has been aptly put, who gets these first? It is not essential for the
plaintiff to prove long user to establish reputation in a passing off
action. It would depend upon the volume of sales and extent of
Another very important ingredient in a passing off action is Misrepresentation.
Misrepresentation can be both intentional and unintentional, what has to be seen
is whether the defendant is selling his goods in such a way that a common
ordinary man would confuse his good to that of the plaintiff's. As stated in the
of Telemart Shopping Network Pvt Ltd vsTvc Life Sciences Ltd & Anr
The word misrepresentation does not mean that the plaintiff has to prove any
malafide intention on the part of the defendant. What has to be established is
the likelihood of confusion in the minds of the public, (the word public
understood to mean actual or potential customers or users) that the goods or
services offered by the defendant are the goods or the services of the
Under a passing off action, establishing goodwill and harm caused or possible
harm that could be caused to the goodwill is a major ingredient. An unregistered
trademark, thus has a higher burden than a registered trademark. While under an
infringement suit, a legal right is already available with the plaintiff, a user
of an unregistered trademark doesn't have this inherent right. The House of
Lords in in case of Reckitt & Colman Ltd V Borden Inc
Reputation, Misrepresentation and Damage to goodwill the Classical
under a case of
passing off. These are the fundamental elements that have to be established by a
person. Passing off suits also face another drawback when it comes to filing of
While a suit for infringement as per section 134 of the Act can be filed
in District Court / High Court (enjoying Ordinary Original Civil jurisdiction
such as High Court of New Delhi, Mumbai, Kolkata or Chennai) wherein the
registered proprietor can file suit in the local limits of where actually and
voluntarily resides or carries on business or personally work for gain, during
the institution of the suit. But a suit of passing off has to follow the regular
rules of jurisdiction as per section 20 of Code of Civil procedure which means
that a passing off suit can only be filed in a District Court.
Thus, it is evident that an infringement suit has clear benefits over a passing
off suit. Even though the procedure of a passing off suit remains same for both
registered or an unregistered mark, burden of proof becomes higher when it is
for an unregistered mark as establishing goodwill and reputation becomes
difficult. A registered proprietor will always prefer filing an infringement
suit over passing off suit due to the reasons mentioned above. Allowing
unregistered trademarks, a certain extent of protection under the Act is a
relief to many users who otherwise wouldn't have been able to get any sort of
legal remedy for the violation of their marks.
Criminal offences relating to the use of false trademarks, false trade
descriptions and other forms of false marking on goods, and the sale of goods
bearing such false markings are dealt with in ss. 101 to 121 of the Trade Marks
Act 1999. These provisions are substantially the same as in the Trade and
Merchandise Marks Act 1958 except for the enhancement of punishment. As
indicated in the preamble, one of the objects of the new Act is to prevent the
use of fraudulent marks.
The nature of the offences and the penalties thereof are contained in Chapter
XII (ss. 101 to 121). For the purposes of this Chapter (except s. 107) trade
mark is defined in s. 2(1)(zb)(i). The expression trade description and
false trade description which are used in connection with the offences are
defined in ss. 2(1)(za) and 2(1)(i) respectively. For the definition of
deceptively similar, see s. 2(1)(h). Package is defined in 2(1)(q). Sections
81 and 82 deal with the stamping of textile goods and determination of the
character of such goods by sampling.
For the purposes of offences under Chapter XII of the Act, a trade mark includes
a registered as well as unregistered trade mark.
This is clear from the
definition in s. 2(1)(zb). An offence under s. 103 104 therefore relates to a
trade mark whether registered or unregistered The fact that a registered trade
mark has been abandoned as the registered proprietors have discontinued using
the mark will not absolve an accused from criminal liability because even if it
was abandoned it can only furnish a ground for making an application under s. 47
to have the mark removed from the register. It does not, however, entitle him to
use a trade mark whether it is current or has been removed from the register, or
has been abandoned, or even if it has never been initially registered but has
acquired the currency of a trade mark.
Under Section 156 of the Code of Criminal Procedure, 1973 the police have the
power to investigate cognizable cases. Sub section 3 Section 156 provides that
in case of refusal by the police to lodge a FIR or initiate criminal action, the
aggrieved can file a complaint before the Magistrate, procedure w.r.t. which are
laid down in section 190 of the Code of Criminal Procedure, 1973. The offences
under the Trade Marks Act, 1999 by virtue of the First Schedule table II of the
Code of Criminal Procedure, 1973, are classified as cognizable offences though
the same is not provided for in the said Acts.
The First Schedule table II-Classification of offences against other
laws-provides that Any offence which is punishable with imprisonment for 3
years ... is a cognizable, non-bailable offence and triable by the Magistrate of
First Class. Thus, an offence under the Trade Marks Act, 1999 can be
investigated and inquired by the police by mere registration of a FIR without
the adjudication by the Magistrate upon the issue. However, the police are
mostly reluctant in registering a FIR in respect of intellectual property
matters though the same is a right of the complainant. In respect of a criminal
action with regard to trade marks, as mentioned before, an opinion from the
registrar of Trade Marks is compulsory under Section 115(4) of the Trade Marks
The said section brings with it a number of practical and legal
implications which are that, firstly the Registrar of Trade Marks is not obliged
to give any such opinion under the Act. Secondly, the database made available to
the Registrar of Trade Marks is perfect, as it fails to recognize the device
marks or symbols or labels, which constrains the Registrar from giving a full
proof opinion owing to the non-availability of the entire database comprising
word marks as well as device marks or symbols or labels.
Owing to the same,
complaint before the Magistrate for issuance of summons and trial of the
infringers, is a convenient option, as the prerequisite of obtaining an opinion
from the Registrar of Trade Marks is not called for in case of filing of a
complaint before the Magistrate. Yet another benefit of taking recourse to
criminal action is that the same can be initiated against unknown persons as
well and revealing the identity of the infringers is not mandatory therein.
Plenty of times it happens that the identity of the manufactures and the
distributors of the infringing material is not known to the complainant and the
same operates as an obstacle in initiation of criminal action. The said issue is
addressed under Section 93 and 94 of the Code of Criminal Procedure, 1973 under
which one can request for initiation of a search and seizure proceedings against
known and unknown persons which is the underlying difference between a civil and
criminal action. The said proposition has been upheld in numerous judgments,
that is, 1983 PTC 230, 1986 PTC 352, 1982 PTC 411 and 1990 PTC 175 etc.
In recent years, the Indian courts have shown zeal and dynamism for the
effective protection of IP rights, particularly in respect of patents. In India,
patent infringement with respect to a patented invention without the prior
permission from the patent holder is a prohibited act. A patent holder can grant
a permission, if required, in the form of a license.
A patent infringement,
usually with respect to usage or sale of the patented invention, may vary by
jurisdictions. In several countries, a use is intended to be commercial in order
to constitute patent infringement.
Patent infringement means the violation of the exclusive rights of the patent
Patent rights are the exclusive rights granted by the Government to an
inventor over his invention for a limited period of time. In other words, if any
person exercises the exclusive rights of the patent holder without the patent
owner's authorization then that person is liable for patent infringement.
Sections 104-114 of the Patents Act, 1970 provide guidelines relating to patent
There are mainly two types of patent infringement depending on nature of
distinguishes and jurisdiction:(A) Direct Infringement
Direct infringement is the most apparent and common type of infringement. This
infringement includes marketing, sale or commercial use of a similar patented
item or invention that performs substantially identical functions. Direct
infringement is of two types - literal and nonliteral. Literal infringement
occurs when every component in the patent specification has been used in the
alleged infringing product/ device or process. Non-literal infringement occurs
when the infringing device or process may be similar or equivalent to the
claimed invention (performs substantially the same function, in substantially
the same way and to achieve substantially the same result.
(B) Indirect Infringement
It is when the infringement has happened, however the infringement is
facilitated by someone else. Indirect infringements are of two types:
- Inducted infringement – where one actively induces the other person to
infringe a patent by encouraging, assisting, aiding, inducing him/her to do
so. Patent infringement by inducement typically means that the inducer
willingly and knowingly aided in the infringement but may or may not have
specifically intended to violate a patent infringement
- Contributory infringement – where there is an intentional participation
/ assistance by one party in an act of infringement to the other party
making them vicariously liable for the acts of the infringer.
Unfortunately, in Patents only Civil Remedy is available and no criminal remedy
is available for the infringement of Patents Rights.
Section 104 of the Act provides that a suit for infringement cannot
be instituted in any court inferior to a District Court having jurisdiction to
try the suit other than High Court, in an appropriate situation. When an action
for infringement has been instituted in a high court and district court and the
defendants make a counter claim for revocation of the patents, the suit is
transferred to the High Court for decision because high court has the
jurisdiction to try cases of revocation. Further, section 104A provides for
burden of proof in case of suits concerning infringement.
The most effective way to enforce patent rights includes a civil
action seeking the following remedies:
A patent owner also has the following options to enforce its rights in India:
- Temporary injunction – The court can impose a temporary restraining
order on the defendant until final disposal of the civil suit or for such
time as stated in the court order;
- Permanent injunction – the court can issue a final order restraining the
defendant from carrying out activities constituting patent infringement in
- Damages or account of profits;
- delivery up or destruction of infringing articles; or
- legal costs.
- Anton Piller order – the court can appoint a local commissioner on the
request of the plaintiff or otherwise to hold or seal infringing materials or
accounts in the defendant’s premises;
- Mareva injunction – the court can restrain the defendant from
disposing of its assets within India until the trial ends or judgment in the
patent infringement action is passed; or
- John Doe order – the court can order search and seizure in respect of an
unknown defendant with the cooperation of the local commissioner and police,
if required, to raid any premises where infringing activities are suspected
to be carried out.
The copyright law can grant a person exclusive rights to control and use and
distribution of an original work. These rights include the right to reproduce or
make copies of the original work, the right to distribute copies of the work,
the right to publicly display the work, the right to perform the work and the
right to alter the work and make derivatives of the original work. The owner of
such exclusive rights is permitted to apply for registering his or her claim in
In India, copyright can be taken for original works that fall in the area of
(Section 13 of the Copyright Act):
- Musical works,
- Literary works like books and manuscripts,
- Cinematography films,
- Fashion designs,
- Artistic works like paintings, drawings etc.
- Software and other computer programs and compilations, etc.
Section 51 of the Copyright Act provides an exhaustive list of activities that
constitute infringement of copyright. The statute does not specify a distinction
between primary and secondary infringement per se. However, the provisions
suggest that the following acts can be categorised as primary infringement:
Any act that is the sole and exclusive prerogative of the copyright holder (or
its licensee), under the provisions of section 14 of the Copyright Act.
- Making infringing copies (reproducing copyrighted work) with the
intention to sell, make available for sale, publicly display or
offer to sell the infringing copies.
- Distributing infringing copies of a work for trading purposes.
Also, distributing infringing copies in a way that prejudices the
- Exhibiting infringing copies of work protected by copyright to
- Importing infringing copies into India, excluding copies used
for private and domestic use.
The statutory basis for secondary infringement can be found in section 51(1)(a)(ii)
of the Copyright Act. It stipulates that the act of permitting one’s place
(either place of business or of residence or any other venue, either digital or
in the physical world) to be used for communicating infringing work to the
public with a view to profiting from it constitutes infringement of copyright.
Remedies for Infringement of Copyright
(I) Civil remedy: According to Section 55 of The Copyright Act,
1957, where copyright in any work has been infringed upon, the owner of the
copyright shall be entitled to all such remedies by way of injunction, damages,
The most importance civil remedy is the grant of interlocutory injunction since
most actions start with an application for some interlocutory relief and in most
cases the matter never goes beyond the interlocutory stage.
The other civil remedies include damages - actual and conversion; rendition of
accounts of profits and delivery up.
This paper is confined to remedies available in common law jurisdictions and it
may well be that in civil law countries, the emphasis or focus is somewhat
- Interlocutory Injuctions
- Pecuniary Remedies
- Anton Piller Orders
- Mareva Injunction
- Norwich Pharmacal Orders
(II) Criminal remedy: According to Section 63 of The Copyright Act,
1957, the copyright holder can take criminal proceedings against the infringer,
in which there is a provision of at least six-month imprisonment, which may be
extended to 3 years and with a fine of Rs. 50,000, which may extend to 2 lakhs.
It further includes:
- Punishment through imprisonment which, under Indian law, may not be less
than six months but which may extend to three years;
- Fines which, under Indian law, shall not be less than Rs.50.000. and
which may extend to Rs.200,000.
- Search and seizure of the infringing goods including plates which are
defined as including blocks, moulds, transfers, negatives, duplicating
equipment or any other device used or intended to be used for printing or
reproducing copies of the work.
- Delivery up of infringing copies or plates to the owner of the copyright
Provided that if the defendant proves that at the date of the infringement he
was not aware and had no reasonable ground for believing that copyright
subsisted in the work, the plaintiff shall not be entitled to any remedy for the
whole or part of the profits made by the defendant by the sale of the infringing
copies as the court may in the circumstances deem reasonable.
Also it is provided that, any police officer, not below the rank of a
sub-inspector, may, if he is satisfied that an offence under section 63 in
respect of the infringement of copyright in any work has been committed, can
seize copies without a warrant to produce before Magistrate.
The purpose of copyright is to protect the rights of the owners of original work
and provide economic benefits to them for their creativity and diligence.
Although the registration of work is not necessary, but it is highly recommended
to register as soon as one's idea is transforming into writings as it will be
strong proof to be presented before the court in case of infringement.
Therefore, it is strongly advised to avoid plagiarism.
means only the features of shape, configuration, pattern, ornament or
composition of lines or colors applied to any article whether in two dimensional
or three dimensional or in both forms, by any industrial process or means,
whether manual, mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye; but does not
include any mode or principle of construction or anything which is in substance
a mere mechanical device.
A registered design is valid for 10 years from the date of application, which
can be renewed for another term of 05 years. The Design office is completing
the entire process within 10 to 12 months in some cases which are straight
forward cases of registration.
Essential requirements for the registration of design under the Designs Act,
- The design should be new or original, not previously published or used
in any country before the date of application for registration.
- The design should relate to features of shape, configuration, pattern or
ornamentation applied or applicable to an article.
- The design should be applied or applicable to any article by any
- The features of the designs in the finished article should appeal to and
are judged solely by the eye.
- The design should not include any trade mark or property mark or
- The Design should be significantly distinguishable from a known design
or a combination of known designs.
Design is one of the categories of IPR where the design system focuses on the
aesthetic feature of an article derived from its visual appearance. Relevant
aspects are the shape, configuration, surface pattern, the colour or line or a
combination thereof as applied to an article which produces an aesthetic
impression on the sense of sight.
This act protects the following designs:
- A design which is original or new.
- A design which is not previously disclosed to the public.
- A design which can be significantly distinguished from other known
designs or combination of known designs.
To understand piracy of design, it is better to have a combined reading of
Sections 22 and 11 of the Designs Act. While Section 11 authorizes a registered
proprietor to have copyright in the design, Section 22 safeguards such right.
A registered design is infringed by a person who, without the consent of the
proprietor of the design, applies, imports or publishes the design or any
fraudulent or obvious imitation thereof.
The aforesaid acts become piracy of a
design only in the following circumstances:
- It is committed during the existence of copyright in any design.
- The design is applied or imitated without the consent of the registered
- It is for the purpose of sale, and not for private or personal use.
- The articles must be in the same class in which the design is
Section 22(2) of the Act lists the liabilities of the infringer of a design,
which are impliedly the remedies available to the registered proprietor. The
registered proprietor has to elect one of the alternative remedies provided in
Section 22(2) (a) enforces the infringer to pay a sum not exceeding Rs.25,
000 for every contravention recoverable as a contract debt to the registered
proprietor. The total sum of such amount recoverable for one design should
not exceed Rs.50, 000. In the case of Niki Tasha Pvt. Ltd., v. Faridabad Gas
Gadgets Pvt. Ltd. Court held that, for an interlocutory injunction to be
granted, the plaintiff must be able to show that the balance of convenience
is in his favour. The court held that it would not grant an interlocutory
injunction unless it is satisfied that there is a real probability of the
plaintiff succeeding the suit.
Otherwise, the proprietor can elect to bring a suit for recovery of the damages,
and for an injunction against repetition, as under Section 22(2) (b). Then, the
infringer is liable to pay such amount as awarded by the court and is restricted
by injunction respectively. In the case of Good Earth v. Krishna Mehta, the
court decided that even the old designs which are applied to a new article
should be protected. It interpreted the term original as which includes designs
which are old but new in its applications…… In case, both the designs are
registered, then the courts take a different approach by giving priority to
the similarity of appeal and period of usage, which would be the appropriate
The ratio behind this is to make the infringer liable for the loss suffered by
the registered proprietor and to ensure a fair return on the proprietor’s
investment. However, to claim the damages, the registered proprietor is required
to mark his articles in some manner denoting that the design is registered and
to take all steps to ensure the marking of the article.
Intellectual property is an important asset and must be protected. From the
above detailed discussion it can be conclude that protection of one's
intellectual property is the need of the hour and the most effective remedy is
initiation of criminal action against the infringement of intellectual property
rights which has an edge over civil remedy. Further, Criminal Remedies are been
also excreted into equal rights.
At the end it sustains the very principal of rule of that the law eventually
protects the rights and provides equal remedy for the presentation of the same
and hence the welfare state is achieved. IP laws in India are governed and
protected under the Patents Act, 1970; Trademarks Act, 1999; Copyrights Act,
1957; Designs Act, 2001 etc. Civil and Criminal remedies mentioned under these
acts are of utmost importance for the IP rights enforcement.
In this context, the principal function of the judiciary is to provide legal
remedies against infringement of personal and property rights of persons.
Infringement of intellectual property rights is considered as tortious invasion
of property. The courts in India have the power to grant reliefs in cases
pertaining to the violation and/or infringement of intellectual property rights.
The judiciary not only does the adjudication of the intellectual property
matters but it also interprets several IP statutes for better understanding.
The various IP laws in India mention the provisions of civil and criminal
remedies for IP rights enforcement. These civil and criminal remedies are
distinct and independent. Also, they can be availed simultaneously. Hence, the
IP law is continuously changing and updating in order provide the remedies and
reliefs to the victims of infringements of their IP rights, and litigation works
are increasing day by day and need for statutory provisions in order to conclude
them is prayed.
- Pinto vs Badman (1891)8 RPC 181
- Consolidated Foods Corporation v. Brandon & Co. pvt Ltd, AIR 1965 Bom 35
- Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd, (2004) 6 SCC 145
- Telemart Shopping Network Pvt Ltd vsTvc Life Sciences Ltd & Anr, Delhi
High Court CS(COMM) 115/2016
- Reckitt & Colman Ltd V Borden In,c 1 All E.R. 873
- Anton Piller AG vs Manufacturing Processes  Ch55
Authentication No: AG021710888312-5-820