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Litigation in Intellectual Property(IP) Laws

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

Abstract:
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.

Introduction:
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.

Trademarks

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 provisions:
  1. Registration
  2. First Adoption and Long, Continuous, honest, bonafide, uninterrupted use
  3. Assignment of a registered or unregistered trade mark.

(1) Registration

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.
     
  • Examination
    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.
     
  • Publication
    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:
  1. 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;
  2. the use must be a continuous use of the trademark in India;
  3. the trademark must be used by the proprietor in order to avail the protection;
  4. the mark must have been used from a date prior to the use of the registered trademark or the date of registration whichever is earlier.
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 date.

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 by licensing.

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 recognized.[1]

Trademark Litigation

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 ethically.

Hence, describing the nature of Trademark litigation, lets focus on both the perspectives;

Civil Remedies:

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:
  1. 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.
     
  2. 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.
     
  3. 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 unregistered trademarks.

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 proceedings

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.

It 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[2].,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 145[3]

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 advertisement.

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[4]:

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 being 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 plaintiff.

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[5] called Reputation, Misrepresentation and Damage to goodwill the Classical trinity 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 suits.

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 Remedies

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 Act, 1999.

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.

Patents

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 holder.

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 infringement.

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:
  1. 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
  2. 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.

Patent Litigation

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:
  1. 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;
     
  2. Permanent injunction – the court can issue a final order restraining the defendant from carrying out activities constituting patent infringement in India;
     
  3. Damages or account of profits;
     
  4. delivery up or destruction of infringing articles; or
     
  5. legal costs.

A patent owner also has the following options to enforce its rights in India:
  • 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.

Copyrights

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 the work.

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.
  • Performances,
  • 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:

Copyright Litigation

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 copyright holder.
  • Exhibiting infringing copies of work protected by copyright to the public.
  • 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, & accounts.

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 different.
It includes:
  1. Interlocutory Injuctions
  2. Pecuniary Remedies
  3. Anton Piller Orders[6]
  4. Mareva Injunction
  5. 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:
  1. Punishment through imprisonment which, under Indian law, may not be less than six months but which may extend to three years;
  2. Fines which, under Indian law, shall not be less than Rs.50.000. and which may extend to Rs.200,000.
  3. 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.
  4. 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.

Design

Design 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, 2000:
  • 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 industrial process.
  • 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 artistic works.
  • 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.[7]

This act protects the following designs:
  1. A design which is original or new.
  2. A design which is not previously disclosed to the public.
  3. A design which can be significantly distinguished from other known designs or combination of known designs.

Design Litigation

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 proprietor.
  • 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 registered.

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 this section.

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 method.

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.

Conclusion
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.

End-Notes:
  1. Pinto vs Badman (1891)8 RPC 181
  2. Consolidated Foods Corporation v. Brandon & Co. pvt Ltd, AIR 1965 Bom 35
  3. Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd, (2004) 6 SCC 145
  4. Telemart Shopping Network Pvt Ltd vsTvc Life Sciences Ltd & Anr, Delhi High Court CS(COMM) 115/2016
  5. Reckitt & Colman Ltd V Borden In,c[1990] 1 All E.R. 873
  6. Anton Piller AG vs Manufacturing Processes [1976] Ch55

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