Infringement and

UNIT 3 INFRINGEMENT AND REMEDIES Remedies

Structure
3.1 Introduction
3.2 Learning Objectives
3.3 Enforcement of Design Rights
3.3.1 Analysis on Imitation of Design
3.3.2 Impact of Infringement of Designs on the Right Holder
3.3.3 Defences Available to the Infringing Party
3.4 Indian Cases on Infringement and Remedies
3.4.1 Samsung Electronics Co. Ltd. vs. Kapil Wadhwa & Ors. (2018)
3.4.2 Bata India Ltd. vs. Chawla Boot House & Anr. (2012)
3.4.3 N.R. Dongre and Ors. vs. Whirlpool Corporation and Anr. (1996)
3.4.4 Starbucks Corporation vs. A.H. Shah and Ors. (2017)
3.5 Piracy of a Design
3.6 Penalty for the Piracy of a Registered Design
3.6.1 Civil Remedies
3.6.2 Criminal Remedies
3.6.3 General Remedies
3.7 Let Us Sum Up
3.8 Keywords
3.9 Bibliography and Further Reading
3.10 Self-Assessment Exercises
3.11 Answers / Hints to Check Your Progress

3.1 INTRODUCTION
Dear Learner,

As of now we have covered three areas related to Industrial Designs in this

Block viz Scope of Industrial Design Protection, Registration of the Design
and Rights of Registered Designs. In this unit we will discuss the
infringement cases and remedies related to the same.

Infringement of an industrial design occurs when someone uses a design that

is substantially similar or like a registered design without the authorization of
the registered owner. The Designs Act also provides remedies to the owner of
a registered design in case of infringement.

Remedies: In case of infringement of registered industrial design, the

registered owner has the following remedies available under the Designs Act,
2000:
 Damages or Account of Profits
 Injunction
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Industrial Design  Delivery Up and Destruction
 Costs
 Anton Piller Orders

Box 3.1 Infringement and Remedies

Infringement: Misuse of the design without consent.
Remedies: Rules to safeguard registered designs.

3.2 LEARNING OBJECTIVES

After reading this unit, you will be able to as far as
a) Knowledge and Understanding is concerned:
 Understand the Infringement and Remedies available as per Designs
Act 2000.
 Describe the condition in which these remedies can be availed.

b) Practical and Professional Skills is concerned:

 Differentiate between Infringement and Remedies
 Discuss the Indian real-life cases of Infringement of Designs

3.3 ENFORCEMENT OF DESIGN RIGHTS

Enforcement of industrial design rights under the Design Act 2000 in India
works as follows:

Figure 3.1: Enforcement of Design Rights

1. Design Registration: To enforce industrial design rights, the first step is
to register the design with the Design Office under the Indian Patent
Office. The registration process involves filing of the application for the
registration of design along with the required documentation and fees.

2. Validity and Duration: The industrial design is protected once

registered for 10 years from the date of registration, which can be
extended further for an additional period of five years but not exceeding
156 for a total protection duration of fifteen years.
3. Exclusive Rights: The sole right to produce, market, distribute, import, Infringement and
Remedies
or utilise the items on which the industrial design is used belongs to the
registered owner of the design. This means that others cannot use the
registered design without obtaining permission or a license from the
owner.

4. Enforcement: If someone infringes on your registered industrial design

rights, you have the right to take legal action to protect your rights. This
may involve:

 Cease and Desist: The infringing party or infringer can be issued a

cease-and-desist letter by the owner of the registered design or
registered proprietor asking them to stop using the design and maybe
making restitution for any harm done.
 Legal Action: If the infringer/violator does not stop the act of
infringement, the owner may file a lawsuit in a court of law but not
below the District Court. This could lead to a lawsuit for design
infringement.
 Remedies: If the court finds in favour of the design owner, remedies
could include injunctions (to stop further infringement), damages
(monetary compensation for losses suffered due to infringement),
and legal costs. However, if the registered proprietor fails to mark an
article, with the words “REGISTERED or REGD or RD, he shall not
be entitled to recover any penalty or damages in respect of any
infringement of his copyright in the design unless he proves that he
took all proper steps to ensure the marking of the article, or unless
he proves that the infringement took place after the alleged infringer
knew or had already received a notice of the existence of copyright
in the Design.

 Customs Recordation: Design owners or proprietors can also

record their design rights with the customs authorities to help
preventing the importation of counterfeit or infringing products.

Activity 1: Select any product and discuss with your friend about the
enforcement of the design rights?
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Check Your Progress 1
Note: a) Write down your answers below.
b) Answers at the end of the unit.
1. Differentiate between Infringement and Remedies.
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2. State enforcements related to Registered Design Rights?
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3.3.1 Analysis on Imitation of Design

Figure 3.2: Analysis on Imitation of Design

The Act aims to encourage innovation by granting creators of original

designs exclusive rights to their designs for a specified period, thereby
preventing unauthorized copying or imitation. Let's delve into how the
Designs Act addresses imitation of designs and its implications.
1. Prohibition of Imitation: The Designs Act prohibits the imitation of
registered designs. Section 22 of the Act states that any person who,
without the consent of the registered proprietor, makes, sells, imports, or
applies any article to which the design has been applied, or does anything
that would cause such an article to be made, sold, imported, or used, can
be held liable for design infringement.
2. Registered Designs: For a design to be protected under the Designs Act,
it must be registered with the Design Office of the Indian Patent Office.
Once registered, the owner of the design obtains exclusive rights to use
or apply the design to the article in a class in which the design is
registered and prevent others from imitating it. Registration is typically
valid for a period of ten years, which is renewable for further period of
five years.
3. Scope of Protection: The scope of protection covers the specific design
as registered. This means that any direct imitation or copying of the
registered design is prohibited. However, minor modifications or
changes to the design that result in a substantially different appearance
may not be considered infringement.
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4. Design Infringement: To establish design infringement, the following Infringement and
elements generally need to be proven: Remedies

 The design is registered.

 The defendant's article is substantially similar to the registered design.
 The defendant's article falls within the scope of protection of the
registered design.
5. Defences: Defendants facing design infringement allegations can present
certain defences, such as:
 Prior Publication: If the impugned design was published in India or
in any other country before the priority date of registration, it may
not be considered an infringement.
 Independent Creation: If the defendant can prove that they have
independently created the design without copying the registered
design, they may have a defence.
 Non-ornamental Function: If the design is primarily dictated by
the function of the article, it may not qualify for design protection.
 Not New or Original or not registerable: If the design is not a new
or original or the design is not registrable under this Designs Act,
can also be a defence.
6. Remedies: In case of design infringement, the registered proprietor can
seek remedies such as injunctions, damages, and accounts of profits. The
court can also order the infringing articles to be seized or destroyed.
7. Challenges and Limitations: Enforcement of design rights can be
challenging due to factors like the difficulty in proving substantial
similarity, the need to monitor the market for potential infringing
products, and the potential for litigation costs, etc.

3.3.2 Impact of Infringement of Designs on the Right Holder

The impact of such infringement on the right holder or proprietors can be
significant and can lead to various consequences:

Figure 3.3: Impact of Infringement of Design

1. Financial Loss: Infringement of designs can lead to financial loss for the
right holder. The infringing party might be producing and selling
products that incorporate the protected design, thereby diverting potential
customers and revenue away from the rightful owner.
2. Market Reputation: If the infringing products are of poor quality or
imitated or do not meet the standards associated with the original design,
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Industrial Design it could negatively impact the market reputation of the original design
and its owner. Consumers might associate the inferior products with the
original designer, damaging their brand image or reputation.
3. Loss of Control: Infringement results in the loss of control over how the
design is used. The infringing party might alter the design, combine it
with other elements, or use it in ways that the original designer would
not approve of. This loss of control can harm the integrity and
uniqueness of the design.
4. Competitive Advantage: The original design might have provided the
right holder with a competitive advantage in the market. Infringement
can erode this advantage by flooding the market with similar designs,
diluting the uniqueness and originality of the design.
5. Legal Action and Costs: The right holder has the option to take legal
action against the infringing party. Legal proceedings can be time-
consuming and expensive. The right holder would need to invest
resources into pursuing legal remedies, such as filing a lawsuit, gathering
evidence, and hiring legal representation.
6. Cease and Desist Orders: The right holder can seek cease and desist
orders from the court, which could compel the infringing party to stop
using the registered design and potentially pay damages for the
unauthorized use.
7. Compensation and Damages: If the right holder successfully proves
infringement in court, he may be entitled to compensation or damages.
This can include actual damages suffered due to the infringement, as
well as any profits that the infringing party gained from the unauthorized
use of the design.
8. Licensing Opportunities: The right holder might have planned to
license the design to other parties for use in exchange for royalties.
Infringement can disrupt these potential licensing opportunities and
prevent the right holder from fully benefiting from their intellectual
property.

3.3.3 Defences Available to the Infringing Party

160 Figure 3.4: Defence Available to the Infringing Party

The Indian Designs Act, 2000 deals with the protection of industrial designs. Infringement and
Remedies
If a person is accused of infringing someone else's registered design, he
might have a few defences available to him:

1. Invalidity of the Registered Design: The registered design itself may be
challenged by the party accused of infringement. They might argue that
the design shouldn't have been granted registration due to reasons such
as lack of novelty or originality, or that the design is not eligible for
protection under the Act.

2. Prior Publication or Public Knowledge: If the design was publicly

known or published before the priority date of registration, the alleged
infringer might argue that the design did not meet the criterion for design
protection—that it was not novel or unique—at the time of registration.
3. Independent Creation: If the alleged infringing party can prove that
they have independently created the design and had no knowledge of the
registered design, they might be able to defend themselves by showing
that they didn't intentionally copy the registered design.

4. Exhaustion of Rights: The alleged infringer might argue that the rights
of the registered design owner are exhausted once the design-embodied
article is lawfully sold or put into the market. This could limit the
registered design owner's ability to act against subsequent sales.
5. Non-Infringement: The alleged infringer might claim that their design
does not infringe upon the registered design in question. This defence
would involve demonstrating substantial differences between the two
designs that would prevent them from being considered substantially
similar.

6. Experimental Use: If the alleged act of infringing use was for
experimental or research purposes, this might provide a defence,
although the scope of this defence can be limited, and specific conditions
need to be met.

7. Lack of Commercial Use: If the alleged infringing design was not used
for commercial purposes but rather for personal use, it might be argued
that this falls outside the scope of design infringement.

8. Acquiescence or Consent: If the registered design owner knew about

the alleged infringement but did not take legal action for an extended
period, the alleged infringing party might argue that the owner has
acquiesced or consented to the use.

3.4 INDIAN CASES ON INFRINGEMENT AND

REMEDIES
3.4.1 Samsung Electronics Co. Ltd. vs. Kapil Wadhwa &
Ors. (2018)
This case involved a dispute over the design of a mobile phone cover.
Samsung alleged that the defendant was manufacturing and selling mobile
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Industrial Design phone covers that infringed on Samsung's registered design. The Delhi High
Court granted an interim injunction in favor of Samsung, restraining the
defendant from manufacturing, selling, or offering for sale any mobile phone
covers that were identical or deceptively like Samsung's registered design.

3.4.2 Bata India Ltd. vs. Chawla Boot House & Anr. (2012)
In this case, Bata India alleged that the defendant was manufacturing and
selling footwear that infringed upon Bata's registered design. The Delhi High
Court held that the defendant's footwear was deceptively like Bata's design
and amounted to infringement. The court issued an injunction restraining the
defendant from using the infringing design and awarded damages to Bata.

3.4.3 N.R. Dongre and Ors. vs. Whirlpool Corporation and

Anr. (1996)
This case involved the design of a washing machine. Whirlpool alleged that
the defendant's washing machine design was deceptively similar to their
registered design. The Bombay High Court ruled in favor of Whirlpool,
finding that the defendant's design did infringe on Whirlpool's design and
ordered the defendant to pay damages for the infringement.

3.4.4 Starbucks Corporation vs. A.H. Shah and Ors. (2017)

In this case, Starbucks alleged that the defendants were infringing upon their
registered design of a cup and saucer used for serving beverages. The Delhi
High Court granted an interim injunction in favor of Starbucks, restraining
the defendants from using a design that was identical or deceptively like
Starbucks' registered design.

These cases highlight the importance of registered designs and the

enforcement of design rights in India.

Activity 2: Note down the follow up and recent update about the cases
mentioned above in section 3.4.
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Check Your Progress 2

Note: a) Write down your answers below.

b) Answers at the end of the unit.
1. What are the Defences Available to the Infringing Party?
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Remedies
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2. Discuss about the Impact of Infringement of Designs on the Right Holder

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3.5 PIRACY OF A DESIGN

Design piracy occurs when someone copies, reproduces, or imitates a
registered design without permission. Here are some scenarios that could
constitute cases of piracy under the Design Act 2000 in India:

Figure 3.5: Cases of Piracy of a Design

1. Exact Reproduction: If someone creates a product that is an exact

replica of a registered design, without obtaining the necessary
authorization from the original design owner, it could be considered
design piracy.

2. Substantial Similarity: Even if a copied design is not an exact replica, if

it is substantially similar to a registered design and the differences
between the copied design and the registered design are not significant, it
might still be deemed design piracy.

3. Color and Ornamental Variations: If someone copies a registered

design but introduces minor changes to colors, ornamentation, or other
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Industrial Design non-essential features to evade infringement claims, it could still be
considered design piracy if the overall impression remains similar.

4. Partial Imitation: If a party copies only a part of a registered design,

such as a distinctive component or element, and uses it in their own
product, it could be considered design piracy if that copied part is a
significant aspect of the design's overall visual appeal.
5. Indirect Copying: If a person does not directly copy the design itself but
copies a product that has been manufactured according to that design, it
could still be seen as design piracy if the overall design is protected and
has been copied without authorization.

6. Parallel Imports: Importing the goods that are sold in another
jurisdiction outside India for further sale in India through unauthorized
channels might also be considered design piracy if the imported products
infringe on a design registered in India.
7. False Attribution: Presenting a copied design as an original creation or
attributing it to a different designer could be considered design piracy, as
it misleads consumers and infringes on the original designer's rights.
8. Commercial Use without Authorization: Using a registered design
commercially, such as producing, selling, or distributing products based
on a copied design without obtaining proper authorization from the
design owner, constitutes design piracy.

9. Reverse Engineering: If a person reverse-engineers a product to recreate

its design similar to the registered design and then uses that recreated
design to manufacture and sell similar products, it could be considered
design piracy if the design is protected, and the original designer's rights
are infringed upon.

3.6 PENALTY FOR THE PIRACY OF A

REGISTERED DESIGN
According to the Design Act 2000 in India, the penalty for piracy of a
registered design can include both civil and criminal remedies. These
penalties can involve:

3.6.1 Civil Remedies

The owner of the registered design can initiate civil proceedings against the
infringing party. In such cases, the court may grant injunctions to stop the
infringing activities, and the owner can claim damages or an account of
profits that the infringing party has gained due to the unauthorized use of the
design.

3.6.2 Criminal Remedies

The Act also provides for criminal remedies against piracy of registered
designs. If a person knowingly or intentionally infringes upon a registered
design for commercial purposes, they may be subject to a fine of up to Rs.
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fifty thousand and a sentence of imprisonment that may last up to 3 years. Infringement and
Remedies
However, Section 63 of the Copyright Act, 1957 provides for criminal
remedies that can be availed by the registered proprietor wherein, if any
person who is intentionally infringing or abets such infringement of such
work as covered in the Copyright Act, 1957 or otherwise (meaning work
connected to designs as under the Act), such person shall be punished by way
of imprisonment for a minimum of 6 (six) months which may extend up to 3
(three) years along with fines amounting to a minimum of INR 50,000 which
may extend to INR 2,00,000.

3.6.3 General Remedies

Figure 3.6: General Remedies for Design Infringement

General remedies available for design infringement under the Design Act
2000 in India:

1. Injunction: The owner of a registered design can seek an injunction

from the court to stop future violations. A court ruling known as an
injunction prevents the violator from carrying out their illegal activity.

2. Damages: The owner of the registered design can claim damages from
the infringing party. The damages may be assessed based on the loss
suffered by the design owner due to the infringement or the profits
earned by the infringing party due to the infringement.
3. Delivery Up or Destruction: The court can also order the infringing
party to deliver up the infringing goods for destruction.

4. Seizure: Design owners can approach the court for an order of seizure of
infringing goods to prevent their distribution or sale. This is typically
done through a court-appointed commissioner.

5. Anton Piller Orders: This is a type of court order that allows the design
owner to search the premises of the alleged infringer and seize evidence
without warning. The purpose of this kind of order is to preserve
evidence which may be in danger of destruction or concealment.
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Industrial Design 6. Publication of Judgment: The court may order the infringing party to
publish the decision of the court, which can act as a deterrent and also
help in clearing the reputation of the design owner.
7. Criminal Action: The Act also includes provisions for criminal action in
case of intentional copying or imitation of a registered design. The
penalties may include fines and imprisonment.

Check Your Progress 3

Note: a) Write down your answers below.
b) Answers at the end of the unit.
1. What are some scenarios that could constitute cases of piracy of designs?
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2. State the Penalties for the Piracy of a Registered Design

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2. Write down the general remedies available in case of infringement of

designs.
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3.7 LET US SUM UP

In this Unit, we have discussed the concepts of infringement and remedies of
registered designs in India. We have also learnt that Design Infringement is a
critical concern in the realm of intellectual property, as it affects the rights
and interests of creators and innovators. The Designs Act, 2000, provides a
comprehensive framework for protecting designs and offering remedies to the
owners of registered designs in case of infringement. Through injunctions,
damages, delivery up orders, and other remedies, the law seeks to strike a
balance between promoting creativity and ensuring fair competition in the
market. By safeguarding designs, India encourages innovation and nurtures a
thriving design-driven economy.
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 Infringement and
3.8 KEYWORDS Remedies

Piracy: Design piracy occurs when someone copies, reproduces, or imitates a

registered design without permission.

Infringement: Usage of design without permission.

3.9 BIBLIOGRAPHY AND FURTHER READING

x Government of India. (2000). The Designs Act 2000. New Delhi:
Department of Industrial Policy and Promotion, Ministry of Commerce
and Industries.

x https://indiankanoon.org/

3.10 TERMINAL EXERCISES

1) State what is meant by Infringement of design rights? What is the impact
on the design right holder?

2) What are some of criteria adopted to ascertain the similarity of the
design? Give examples.

3) What are the remedies available in the Designs Act, 2000 for
infringement of designs? Illustrate with examples.
4) What is Piracy of Industrial designs? What are its consequences?

3.11 ANSWERS / HINTS TO CHECK YOUR

PROGRESS
Check Your Progress 1
1. Read Section 4.2
2. Read Section 4.3
Check Your Progress 2
1. Read Section 4.3.3
2. Read Section 4.3.2
Check Your Progress 3
1. Read Section 4.5
2. Read Section 4.6
3. Read Section 4.6.3

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Industrial Design

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