Infringement / Piracy of Design and Remedies; Defences — Intellectual Property Rights II Notes

Infringement / Piracy of Design and Remedies; Defences

The Designs Act does not use the word “infringement” — it uses a blunter one: piracy. To pirate a design is to copy the registered look without licence, and the test is the same eye-test that governs registration: would an ordinary customer, looking at the two articles, see the same design?

Piracy of design — s.22

A. What piracy is — s.22(1)

During the term of a registered design, it is piracy for any person, without the proprietor’s licence, to:

apply the design or any fraudulent or obvious imitation of it to any article in the registered class for sale;
import for sale any such article; or
publish or expose for sale any article to which the design (or an imitation) has been applied, knowing it was applied without consent.

The test is visual: is the alleged copy a fraudulent or obvious imitation judged by the eye of an ordinary customer? Small cosmetic changes do not escape liability.

B. Remedies — s.22(2)

The proprietor may recover, at his option:

a sum not exceeding ₹25,000 for any one contravention, recoverable as a contract debt (a statutory cap requiring no proof of loss), subject to a maximum of ₹50,000 in respect of any one design; or
damages and an injunction restraining the piracy (with proof of loss).

The two are alternatives — the proprietor cannot recover both the statutory sum and damages for the same piracy.

C. Defences

The defendant may:

challenge the validity of the registration on any ground on which registration may be cancelled under s.19 (e.g. the design was not new, was previously published, or is not registrable) — a common and powerful defence; or
show the articles are not an imitation judged by the eye; or
show he acted without knowledge where knowledge is an element.

Section 22(2): any person who acts in contravention “shall be liable for every contravention — (a) to pay to the registered proprietor … a sum not exceeding twenty-five thousand rupees recoverable as a contract debt … [provided that the total sum recoverable shall not exceed fifty thousand rupees in respect of any one design]; or (b) [where the proprietor elects to sue for damages] to pay such damages … and to be restrained by injunction …”

In Simple Terms: Piracy = copying the registered design’s look (or an obvious imitation) without licence. Remedies are either a statutory sum up to ₹25,000 per contravention (capped at ₹50,000 per design) or damages plus injunction. The pirate’s best defence is to attack the registration itself as invalid under s.19.

🧩 WORKED EXAMPLE — the copying carpenter

Facts. A carpenter designs wooden furniture (a registered design) and sues a neighbouring carpenter who sells furniture of the same design.

Rule. s.22 — applying the registered design or an obvious imitation to articles for sale, without licence, is piracy; remedies under s.22(2). The defendant may plead invalidity under s.19.

Apply. If the plaintiff’s design is validly registered and the neighbour’s furniture is an obvious imitation judged by the eye, piracy is made out. But if the design was not new / previously published, the neighbour can defeat the suit by challenging validity.

Decoy. The plaintiff must first have a valid, subsisting registration; if the design was common or pre-published, the suit fails.

Conclusion. The carpenter succeeds if his registration is valid and the copy is an obvious imitation; otherwise the neighbour’s s.19 defence prevails.

flowchart TD
    ROOT["Piracy claim (s.22)"]:::root
    ROOT --> A{"Valid subsisting registration?"}:::dec
    A -->|"No (s.19 defence)"| N["Suit fails"]:::no
    A -->|"Yes"| B{"Obvious/fraudulent imitation (judged by eye)?"}:::dec
    B -->|"No"| N
    B -->|"Yes"| Y["Piracy: 25,000 debt OR damages + injunction"]:::yes
    classDef root fill:#FFF8DC,stroke:#000,stroke-width:1px,color:#000;
    classDef dec fill:#FDECC8,stroke:#B7791F,color:#000;
    classDef yes fill:#E6F3FF,stroke:#1E3A8A,color:#000;
    classDef no fill:#FDE2E2,stroke:#C0392B,color:#000;
    linkStyle default stroke:#888,stroke-width:1px;

Case Laws

Whirlpool of India Ltd. v Videocon Industries Ltd. (2014) — piracy of washing-machine designs; obvious imitation judged by the eye.
Castrol India Ltd. v Tide Water Oil Co. (1996) — obvious/fraudulent imitation of a registered design.

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