Piracy of a Registered Design

What "fraudulent or obvious imitation" means

Two ideas, and the Act joins them with "or", so either will do.

Obvious imitation. A copy that is plainly a copy to the eye, without any need to prove intention. "Obvious" describes the resemblance, not the state of mind.

Fraudulent imitation. A copy made with knowledge of the registered design and with an intention to take it, even if the resemblance is less obvious because differences have been introduced to disguise the taking.

The Full Bench's gloss. In Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., AIR 2019 Delhi 23, Valmiki J. Mehta J. observed that the words "fraudulent or obvious imitation" in section 22 "have their flavor similar to the words identity/identical or deceptively similar as are found in Section 29 of the Trade Marks Act". That is a useful bridge for a student who already knows trade mark law.

How a court compares

The comparison is visual and it is of the articles. Four working rules, drawn from the cases and from section 2(d):

1. Judge solely by the eye. Section 2(d) says so, and Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657, applies it: the Supreme Court looked at the two glass sheets.
2. Compare the finished articles, not the drawings or the tools.
3. Look at the whole, not at a list of dissected differences. A defendant who produces a schedule of twenty small differences has usually conceded the resemblance of the whole.
4. Ask what is old and what is new. Resemblance in features that were already common in the trade proves nothing; resemblance in the features the statement of novelty claims proves a great deal.

Independent creation is not a defence. The design right is a monopoly, not a right against copying. Limbs (a) and (b) do not require knowledge at all.

The defences

Section 22(3). "In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence."

So a defendant has, at once, the five grounds in section 19: previously registered in India; published in India or in any other country before the date of registration; not new or original; not registrable; not a design at all under section 2(d). Chapter 180 works them.

And the Full Bench summarised the practical three. In Carlsberg, the defences to a design infringement claim were described as essentially threefold: prior publication of the registered design so that it is in the public domain; that the registered design is only a trade variation of an existing design and so not new or original; and that the defendant's article is not a fraudulent or obvious imitation.

Section 22(4), the transfer. Where such a ground has been availed of as a defence, the suit "shall be transferred by the Court, in which the suit or such other proceeding is pending, to the High Court for decision", notwithstanding the second proviso to section 22(2). Chapter 220 works out what this means for forum.

Section 22(5), notice to the Controller. When the court makes a decree in a suit under section 22(2) it shall send a copy of the decree to the Controller, who shall cause an entry of it to be made in the register.

The case

Facts. Whirlpool of India Ltd. v. Videocon Industries Ltd., decided by the Bombay High Court on 27 May 2014, concerned washing machines. Whirlpool held registered designs for the shape and configuration of its machine and alleged that Videocon's machine was a fraudulent or obvious imitation, and separately that Videocon was passing off its machines as Whirlpool's. Videocon argued that because washing machines are sold after a salesman's demonstration, no customer could be deceived, so there could be no passing off.

Held. Interim relief was granted. The court set out section 22(1) and applied it: the Act forbids applying the registered design or any fraudulent or obvious imitation to an article of the registered class, importing such an article for sale, and publishing or exposing it for sale. On passing off, the demonstration argument failed. A customer who identifies the plaintiff's washing machine by its distinctive and novel design may well attend a demonstration in the belief that the product being shown is the plaintiff's, so the fact of a demonstration in no way excludes the possibility of passing off. The court was prima facie satisfied that the defendants were guilty of passing off as well.

Why it matters here. It is a Bombay decision on an ordinary consumer product, and it disposes of the argument that an expensive, demonstrated article cannot be passed off, an argument defendants raise constantly.

A worked example

Prakash registers a design for a ceiling fan blade in class 23. Three defendants appear.

Defendant one makes the blades in Aurangabad and sells them. Limb (a): he applies the design to an article in the registered class for the purpose of sale. Caught, and his state of mind is irrelevant.

Defendant two makes the die from which those blades are pressed, and sells the die to defendant one. Also limb (a), by the closing words: he does something "with a view to enable the design to be so applied".

Defendant three imports identical blades from abroad and stocks them for sale. Limb (b): importing for the purposes of sale without consent.

Defendant four sells the blades in his shop and advertises them, having been told by Prakash's advocate that they infringe. Limb (c): publishing or exposing for sale, knowing. Had he not known, limb (c) would not catch him, though he could be restrained for the future once notified.

Defendant one pleads that the blade shape was in a Chinese catalogue in 2018. That is a section 19(1)(b) ground raised as a defence under section 22(3), and by section 22(4) the suit must be transferred to the High Court.

Prakash wins. By section 22(5) the court sends a copy of the decree to the Controller for entry in the register.

What this is not

Piracy is not a criminal offence. The Designs Act, unlike the Geographical Indications Act and the Semiconductor Integrated Circuits Layout-Design Act, creates no offences at all. Section 22 is entirely civil. A student who writes about imprisonment for design piracy is wrong.

Piracy is not confined to identical copies. A fraudulent or obvious imitation is enough.

Making for one's own use is not piracy. Each limb of section 22 is tied to sale.

Piracy outside the registered class is not piracy. The class is the boundary, from section 6 and section 2(c).

Quick revision

• Section 22(1)(a): applying the design or a fraudulent or obvious imitation to an article of the registered class for the purpose of sale, or doing anything with a view to enabling it, without licence or written consent.
• Section 22(1)(b): importing for the purposes of sale such an article, without consent.
• Section 22(1)(c): knowingly publishing or exposing such an article for sale.
• Fraudulent or obvious imitation: either will do; obvious describes the resemblance, fraudulent the taking. Flavour similar to identical or deceptively similar in section 29 of the Trade Marks Act, per Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., AIR 2019 Delhi 23.
• Compare the finished articles, by the eye, as a whole, giving weight to what is claimed as novel.
• No knowledge is needed for limbs (a) and (b); independent creation is no defence.
• Section 22(3): every section 19 ground is a defence. Section 22(4): pleading one transfers the suit to the High Court. Section 22(5): the decree is sent to the Controller.
• The Designs Act creates no criminal offence.

Test yourself

1. Set out the three acts prohibited by section 22(1). Applying the design or a fraudulent or obvious imitation to an article of the registered class for the purpose of sale, or doing anything with a view to enabling that; importing such an article for the purposes of sale; and knowingly publishing or exposing such an article for sale. All are subject to the proprietor's licence or consent.

2. Which limb requires knowledge? Only limb (c). Limbs (a) and (b) do not.

3. Is independent creation a defence to a piracy claim? No. The design right is a monopoly. Section 22 asks whether the design or an imitation was applied, imported or exposed, not whether the defendant copied.

4. What are the three practical defences the Full Bench identified in Carlsberg? Prior publication so that the design is in the public domain; that the registered design is only a trade variation of an existing design and so not new or original; and that the defendant's article is not a fraudulent or obvious imitation.

5. Does a demonstration by a salesman prevent passing off of a design? No. In Whirlpool of India Ltd. v. Videocon Industries Ltd., Bombay High Court, 27 May 2014, the court held that a customer who identifies the plaintiff's product by its distinctive design may attend the demonstration in the belief that the product shown is the plaintiff's, so the demonstration in no way excludes the possibility of passing off.