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A LEGAL STUDY ON INFRINGEMENT OF DESIGNS UNDER INTELLECTUAL PROPERTY RIGHTS WITH RELEVANT CASE LAWS:
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A LEGAL
STUDY ON INFRINGEMENT OF DESIGNS UNDER INTELLECTUAL PROPERTY RIGHTS WITH
RELEVANT CASE LAWS:
AUTHORED BY - N. NIKHIL TEJA
BA.LLB, LLM
Ramaiah College of Law, Karnataka
ABSTRACT:
An Infringement of Design refers to
the unauthorized use of a protected design, pattern for commercial purposes. It
can include copying, reproducing, or adapting a design without the owner’s
permission. This abstract examines the issues of design infringement and legal
implications. It explores the various forms of protection available to
designers such as patents, trademarks, and copyrights. It also considers the
factors that determine whether an infringement has occurred, includes the level
of similarity between the original and copied design, the intent of the alleged
infringer, and the extent of the harm caused to the owner. The research paper
further discusses the remedies available to design owners when infringement
occurs, such as damages, injunctions, and account of profits. In conclusion, it
emphasizes the importance of understanding and respecting Intellectual Property
Rights.
Keywords: Designs, Infringement,
Protected designs, Legal remedies.
INTRODUCTION:
Design means purpose of intention
combined for plan in mind, aim, object, purpose, intention that carried for
effect. The Design includes the plan includes the means by which it is to be
brought about[1]. It is
not essential that a design have been primarily in use. Publication is two types:
Publication of prior documents, Publication prior user[2].
Explanation: Design is featuring pattern, shape,
ornamental apply for an article for any industrial process like chemical or
mechanical, combined or separate, in the finished thing & any creative
work. It includes composition of line, color for any articles, articles are of two-dimensional
method or 3D form or in both ways[3].
Necessities of Design: -
1. It must be applied two articles,
2. Apply to the eye,
3. Uniqueness and Novelty,
4. Copyright in drawings,
5. Presumption of originality,
6. No prior publication,
7. Effect of prepublication.
Registration of Design under the Act:
Section 3 to 10 of the Design act,
2000 deals with registration of designs. Submission for the registering of a
design may filed by any individual ask for the proprietor of the unique proposal,
not previously registered in India[4].
Owner of unique design must be:
Ø Either the writer of a plan;
Ø Any additional individual who
acquired design or right to apply any article;
Ø A person on whom such rights have progressed[5].
Effect of Registering: -
Once a design is registered,
registered property of design, will be entitled for the rights like; Rights to
exclusive use of design, copy right in design, and the right to protect a design
from piracy. Rights in the proprietors of the registered designs: Instance of
piracy of design, Infringement of pirated design, fraudulent and obvious imitation.
Infringement of Design:
Violation of a copy right in design
is named as the piracy of the registered design. Section 22, Design Act 2000,
any unlawful request of a registered design/fake/obvious imitation covered by
the registration of trade purpose or violation of the Copyright in design.
In Gorbatschow Wodka K.G case[6],
Gorbatschow Wodka K.G. (Plaintiff) is a German company engaged in the
production and distribution of vodka under the well-known brand name
"Gorbatschow Vodka." The company is recognized for its distinctively
designed vodka bottles, which have a unique dome-shaped cap and a curved body.
The plaintiff claimed that this bottle design had acquired a typical identity
and had become associated exclusively with its brand in the market.
John Distilleries Limited (Defendant)
is an Indian company involved in the production and sale of alcoholic
beverages, including vodka. The plaintiff alleged that the defendant had
introduced a vodka product under the brand "Salute Vodka," which was
sold in a bottle that closely resembled the distinctive shape and design of
Gorbatschow Vodka bottles.
The plaintiff initiated legal
proceedings against John Distilleries Limited, alleging that the defendant's
actions amounted to infringement of trade dress, passing off, and unfair
competition. It sought an injunction restraining the defendant from
manufacturing and selling vodka in bottles that allegedly copied the
plaintiff’s unique design.
Issues: Whether the bottle design of
Gorbatschow Vodka qualifies for protection as a distinctive trade dress under
Indian trademark laws, whether the defendant's use of a similar bottle design
for Salute Vodka amounted to trade dress infringement and passing off, whether
the plaintiff was entitled to an injunction restraining the defendant from
continuing the alleged infringing activity, whether there was a likelihood of
confusion among consumers due to the similarity in bottle designs.
Judgment: The Hon'ble Court ruled in
favor of Gorbatschow Wodka K.G. and granted an injunction against John
Distilleries Limited. The key observations of the Court were; The Court
acknowledged that trade dress, including the shape, color scheme, and packaging
of a product, is protectable under Indian trademark law. The unique bottle
design of Gorbatschow Vodka had acquired a distinctive reputation and was
identifiable with the plaintiff’s brand in the market. The Court held that the
similarity in bottle designs was substantial and could mislead consumers into
believing that Salute Vodka was associated with or endorsed by Gorbatschow
Wodka K.G. The overall visual impression created by the defendant's bottle
design was deemed confusingly similar to that of the plaintiff.
The Court found that John
Distilleries Limited had attempted to take undue advantage of the goodwill and
reputation of Gorbatschow Vodka. By using a deceptively similar bottle design,
the defendant had engaged in unfair competition and passing off.
The Court granted an injunction
restraining the defendant from manufacturing, selling, or distributing vodka in
bottles that were similar to the plaintiff’s unique design. This decision was
based on the principle that intellectual property rights, including trade
dress, must be protected from unauthorized imitation.
The judgment reinforced the
significance of trade dress protection under Indian intellectual property laws.
It established that unique packaging and bottle designs, if distinctive and
recognizable, are entitled to legal protection against imitation. The ruling in
Gorbatschow Wodka K.G. v. John Distilleries Limited emphasized the need to
prevent consumer confusion and to uphold the integrity of established brands in
the market.
Examination for infringement:
The courts are expected to regulate
whether the violation been held in the same pattern. The High Court of Bombay
observed that it is not necessary in every case that the pattern or design in
order to bring in with the statute, it must be same reproduction of registered
design.
Judicial Remedy:
Remedy for the violation of a registered
design recovery of the damages along with the injunction. A suit in the
appropriate manner for seeking the relief in the form of an injunction is also
recommended. The Term of Copy Right in design;
u/s 11 of the Act, the term of the copy right in design is 10 years from the
registration which may be extended to period of another five years term. Therefore,
the maximum time period of the copy right in designs is 15 years.
Jurisdiction: Any suit or proceeding under s.22(2) of the act, each ground
on which the registering of the design may be void under section 19. Shall
available as a ground of a defense and once such a ground is taken in defense,
Under the section 22(4) of this act, suits or any proceeding to be transferred
to high court for decision[7]. S.22
deals with piracy of registered designs. design registered future will not be eligible
to protection against first or prior registered proprietor of design[8].
In M/S. Cello Household Products
case[9], the
plaintiffs, Cello Household Products, alleged that the defendants, Modware
India, had infringed upon their registered design of a plastic water bottle
named "PURO." Cello claimed that their bottle featured a unique
shape, configuration, and surface pattern, which were novel and original. They
contended that Modware's "KUDOZ" bottle was almost identical in
design, including a similar two-tone color scheme and packaging, leading to
consumer confusion.
The primary issues before the Bombay
High Court were: Whether Cello's design of the "PURO" bottle was
novel and original under the Designs Act, 2000, Whether Modware's
"KUDOZ" bottle infringed upon Cello's registered design, Whether
Modware's actions constituted passing off by misleading consumers into
believing that their product originated from Cello. In its defense, Modware
argued that the design of the "PURO" bottle lacked novelty, asserting
that it was merely a combination of pre-existing designs (a concept known as
"mosaicking"). They also contended that the shape of the bottle was
generic for fluid containers and that Cello's design was derived from
previously known designs. Additionally, Modware challenged the court's
territorial jurisdiction. The Bombay High Court, upon examining the evidence,
found in favor of Cello.
The court held that Cello's
"PURO" bottle design was sufficiently original and novel, rejecting
Modware's defense of mosaicking. It concluded that Modware's "KUDOZ"
bottle was almost identical to Cello's design, leading to consumer confusion.
Consequently, the court issued an injunction restraining Modware from
manufacturing or selling the infringing "KUDOZ" bottles and from
passing off their products as those of Cello.
In Smith Kline Beecham Consumer
Healthcare case[10] a
legal action for infringement and passing off toothbrush designs. The Plaintiffs,
Smithkline Beecham Consumer Healthcare GmbH, stated that the Defendants,
Hindustan Lever Limited (HLL), had replicated their toothbrush designs, that
is, the ACQUA FLEX and ACQUAFRESH FLEX N' DIRECT models. The Plaintiffs argued
that these were novel designs which had gained distinctiveness in the market.
The Plaintiffs believed that HLL's
toothbrushes were fraudulently similar to theirs and could mislead consumers
into associating them with the Plaintiffs' products. They argued that such
similarity brought about confusion and diluted their trademark.
Court's Findings: The court analyzed
whether the design was novel and distinctive. It also evaluated whether the
infringement resulted in consumer confusion or unfair competition. The ruling
in this case would have hinged on whether the Plaintiffs were able to prove
distinctiveness and whether the product of the Defendants created market
confusion. Remedies in such a case are usually injunctions against continued
use of the infringing design, damages, and account of profits.
CONCLUSION:
An Infringement of design refers to
the unauthorized use of a protected design, pattern for commercial purposes. It
can include copying, reproducing, or adapting a design without the owner’s
permission. the issues of design infringement and legal implications. It
explores the various forms of protection available to designers such as
patents, trademarks, and copyrights. It also considers the factors that
determine whether an infringement has occurred, includes the level of
similarity between the original and copied design, the intent of the alleged
infringer, and the extent of the harm caused to the owner. the remedies
available to a design owners when infringement occurs, such as damages,
injunctions, and account of profits.
[1] P. Ramnath Aiyar, The Law
lexicon 1997
[2] Jaspal Singh (P) Ltd. Vs R Auto
Components Ltd 2002.
[3] Section 2(d) of the Act
[4] Under provision S.3.
[5] S.2(j) of the act 2000, Mohammad
Abdula Karim vs Mohammed Yasin and other, AIR 1934 ALL 798 800.
[6] Gorbatschow Wodka K.G. v. John
Distilleries Limited (2011 (47)) PTC
[7] Escorts equipment Ltd vs Gautam
engg.co. AIR 2010
[8] Vikas Jain v Aftab Ahmad,2008.
[9] M/S. Cello Household Products
and Anr. v. M/S. Modware India and Anr, March 30, 2017:
[10] SmithKline Beecham Consumer
Healthcare vs. Hindustan Lever Limited, 2000 (52) DRJ 55
Article Information
A LEGAL STUDY ON INFRINGEMENT OF DESIGNS UNDER INTELLECTUAL PROPERTY RIGHTS WITH RELEVANT CASE LAWS:
Authors: N. NIKHIL TEJA
- Journal IJLRA
- ISSN 2582-6433
- Published 2025/02/13
- Issue 7
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International Journal for Legal Research and Analysis
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