The Act calls infringement of a registered design “piracy”, and it gives the proprietor a civil claim and nothing else — no criminal offence, no police raid. The claim itself is straightforward: an article that carries the design, or an obvious or fraudulent imitation of it, in a class the design is registered for, without licence. What complicates it is that the defendant almost always attacks the registration, and the case turns on both.
Quick reference
| Piracy is | Applying the design or an obvious or fraudulent imitation to an article in a registered class for sale; importing such articles for sale; publishing or exposing them for sale |
| Test | Visual comparison as a whole, through the eye of the ordinary customer |
| Remedies | Injunction and damages — or a fixed sum of up to ₹25,000 per contravention, capped at ₹50,000 per design |
| Marking | No damages unless the article was marked as registered, or the defendant knew |
| Court | Not below a District Court; transferred to the High Court if validity is challenged |
| Criminal remedy | None |
What piracy is
During the term of a registered design, it is piracy for anyone without licence or written consent of the proprietor to:
- apply the design, or a fraudulent or obvious imitation of it, to any article in any class in which the design is registered, for the purpose of sale;
- import such an article for sale; or
- publish or expose for sale any article to which the design or an imitation has been applied, knowing that it has been.
Three things follow. The design must be in force — a lapsed design gives no claim for the lapsed period. The article must be in a class the design is registered in. And the mental element differs: applying and importing are strict; publishing or exposing for sale requires knowledge.
The comparison
The court puts the accused article beside the design as registered — the representations, not the proprietor’s own product — and asks whether the article carries the design or an imitation of it that is obvious or fraudulent. “Obvious” imitation is one that strikes the eye immediately; “fraudulent” is one made with knowledge, where the differences are deliberate attempts to disguise the copying.
The comparison is as a whole, by the eye of the ordinary customer for the article, not a feature-by-feature audit. Small differences that a customer would not register do not save the defendant; a different overall impression does. Features disclaimed in the registration — words, marks, functional parts — are left out. Where the registered design itself is close to what went before, its scope is correspondingly narrow, and a defendant who differs from it as much as it differs from the prior art will usually escape.
Remedies
The Act gives the proprietor a choice for each design.
A fixed sum recoverable as a contract debt — up to ₹25,000 for every contravention, with a total cap of ₹50,000 per design. It is quick to plead and needs no proof of loss, and it is worth almost nothing against a commercial copyist.
Or a suit for damages and an injunction. Damages are compensation for the loss actually suffered, or the profits the defendant made, without any cap, and courts have become willing to award substantial sums where the copying was deliberate. The injunction — interim first, then permanent — is the remedy that matters, and in a well-prepared case an interim injunction can be obtained quickly, sometimes without notice to the defendant, with a local commissioner appointed to seize the copies.
Delivery up and destruction of the infringing articles are ordered with the injunction.
Marking
The proprietor must mark the article with the word “REGISTERED” or its abbreviation and the registration number, before it is delivered for sale. If it did not, no damages or fixed sum can be recovered unless the proprietor shows it took all proper steps to ensure marking, or that the defendant knew or had notice of the registration. The Rules exempt some classes of article — textiles, for instance — from the marking requirement. An unmarked product does not lose its injunction; it may lose its money claim for the period before the defendant was put on notice.
Defences
Invalidity. Every ground on which the registration could be cancelled — prior publication, lack of novelty, not a design — is a defence in the suit. It is pleaded in nearly every case, and where the challenge is genuine the suit is transferred to the High Court. A proprietor should know its registration’s weaknesses before it sues.
Not the same design. The accused article gives a different overall impression, or falls outside the registered class.
Licence or consent, or that the articles were the proprietor’s own, put on the market by it.
Groundless threats. The Act applies the patent provisions on groundless threats to registered designs, so a proprietor that threatens a competitor’s customers on a weak case can itself be sued. Warning letters need the same care as in patent matters.
Passing off alongside
A product’s shape and get-up can also be protected by passing off, where they have come to identify the proprietor’s goods, and the claim survives the design’s expiry. After some years of uncertainty, the Delhi High Court settled in 2018 that a suit for piracy of a registered design and passing off in respect of the same product can be brought together. Pleading both is now routine, and it gives the proprietor a second footing if the registration falls.
Forum
A suit for piracy cannot be brought in any court below a District Court. In the cities whose High Courts have original jurisdiction — Delhi, Bombay, Calcutta, Madras — it is usually filed there, and the Delhi, Madras and Calcutta High Courts have intellectual property divisions. Unlike trademark and copyright suits, there is no provision letting the proprietor sue where it carries on business; the ordinary rules apply, so the suit goes where the defendant is or where the piracy occurred. Where the defendant genuinely challenges validity, the case moves to the High Court in any event.
Frequently asked questions
What counts as infringement of a registered design in India? Applying the design or an obvious or fraudulent imitation of it to an article in a class the design is registered in, for sale; importing such articles for sale; or knowingly publishing or exposing them for sale — all without the proprietor’s licence.
What remedies are available for design piracy? An injunction and damages, or, at the proprietor’s election, a fixed sum of up to ₹25,000 per contravention capped at ₹50,000 per design. Delivery up and destruction of the infringing articles accompany the injunction. There is no criminal remedy.
Do I have to mark my product as a registered design? Yes, with “REGISTERED” or “REGD” and the number, for most classes of article. Without marking, damages are not available unless the defendant knew of the registration or the proprietor took all proper steps to mark. The injunction is unaffected.
Can the defendant challenge my design registration in the infringement suit? Yes. Every ground of cancellation is a defence, and where the defendant genuinely challenges validity the suit is transferred to the High Court.
Can I sue for passing off as well as design piracy? Yes. Since the Delhi High Court’s 2018 decision, both claims can be brought in the same suit, and passing off gives a second footing that survives the design’s expiry.
Which court hears design infringement cases? A District Court at minimum, or a High Court with original jurisdiction. The suit is filed where the defendant is or where the piracy occurred; there is no home-court provision for designs as there is for trademarks and copyright.
Useful official resources
- IP India — designs — the Act and the register
- Delhi High Court — Intellectual Property Division — rules and cause lists
See our related notes on cancelling a design, intellectual property litigation in India and passing off.
A copy of your product on the market, or a suit on a registration you think is weak? Talk to us.